Case: 21-2244 Document: 49 Page: 1 Filed: 12/19/2022
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`PLASTIPAK PACKAGING, INC.,
`Plaintiff-Appellant
`
`v.
`
`PREMIUM WATERS, INC.,
`Defendant-Appellee
`______________________
`
`2021-2244
`______________________
`
`Appeal from the United States District Court for the
`Western District of Wisconsin in No. 3:20-cv-00098-wmc,
`Judge William M. Conley.
`______________________
`
`Decided: December 19, 2022
`______________________
`
`CHRISTOPHER ROBERT DILLON, Fish & Richardson P.C.,
`Boston, MA, argued for plaintiff-appellant. Also repre-
`sented by WHITNEY REICHEL; AHMED JAMAL DAVIS,
`CHRISTOPHER DRYER, Washington, DC; OLIVER RICHARDS,
`San Diego, CA.
`
` JEFFREY COSTAKOS, Foley & Lardner LLP, Milwaukee,
`WI, argued for defendant-appellee. Also represented by
`KIMBERLY KRISTIN DODD, SARAH ELIZABETH RIEGER;
`DANIEL FLAHERTY, ANDREW GROSS, Chicago, IL.
`______________________
`
`
`

`

`Case: 21-2244 Document: 49 Page: 2 Filed: 12/19/2022
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`2
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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
`
`Before NEWMAN, STOLL, and STARK, Circuit Judges.
`STARK, Circuit Judge.
`In this patent case, the District Court granted sum-
`mary judgment in favor of Defendant-Appellee Premium
`Waters, Inc. (“Premium Waters”), finding that Plaintiff-
`Appellant Plastipak Packaging, Inc.’s (“Plastipak”) twelve
`patents-in-suit were invalid for nonjoinder under pre-AIA
`35 U.S.C. § 102(f) (2006).1 On appeal, the parties dispute
`whether summary judgment was proper. We reverse and
`remand.
`
`I
`A
`Plastipak owns U.S. Patent Nos. 8,857,637; 9,033,168;
`9,139,326; 9,403,310; 9,522,759; 9,738,409; 9,850,019;
`10,023,345; 10,214,311; 10,214,312; 10,266,299; and
`10,457,437.2 Each patent is entitled “Lightweight Plastic
`Container and Preform” and claims priority to U.S. Appli-
`cation No. 11/749,501, filed on May 16, 2007, which was a
`continuation-in-part of U.S. Application No. 11/368,860,
`filed on March 6, 2006. Each patent lists Richard C. Darr
`and Edward V. Morgan as inventors.
`
`
`1 AIA refers to the Leahy-Smith America Invents
`Act, Pub. L. No. 112-29, 125 Stat. 284 (2011). Because the
`application that led to the patents-in-suit never contained
`a claim having an effective filing date on or after March 16,
`2013, or a reference under 35 U.S.C. §§ 120, 121, or 365(c)
`to any patent or application that ever contained such a
`claim, pre-AIA law applies. See AIA § 3(n)(1), 125 Stat. at
`293.
`2 Each patent or patent application will be referred
`to by the last three digits of its patent or application num-
`ber.
`
`

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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`3
`
`All twelve patents-in-suit generally concern plastic
`containers and plastic container preforms with a neck por-
`tion (also called a neck finish).3 The neck portion contains
`threads for screwing on or off a closure (e.g., a bottle cap);
`a continuous or discontinuous tamper-evident formation
`(“TEF”) to show that the bottle has been opened; and a sup-
`port flange (also called a support ring) to facilitate handling
`during manufacturing.
`One view of such a bottle is found in Figure 1 of the
`’637 patent:
`
`
`3 We follow the parties’ and District Court’s conven-
`tion of referring to the “containers” with which the patents
`are concerned as bottles. “Preforms” become fully formed
`plastic bottles during the manufacturing process.
`
`

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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`J.A. 41. The neck portion (16) includes a support flange
`(18) with an upper surface (20) and a lower surface (22).
`A close-up view of a neck portion is shown in Figure 6
`of the ’637 patent (annotated by the parties with the names
`of the numbered features):
`
`J.A. 5305. The TEF (28) in this Figure 6 embodiment is
`discontinuous; that is, there are multiple TEFs rather than
`a single, continuous formation.4
`
`
`4 The patents and parties use the singular and plu-
`ral terms “TEF” and “TEFs” interchangeably, and we do so
`as well.
`
`

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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`5
`
`A cross-sectional side view of a neck portion is shown
`in Figure 5 of the ’637 patent (again annotated by the par-
`ties in accordance with the patent):
`
`J.A. 5305. The X dimension in Figure 5 (delineated by the
`vertical line to the far left of the diagram) represents a
`measurement of the vertical distance from the top of the
`dispensing opening/neck portion (30) to the lower surface
`of the support flange (22), including the threads and a TEF.
`Decreasing the magnitude of the X dimension can result in
`lighter weight bottles and preforms, with related economic
`and manufacturing benefits.
`The patents-in-suit can be split into two groups. Seven
`patents – the ’637, ’168, ’759, ’409, ’019, ’345, and ’312 –
`have claims reciting neck portions with an X dimension of
`0.580 inches or less. For simplicity, and following the lead
`of the parties and the District Court, we refer to this as the
`“X Dimension Limitation” and this group of seven as the “X
`
`

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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`Dimension Patents.”5 Five patents – the ’326, ’310, ’311,
`’299, and ’437 – have claims reciting a discontinuous TEF.
`We refer to this as the “Discontinuous TEF Limitation” and
`this group of five as the “Discontinuous TEF Patents.”6
`B
`The parties present competing stories of invention con-
`cerning Plastipak’s twelve patents. Plastipak contends
`that Darr and Morgan were the sole inventors. Premium
`Waters counters that the patents should have included a
`third co-inventor, Alessandro Falzoni, an employee of
`SACMI Imola (“SACMI”), an Italian company.
`Certain details of the process leading to the patented
`inventions are undisputed. Plastipak and Premium Wa-
`ters agree that Falzoni worked on what SACMI referred to
`as its “Multi-Lok 27” or “ML27” project. The ML27 con-
`cerned a design that included a neck portion, a specialty
`closure, and a discontinuous TEF. The parties further
`agree that over the course of several months in 2005 and
`2006, Falzoni and his SACMI colleagues interacted with
`
`
`5 To be precise, none of the patents includes claims
`literally reciting an “X dimension.” Instead, the claims re-
`cite some variation of the following language: “wherein the
`vertical distance from the dispensing opening to the lower
`surface of the support flange, including threads and the
`tamper-evident formation, is 0.580 inches or less.” J.A. 47
`(’637 patent at 7:7-10).
`6 Several of the patents-in-suit contain claims recit-
`ing a “means for indicating tampering” or “additional
`means for indicating tampering.” See, e.g., J.A. 46 (’637 pa-
`tent at 6:63-64). Before the District Court, Premium Wa-
`ters argued that these are means-plus-function claims,
`whose required structure includes a discontinuous TEF.
`See J.A. 1631 nn.6-8. Plastipak does not challenge this con-
`tention on appeal.
`
`

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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`7
`
`Darr and other Plastipak personnel and, during this pe-
`riod, Plastipak considered trying to obtain exclusive rights
`to SACMI’s ML27 design.
`In the course of these Plastipak-SACMI interactions,
`on June 13, 2005, Falzoni emailed Darr, stating he was
`sending Darr a file of the “3D model of the neck finish,”
`adding that “[t]he area below the neck support ring has
`been left undefined and you can change it at your ease.”
`J.A. 2331. Images of what Premium Waters contends is
`the model sent by Falzoni to Darr were reproduced in this
`litigation and are shown below:
`
`J.A. 5338. The model did not explicitly depict a lower sur-
`face of a support flange. Because the X Dimension Limita-
`tion is the distance between the dispensing opening and
`the lower surface of the support flange, the absence of the
`latter feature gives rise to a dispute as to whether the X
`Dimension of this 3D model can be determined. The par-
`ties further dispute whether the 3D model concerned a
`metal tool for testing closures and whether the dimensions
`of the 3D model would have been passed on to any con-
`tainer or container preform.
`On the same day he received Falzoni’s email, Darr re-
`sponded by sending back to Falzoni a file with a design that
`included a lower surface of a support flange and a 0.591-
`
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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`inch X Dimension. This is shown below (the X Dimension
`is again indicated by the line furthest to the left):
`
`J.A. 2337. In Darr’s email, he asked Falzoni to inform him
`if the dimensions were acceptable. In response, Falzoni
`stated that he had examined the file from Darr, did not of-
`fer any corrections, and added “everything looks right.”
`J.A. 2333.
`Plastipak and SACMI continued communicating about
`the ML27 design, including by Darr providing designs to
`SACMI with increasingly large X Dimensions, of 0.631
`inches and 0.641 inches. Meanwhile, in November 2005,
`an internal SACMI presentation on the ML27 project
`touted its shorter neck portion and included an embodi-
`ment with an X Dimension of roughly 0.5787 inches (i.e.,
`less than 0.580 inches). However, it appears Falzoni did
`not share this document with its smaller X Dimension with
`Plastipak during the relevant time. Eventually, in early
`2006, the discussions between Plastipak and SACMI broke
`down. In March 2006, Darr and Morgan filed the patent
`application that eventually resulted in the patents at issue.
`C
`In January 2020, Plastipak sued Premium Waters in
`the United States District Court for the Western District of
`Wisconsin for infringement of various claims of its twelve
`patents. As part of discovery, Falzoni testified in a video
`
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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`9
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`deposition about his June 2005 email. During the deposi-
`tion, Falzoni opened a file containing a 3D model that had
`purportedly been attached to his original email. Falzoni
`then measured the neck finish in that model, testifying it
`had an X Dimension of approximately 0.563 inches, based
`on what Falzoni identified as the end of the support ring.
`When questioned about the X Dimension, Falzoni stated:
`“There was just a reasonable indication of where it should
`– it should be, but since it – there wasn’t the lower surface,
`we cannot say that there was the unmistakabl[e] surface
`height.” J.A. 744.
`The parties dispute whether Falzoni’s testimony sup-
`ports Premium Waters’ position that Falzoni is a co-inven-
`tor based on his contribution to the X Dimension
`Limitation. The 3D model also included a discontinuous
`TEF, another feature Premium Waters asserted entitles
`Falzoni to co-inventor status, though the parties do not
`agree on whether Falzoni contributed anything more than
`the state of the art.
`Premium Waters eventually moved for summary judg-
`ment of invalidity, asserting that the patents were invalid
`for failure to include Falzoni as a joint inventor, because he
`contributed the X Dimension Limitation and the Discontin-
`uous TEF Limitation. The District Court granted Pre-
`mium Waters’ motion and entered final judgment in favor
`of Premium Waters.
`In explaining the bases for its decisions, the District
`Court stated that Falzoni was “at least” a joint inventor of
`“the patented invention” because he had disclosed to Darr
`a neck finish measuring less than 0.580 inches with a dis-
`continuous TEF. J.A. 28. The Court noted that although
`the image of the 3D model lacked a lower surface of a sup-
`port flange, the image constituted clear and convincing ev-
`idence of Falzoni’s disclosure, leaving “no doubt” that the
`image “contributed significantly to the conception of a com-
`plete neck finish.” J.A. 28. The Court further observed
`
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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`that, even if the image were of a metal testing tool (and not
`of a bottle or preform), the dimensions – including the X
`Dimension – of that tool would be carried through to a plas-
`tic preform made from the tool. [J.A. 28 n.17, J.A. 25 (“In
`other words, a preform created by this tool would
`have the same X dimension as that of the tool.”)] Fi-
`nally, and “ultimately controlling” in its view, the District
`Court found the record was
`robust in demonstrating the further collaboration
`between Falzoni and Darr in arriving at the essen-
`tial invention. Indeed, the same day that Falzoni
`sent Darr the 3D image, Darr responded with two
`emails describing his reaction to the 3D image and
`creation of drawings based on it. The cherry on top
`for this court, and it is confident for any reasonable
`jury, is that any potential business relationship be-
`tween Plastipak and SACMI with respect to joint
`use of the ML27 design fell apart in March 2006,
`the same month that the ’860 application was filed,
`calling into question any basis for Darr claiming an
`honest mistake in failing to name Falzoni as an in-
`ventor.
`J.A. 28-29.
`
`Plastipak timely appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(1).
`
`II
`“In patent appeals, we apply the law of the regional cir-
`cuit to which district court appeals normally lie, unless the
`issue pertains to or is unique to patent law.” AbbVie
`Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759
`F.3d 1285, 1295 (Fed. Cir. 2014) (internal quotation marks
`omitted). Here, following Seventh Circuit law, we review
`the District Court’s grant of summary judgment de novo.
`See, e.g., Wis. Alumni Rsch. Found. v. Apple Inc., 905 F.3d
`1341, 1352 (Fed. Cir. 2018) (applying Seventh Circuit law).
`
`

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`11
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`We construe all facts and draw all reasonable inferences in
`the light most favorable to the nonmoving party. See id.
`Summary judgment is proper “‘if the movant shows
`there is no genuine dispute as to any material fact and the
`movant is entitled to judgment as a matter of law.’” Austin
`v. Walgreen Co., 885 F.3d 1085, 1087 (7th Cir. 2018) (quot-
`ing Fed. R. Civ. P. 56(a)). We do not “‘weigh the evidence’
`or ‘determine the truth of the matter’” but “merely ‘deter-
`mine whether there is a genuine issue for trial.’” Id. (quot-
`ing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249
`(1986)).
`“A factual dispute is genuine only if ‘the evidence is
`such that a reasonable jury could return a verdict for the
`nonmoving party.’” Alston v. City of Madison, 853 F.3d
`901, 910-11 (7th Cir. 2017) (quoting Anderson, 477 U.S. at
`248). A factual dispute is material, rather than irrelevant,
`if, based on the underlying substantive law, it is probative
`of what a party must prove in order to prevail on its claim.
`See Carroll v. Lynch, 698 F.3d 561, 564 (7th Cir. 2012).
`The substantive law pertinent to the dispute before us
`is the law governing inventorship. Applicable here is the
`pre-AIA version of 35 U.S.C. § 102(f), which provides: “A
`person shall be entitled to a patent unless . . . he did not
`himself invent the subject matter sought to be patented.”
`Inventorship presents a question of law which may be pred-
`icated on underlying factual findings. See Ethicon, Inc. v.
`U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998).
`To be a joint inventor, one must:
`(1) contribute in some significant manner to the
`conception or reduction to practice of the invention,
`(2) make a contribution to the claimed invention
`that is not insignificant in quality, when that con-
`tribution is measured against the dimension of the
`full invention, and (3) do more than merely explain
`
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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`to the real inventors well-known concepts and/or
`the current state of the art.
`Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).
`Where these requisites are satisfied but a patent fails to
`name the joint inventor, that patent may be invalid for non-
`joinder. See id. at 1348-49.7 While inventorship is evalu-
`ated on a claim-by-claim basis, the failure to join an
`inventor of any claim invalidates the entire patent. See
`Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 1376 (Fed.
`Cir. 2020); Trovan, Ltd. v. Sokymat SA, Irori, 299 F.3d
`1292, 1302 (Fed. Cir. 2002); Ethicon, 135 F.3d at 1460.
`“[A] moving party seeking to invalidate a patent at
`summary judgment must submit such clear and convincing
`evidence of facts underlying invalidity that no reasonable
`jury could find otherwise.” SRAM Corp. v. AD-II Eng’g,
`Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006). In connection
`with assertions of joint inventorship, meeting that stand-
`ard requires alleged joint inventors to “prove their contri-
`bution to the conception with more than their own
`testimony concerning the relevant facts.” Gemstar-TV
`Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1382
`(Fed. Cir. 2004). Whether an alleged joint investor’s “tes-
`timony has been sufficiently corroborated is evaluated un-
`der a ‘rule of reason analysis,’ which requires that an
`evaluation of all pertinent evidence must be made so that
`a sound determination of the credibility of the inventor’s
`story may be reached.” Id. (internal quotation marks omit-
`ted).
`
`
`7 Some mistakes in inventorship can be corrected,
`saving the validity of the patent. See 35 U.S.C. § 256.
`Given our disposition, which will require further proceed-
`ings with respect to validity, we do not reach the parties’
`dispute as to whether Plastipak is entitled to correct its pa-
`tents.
`
`

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`The first step in assessing inventorship is ordinarily
`claim construction, in order to determine the scope of a
`claim’s subject matter. See Trovan, 299 F.3d at 1302.
`Where, as here, the parties do not dispute the scope of any
`particular claim term, however, claim construction is not
`necessary. See O2 Micro Int’l Ltd. v. Beyond Innovation
`Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008); see also
`In re VerHoef, 888 F.3d 1362 (Fed. Cir. 2018) (analyzing
`joint inventorship without mentioning claim construction).
`Instead, the disputes before us are whether, applying the
`summary judgment standard, a reasonable factfinder could
`fail to find that Falzoni was a co-inventor of the X Dimen-
`sion Patents and Discontinuous TEF Patents. As ex-
`plained below, we conclude that a reasonable factfinder,
`taking the evidence in the light most favorable to Plastipak
`as the nonmoving party, could reject Premium Waters’ po-
`sition on both of these points. Accordingly, we find these
`matters present genuine disputes of material fact and sum-
`mary judgment is not warranted.
`III
`A
`Summary judgment was improper with respect to the
`X Dimension Patents; that is, those that claim a neck por-
`tion measuring 0.580 inches or less from a dispensing open-
`ing to a lower surface of a support flange. The District
`Court found that “Falzoni was at least a joint inventor of
`the patented invention, having initially disclosed to Darr a
`design of a neck finish measuring less than 0.580 inches.”
`J.A. 28. To invalidate the relevant patents on summary
`judgment, Premium Waters had to present evidence from
`which all reasonable finders of fact, taking the evidence in
`the light most favorable to Plastipak, would have to con-
`clude that Falzoni actually contributed in a legally suffi-
`cient manner to the invention. See, e.g., Trovan, 299 F.3d
`at 1302. The record reflects a genuine dispute of material
`
`

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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`fact as to whether Falzoni sufficiently contributed to the X
`Dimension Limitation.
`Premium Waters’ principal support for its position is
`the June 2005 email Falzoni sent to Darr, which appears
`to have attached the 3D model. In the email, Falzoni stated
`that the model was of a neck portion with a neck support
`ring, which Premium Waters asserts “necessarily includes
`a lower surface.” Response Br. 41. As the District Court
`recognized, however, the 3D model did not expressly dis-
`close a lower surface of a support flange. [See J.A. 11, 28.]
`While Falzoni testified in his deposition that he knew
`where the lower surface was and also that he could meas-
`ure the X Dimension – and did so during his deposition,
`finding it was approximately 0.563 inches, meeting the
`claim limitation of being less than 0.580 inches – each of
`these propositions was highly contested by Plastipak,
`which presented evidence from which a reasonable fact-
`finder could reach conclusions contrary to those proposed
`by Premium Waters.
`For example, Plastipak points to portions of Falzoni’s
`testimony in which he acknowledged uncertainty about the
`exact measurement of the X Dimension in the 3D model.
`Falzoni testified: “There was just a reasonable indication
`where it should – it should be, but since it – there wasn’t
`the lower surface, we cannot say that there was the unmis-
`takabl[e] surface height.” J.A. 744. Plastipak also pre-
`sented testimony from its expert, Ottmar Brandau, who
`opined that the 3D model did not contain any support
`flange, did not depict a preform or bottle, and did not, in
`his expert view, show an X Dimension of 0.580 inches or
`less. Moreover, there was evidence that the 3D model con-
`cerned a tool for testing closures and not for manufacturing
`bottles or preforms, which – if credited – could undermine
`the weight a reasonable factfinder would place on the 3D
`model.
`
`

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`15
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`Plastipak also introduced evidence from which a rea-
`sonable factfinder could find that Darr and Morgan con-
`ceived of their inventions entirely independently of any
`work on which Darr and Falzoni had collaborated. There
`is, for example, evidence that Plastipak’s claims originated
`with Morgan in January 2006 and that Morgan personally
`derived the 0.580-inch X Dimension based on measure-
`ments he took of human thumbs. The record could likewise
`support a finding that Falzoni contributed nothing to the X
`Dimension Limitation. It contains evidence that: Darr sub-
`mitted designs to Falzoni of neck portions with X Dimen-
`sions greater than 0.580 inches – initially 0.591 inches and
`later increasing to 0.641 inches – without objection from
`Falzoni; Falzoni believed Darr was best suited to choose
`the thickness of the support flange, which would neces-
`sarily affect the height of the X Dimension; and Figure 6,
`on which Premium Waters relies as a purported embodi-
`ment of all twelve patents-in-suit, may have been con-
`ceived of and resulted from work by Darr, not Falzoni.
`Ultimately, we agree with Premium Waters that it pre-
`sented sufficient evidence from which a reasonable fact-
`finder may find clear and convincing evidence that Falzoni
`was a joint inventor of the X Dimension Patents. Such a
`finding could be grounded in Falzoni’s testimony, as cor-
`roborated by the 3D model and the testimony of another
`SACMI employee, as well as the arguably suspicious time-
`line, in which the collapse of Plastipak’s efforts to license
`SACMI’s ML27 design was quickly followed by Darr and
`Morgan filing their patent application. Such a finding
`could lead to the conclusion that the X Dimension Patents
`are invalid for failure to name Falzoni as an inventor. Cru-
`cially, however, nothing in the record requires a reasonable
`factfinder – particularly one who is resolving all fact dis-
`putes, and drawing all reasonable
`inferences,
`in
`
`

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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`Plastipak’s favor – to make these necessary findings.8 Ac-
`cordingly, summary judgment of invalidity is not war-
`ranted.
`
`B
`Summary judgment invalidating the Discontinuous
`TEF Patents is also inappropriate. With respect to these
`patents, there is, at a minimum, a genuine dispute of ma-
`terial fact as to whether Falzoni contributed anything
`other than what was already the state of the art.9 See Nar-
`tron Corp. v. Schukra U.S.A. Inc., 558 F.3d 1352, 1356-57
`(Fed. Cir. 2009) (providing well-known principles does not
`make one a joint inventor); Eli Lilly & Co. v Aradigm Corp.,
`376 F.3d 1352, 1362 (Fed. Cir. 2004) (“A contribution of in-
`formation in the prior art cannot give rise to joint inventor-
`ship because it is not a contribution to conception.”); see
`also In re VerHoef, 888 F.3d at 1366 (reviewing for
`
`In reaching this conclusion, we have considered not
`8
`
`just the evidence highlighted in the body of this opinion,
`but all of Premium Waters’ evidence, such as SACMI’s No-
`vember 2005 internal presentation, and similarities be-
`tween the figures in the patents and the ’860 patent
`application, on the one hand, and 2D images created by
`Premium Waters based on Falzoni’s purported 3D model,
`on the other. Whether the evidence is considered individ-
`ually or in totality, it does not require a reasonable fact-
`finder to find that Falzoni is a co-inventor of the X
`Dimension Patents.
`9 We address these issues with respect to just five of
`
`the patents-in-suit, as this is how the parties have pre-
`sented the issue on appeal. In the District Court, Premium
`Waters sought summary judgment of invalidity with re-
`spect to eleven of the twelve Plastipak patents – all but the
`’312 patent – on the basis of Falzoni’s purported contribu-
`tion to the Discontinuous TEF Limitation. [See J.A. 1630-
`31]
`
`

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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`17
`
`substantial evidence Patent Trial and Appeal Board’s de-
`termination that feature of invention was not well-known
`in art).
`Plastipak marshaled evidence from which a reasonable
`factfinder, and particularly one viewing the evidence in the
`light most favorable to Plastipak, could find that a discon-
`tinuous TEF was well-known and constituted the state of
`the art, and, therefore, Falzoni’s contribution of a discon-
`tinuous TEF was not sufficient to justify joint inventorship.
`This evidence included several prior art patents which
`might be read as disclosing a discontinuous TEF – which is
`how the Examiner evaluating Plastipak’s applications read
`at least one of them – as well as statements made by Fal-
`zoni.10 Premium Waters disputes all this, based, in part,
`on its interpretation of testimony from Plastipak’s expert.
`All of this demonstrates there is a genuine dispute as to the
`material fact of whether Falzoni’s purported contribution
`was merely the state of the art. See Nartron, 558 F.3d at
`1356-57 (state of art is factual question); Pannu, 155 F.3d
`at 1351 (state of art is material fact in evaluating nonjoin-
`der). Even the District Court recognized that “[t]he parties
`dispute whether the use of a [TEF] that is discontinuous,
`viewed in isolation, is another novel aspect of the patents-
`in-suit.” J.A. 6 n.5. Resolution of this fact dispute is nec-
`essary in order to determine whether Falzoni was a joint
`inventor and, thus, whether the patents are invalid for
`nonjoinder. Accordingly, summary judgment of invalidity
`of the Discontinuous TEF Patents is not proper.
`
`
`10 The parties dispute whether Falzoni’s purported
`statements are inadmissible hearsay. We need not reach
`this issue because Plastipak’s other evidence was sufficient
`to create a genuine dispute of material fact precluding
`summary judgment. See Haugerud v. Amery Sch. Dist.,
`259 F.3d 678, 690-91, 691 n.3 (7th Cir. 2001).
`
`

`

`Case: 21-2244 Document: 49 Page: 18 Filed: 12/19/2022
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`18
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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
`
`C
`The District Court concluded that any reasonable fact-
`finder would have to side with Premium Waters on these
`disputed facts. We disagree. Although the District Court
`may be correct that Premium Waters presented an “over-
`whelming” amount of evidence, J.A. 1, that does not mean
`Plastipak presented an insufficient amount of evidence
`from which a reasonable factfinder could find, instead, that
`Falzoni was not a joint inventor. Moreover, while the Dis-
`trict Court may have been understandably skeptical of
`Plastipak – based on the apparent tension between Darr’s
`testimony that he was unaware in 2005 of others’ efforts to
`develop lightweight neck finishes and the subsequent pro-
`duction, by Premium Waters, of the SACMI evidence,
`which Plastipak had “failed to disclose timely” and “effec-
`tively (if not intentionally) hid[],” J.A. 15-20, 30 n.18 – the
`SACMI evidence did not erase from the record Plastipak’s
`evidence of its alleged independent invention. Just be-
`cause Plastipak’s witnesses, in the words of Premium Wa-
`ters, “professed no recollection” of the SACMI evidence
`does not render that evidence “essentially uncontroverted,”
`as Premium Waters wrongly states. Response Br. 2. A
`factfinder, not the trial court at summary judgment, will
`need to weigh all of the competing evidence and draw its
`own reasonable conclusions as to inventorship. See gener-
`ally Runkel v. City of Springfield, 51 F.4th 736, 741-42 (7th
`Cir. 2022).
`While we have stated that “[c]onception is the touch-
`stone of inventorship,” Burroughs Wellcome Co. v. Barr
`Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994), we have
`also emphasized that “[c]ontributions to realizing an inven-
`tion may not amount to a contribution to conception if they
`merely explain what was then state of the art,” Eli Lilly,
`376 F.3d at 1359 (internal quotation marks omitted). We
`have further observed that the “line between actual contri-
`butions to conception and the remaining, more prosaic con-
`tributions to the inventive process that do not render the
`
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`Case: 21-2244 Document: 49 Page: 19 Filed: 12/19/2022
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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`19
`
`contributor a co-inventor is sometimes a difficult one to
`draw.” Eli Lilly, 376 F.3d at 1359.
`As this case illustrates, often the assessment of what
`contribution has been made by a purported inventor, and
`whether that contribution is significant, is bound up with
`material fact disputes which a reasonable factfinder could
`resolve in favor of either party. Here, specifically, a rea-
`sonable factfinder could find Falzoni did not provide Darr
`with the X Dimension Limitation and merely “contributed”
`the prior art concept of a Discontinuous TEF – and these
`findings would mean Falzoni is not a joint inventor. Alter-
`natively, a reasonable factfinder could find the opposite, in
`which case Falzoni should have been listed on the Plasti-
`pak patents as a joint inventor. On the record before the
`District Court, these genuine disputes of material fact were
`not amenable to resolution on summary judgment.
`Hence, again, the grant of summary judgment was not
`proper.
`
`IV
`We have considered the parties’ remaining arguments
`and find them unpersuasive.
`We have not weighed the evidence nor determined the
`truth of the matters before us. Our role is to evaluate
`whether the record reveals genuine disputes of material
`fact precluding summary judgment, and we find that there
`are. Therefore, we must reverse the District Court’s grant
`of summary judgment in favor of Premium Waters and re-
`mand to that Court for further proceedings not inconsistent
`with this opinion.11
`
`
`11 Premium Waters moved for summary judgment on
`other grounds in addition to improper inventorship, includ-
`ing indefiniteness. On remand, it will be for the District
`
`
`

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`Case: 21-2244 Document: 49 Page: 20 Filed: 12/19/2022
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`20
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`PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC.
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`REVERSED AND REMANDED
`COSTS
`
`No costs.
`
`
`Court to determine what motions it must now consider or
`whether, instead, the case is ready for trial.
`
`