Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 1 of 37
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`PLASTIPAK PACKAGING, INC.,
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`Plaintiff,
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`v.
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`PREMIUM WATERS, INC.,
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`OPINION AND ORDER
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` 20-cv-098-wmc
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`Defendant.
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`In this action, plaintiff Plastipak Packaging, Inc., alleges that defendant Premium
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`Waters, Inc., infringes a number of asserted claims in 12, related patents-in-suit, all
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`concerning the “neck finish” of a plastic bottle. While not disputing that its plastic water
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`bottles infringe Plastipak’s patents-in-suit, Premium Waters asserts several invalidity
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`defenses, a number of which are now the subject of both parties’ cross-motions for
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`summary judgment. (Dkt. ##105, 116.) The court will grant defendant’s motion for
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`summary judgment in light of overwhelming evidence that plaintiff failed to name all of
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`the correct inventors for each of the patents-in-suit in violation of 35 U.S.C. § 102(f).1
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`UNDISPUTED FACTS2
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`A. Overview of the Parties
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`Plastipak is a Delaware corporation, with its principal place of business located in
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`1 Despite plaintiff’s motion for summary judgment as to infringement of all of the asserted claims
`being unopposed, the parties could not reach a stipulation on infringement, with both sides casting
`aspersions on the other party. Defendant’s reluctance appears to be rooted mainly in its position
`that it cannot infringe an invalid patent, but there is nothing to suggest that plaintiff was seeking
`entry of partial judgment on infringement grounds, rather than entry at the time of final judgment
`provided the patents survive defendant’s myriad invalidity challenges. Regardless, given the court’s
`finding on defendant’s nonjoinder challenge, this issue is now moot.
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`

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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 2 of 37
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`Michigan. Plastipak manufactures and sells containers and packaging for consumer
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`products, including bottled water. Defendant Premium Waters is both incorporated and
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`maintains its principal place of business in Minnesota. Premium Waters is a manufacturer
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`and supplier of bottled water products. While it is principally located in Minnesota,
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`Premium Waters also owns and operates a bottled-water manufacturing plant in Chippewa
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`Falls, Wisconsin, which is located within this judicial district.
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`B. Patents-in-Suit
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`Plastipak alleges that Premium Waters manufactures, uses and sells plastic water
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`bottles and preforms that infringe the following twelve patents: 8,857,637 (“the ’637
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`patent”); 9,033,168 (“the ’168 patent”); 9,139,326 (“the ’326 patent”); 9,403,310 (“the
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`’310 patent”); 9,522,759 (“the ’759 patent”); 9,738,409 (“the ’409 patent”); 9,850,019
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`(“the ’019 patent”); 10,023,345 (“the ’345 patent”); 10,214,311 (“the ’311 patent”);
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`10,214,312 (“the ’312 patent”); 10,266,299 (“the ’299 patent”); and 10,457,437 (“the
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`’437 patent”).3 As directed by the court, Plastipak has reduced its asserted claims to 21 as
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`reflected in the following table:
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`Patent
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`Claim(s)
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`’637 patent
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`’168 patent
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`30, 34
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`12, 15, 28
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`2 Unless otherwise noted, the following facts are material and undisputed. Given the voluminous
`proposed findings, the court limits this section to the key, overarching facts and addresses other
`undisputed facts as specific arguments in the opinion that follows.
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` 3
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` More specifically, Plastipak contends that 10 different products infringe one or more of the
`asserted claims, including Premium Waters’ 10 oz., 0.5 L, 20 oz., 24 oz., 0.7 L, and 1 L-sized
`bottled water products, which are then sold under various brand names including Glacier Clear.
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`2
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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 3 of 37
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`’326 patent
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`’310 patent
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`’759 patent
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`’409 patent
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`’019 patent
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`’345 patent
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`’311 patent
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`’312 patent
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`’299 patent
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`’437 patent
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`29
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`3,14
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`29
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`8
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`30
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`28
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`14
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`7, 11
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`2, 5, 9, 12, 26
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`30
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`Each of the patents-in-suit is titled “Lightweight Plastic Container and Preform,”
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`and as suggested by their title, each generally relates to reducing the weight of plastic
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`containers and the plastic preforms from which they are made. The same two individuals,
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`Richard C. Darr and Edward V. Morgan, are named as the sole inventors on all 12 patents.
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`The ’637 patent issued on October 14, 2014, from U.S. Application Serial No.
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`11/749,501, filed on May 16, 2007.4 Application 11/749,501 was itself a continuation-
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`in-party of U.S. Application Serial No. 11/368,860 (“the ’860 application”), filed on March
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`6, 2006, which issued as U.S. Patent No. 7,608,159, which is not asserted in this case. In
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`addition to the ’637 patent, the other, 11 related patents were issued between May 19,
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`2015, and October 29, 2019. The specifications for the ’168, ’326, ’310 and ’759 patents
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`all incorporated by reference the entirety of the ’860 application, among other earlier
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`patent applications. The remaining six patents were all filed as a continuation of the
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`application from which an earlier patent issued. As a result, the patents-in-suit all claim
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`4 A Certificate of Correction was issued on January 6, 2015.
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`3
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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 4 of 37
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`priority to the original May 16, 2007, application that issued as the ’637 patent, and
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`plaintiff’s technical expert purports to opine that all of the asserted claims of the patents-
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`in-suit are “entitled” to that effective filing date.
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`Plaintiff submits additional findings specific to its motion for summary judgment
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`on infringement (Pl.’s PFOFs (dkt. #119) ¶¶ 200-34), but as explained above, the court
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`will not recount these facts since there is no dispute that the accused products infringe the
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`patents-in-suit. The parties also propose facts relevant to various invalidity challenges,
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`which the court will address as relevant in the opinion below, rather than recite them in
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`detail here.
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`C. Background of Technology
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`The plastic bottles accused of
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`infringement are comprised primarily of
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`polyethyleneterephthalate (“PET”). Such bottles generally are created using a two-step
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`process: (1) manufacturing a “perform” via “injection molding” and (2) “blow-molding”
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`the preform into a bottle. Figure 2 of the ’637 patent depicts a plastic preform as shown
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`below:
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`4
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`(Def.’s PFOFs (dkt. #107) ¶ 41.) A preform includes a neck portion (often referred to as
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`a “neck finish”), indicated by reference number 42 above, and beneath the neck portion, a
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`lower portion that resembles a test tube.
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`Figure 1 of the ’637 patent illustrates a bottle formed from a preform:
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`5
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`(Id. ¶ 43.) The neck portion or finish of the bottle, indicated by reference number 16, will
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`have “substantially the same dimensions” as the neck portion of the preform. (Pl.’s Resp.
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`to Def.’s PFOFs (dkt. #153) ¶ 44.)
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`Material to the parties’ motions, “X” is the overall height of the neck finish,
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`measured from the top of the neck finish to the lower surface of the support flange.
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`Plaintiff alleges that one novel aspect of its invention is a neck finish height (or X
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`dimension) of 0.58 inches or less.5 Plaintiff further alleges that it discovered through
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`research and development, that plastic bottles could be produced with neck finishes that
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`were lighter as a result of having a shorter X dimension. Figure 5 in the ’637 patent shows
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`the X dimension, among others:
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`(Def.’s PFOFs (dkt. #107) ¶ 57.)
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`5 The parties dispute whether the use of a tamper-evident formation that is discontinuous, viewed
`in isolation, is another novel aspect of the patents-in-suit.
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`6
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`The neck finishes described in the patents-in-suit also include certain well-known,
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`structural features present in many neck finish designs. For example, the neck finishes
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`include threads, a temper-evident formation, and a support flange, also known as a support
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`ledge or support ring. The ’637 patent illustrates examples of each in Figure 6, reproduced
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`with annotations from the ’637 specification:
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`(Def.’s PFOFs (dkt. #107) ¶ 57.)
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`OPINION
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`In its motion, defendant Premium Waters seeks summary judgment on the
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`following bases: (1) the patents-in-suit are invalid under 35 U.S.C. § 102(f) because the
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`patents do not name all or the correct inventors; (2) the asserted claims are invalid as
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`indefinite under 35 U.S.C. § 112; (3) the asserted claims are invalid for lack of enablement,
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`also under § 112; and (4) Plastipak cannot recover pre-notice damages. In its cross-motion,
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`Plastipak Packaging seeks summary judgment on: (1) infringement of all of the asserted
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`claims of the patents-in-suit; (2) defendant’s inequitable conduct defense; (3) defendant’s
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`anticipation and obviousness contentions, at least with respect to two prior art references;
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`7
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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 8 of 37
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`and (4) other defenses. Because the court concludes that defendant’s nonjoinder defense
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`warrants summary judgment in its favor invalidating all of the patents-in-suit, the court
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`need not reach the parties’ other bases for summary judgment, although the court will
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`address briefly defendant’s indefiniteness challenge, finding significant merit in that
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`defense as well.
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`I. Nonjoinder / Derivation
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`A. Relevant Facts Concerning SACMI ML27 System
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`1. ML27 Design
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`SACMI Imola is an Italian company located in Imola, in Northern Italy. Alessandro
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`Falzoni is an employee of SACMI, having worked there since 1997. From 2004 through
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`2007, Falzoni was in charge of a section of SACMI’s packaging laboratory, mainly with
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`respect to plastic caps and metal caps. At his deposition, Falzoni testified that he designed
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`a new neck finish and cap combination in 2004. Plaintiff challenges defendant’s
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`characterization that Falzoni designed a “neck finish,” pointing to testimony that he did
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`not design the lower surface of the support flange. (Pl.’s Resp. to Def.’s PFOFs (dkt. #153)
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`¶ 96.) Regardless, Falzoni’s design became known as the “Multi-Lok 27” or “ML27” for
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`short.
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`Falzoni testified that there were two objectives to his ML27 design. The first
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`objective was to make a lighter-weight neck and cap combination, which Falzoni testified
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`came from having a shorter neck and closure. The second objective was to provide
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`increased security for the consumer by designing the neck-cap combination so that the
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`8
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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 9 of 37
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`tamper band breaks before the seal of the container is lost. The increased security was
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`provided through four lugs of the neck finish that engaged flaps on the closures’ tamper
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`band, replacing the continuous bead used in “normal” neck finishes.6 Falzoni’s description
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`of the objectives of the ML27 design is consistent with that of fellow SACMI employee
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`Claudio Scudellari, who was in charge of the North American market for SACMI packaging
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`machines from 1998 through 2013. The ML27 was designed for use with carbonated soft
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`drinks, but Falzoni testified at his deposition that the neck finish also could be used for
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`still water. (Falzoni Dep. (dkt. #97) 50-51.)
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`In August 2004, SACMI was preparing to make a mold to produce prototypes of
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`the ML27 or at least of the caps. By early 2005, SACMI had molded prototypes of the
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`closure of the ML27 system. At the same time, Falzoni was preparing presentations to
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`update SACMI’s salespeople and potential customers of the features of this neck-cap
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`combination. In one presentation -- delivered only internally -- dated November 16, 2005,
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`Falzoni explained why he thought it was possible to remove weight from the standard neck
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`finish and also why the standard neck finish used unnecessary plastic.
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`Specifically, Falzoni explained that it was possible to move the tamper bead closer
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`to the support ledge, allowing for a reduction in the neck height by eliminating unused
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`space beneath the threads. A diagram in this presentation shows a neck finish with a
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`distance from the lower surface of the neck support ring to the top of the neck finish that
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`was 14.7 mm, which is equal to 0.5787 inches. Between 2005 and 2007, SACMI proposed
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`6 Plaintiff disputes whether this design actually provided increased security in light of subsequent
`testing performed by Plastipak inventor Darr.
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`9
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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 10 of 37
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`a 14.7 mm neck finish to multiple parties in the United States, including Plastipak, Owens-
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`Illinois and Coca-Cola.
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`2. SACMI’s Interactions with Plastipak
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`At his deposition, Scudellari described several interactions he had with Plastipak,
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`including its President William Young, during his tenure as SACMI’s North American
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`market head from 2004 through 2013. In May or June 2005, Scudellari specifically
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`recalled introducing the ML27 design to Plastipak, although he could not remember
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`whether he met with Young or other people at Plastipak. Scudellari also testified that
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`Plastipak was interested in obtaining exclusive rights to SACMI’s ML27 design.
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`There appears to be no dispute that Scudellari also introduced Falzoni to Plastipak’s
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`named inventor Richard Darr during this same time frame. Moreover, on June 13, 2005,
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`Falzoni emailed a 3D model of the ML27 design to Darr. Plaintiff clarifies that the
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`attachment to the email was a .zip drive file containing a single IGS file, but as Falzoni’s
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`email explained what he sent was “the 3D model of the neck finish,” with the “area below
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`the neck support ring . . . left undefined and you can change it at your ease.” (Def.’s PFOFs
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`(dkt. #107) ¶ 118.) Plaintiff also contends that this 3D image is not relevant because it is
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`of a “metal testing tool” not a plastic neck finish or preform. (Pl.’s Add’l PFOFs (dkt. #153)
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`¶¶ 347-48.) As Falzoni explained during his deposition, however, “[i]t was the drawing of
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`the testing device, and the dimension of the neck finish were through to plastic dimensions
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`that we wanted to have on the neck finish of the bottles at the time.” (Def.’s Resp. to Pl.’s
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`Add’l PFOFs (dkt. #159) ¶ 348.) In other words, the dimensions in the drawing reflect
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`dimensions of a plastic neck finish.
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`10
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`Further, during his deposition, Falzoni actually retrieved the email that he sent to
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`Darr on June 13, 2005, opened the .zip folder that was attached, and presented the
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`contents of the folder on his shared computer screen. Specifically, that folder contained a
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`file named UCM0039a345.IGS.7 As Falzoni testified, the 3D model included threads, a
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`discontinuous tamper-evident formation, and a support flange, although as plaintiff points
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`out, the lower surface of the support flange was not represented. In the 3D model of the
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`ML27 neck finish, the distance from the top of the neck finish to the bottom of the support
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`ring (as it is depicted in the image) was 14.304 mm (or 0.563 inches), which Falzoni
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`personally measured and confirmed during his deposition as shown in the below image:
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`(Def.’s PFOFs (dkt. #107) ¶ 126 (citing Gross Decl., Ex. 29 (dkt. #110-10).) Falzoni also
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`7 Plaintiff raises issues about whether this file was the same as that previously produced by SACMI
`or whether it was otherwise properly authenticated. Given that Falzoni pulled up the email with
`the attachment during the course of his deposition, and defendant represents that the 3D model is
`the one identified by Falzoni at his deposition, the court finds no merit to this objection. If
`anything, Falzoni’s deposition confirmed that the measurements in the 3D file sent to Darr were the
`same as the measurements in the 3D file SACMI’s counsel produced to Premium Waters.
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`11
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`measured and confirmed that the distance from the top of the neck finish to the lower
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`surface of the tamper bead was 10.31 mm (or 0.4059 inches).
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`Also, on June 13, 2005, Darr responded to Falzoni as follows: “Thank you for the
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`3D model. I will be creating a finished drawing using this file and will be sending it back
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`to you for verification before I cut the neck ring.” (Def.’s PFOFs (dkt. #107) ¶ 128 (citing
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`Gross Decl., Ex. 24 (dkt. #110-3)).) Also on that date, Darr sent Falzoni another email
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`stating, “Please see attached PDF of the 27mm finish with the support flange and the
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`estimated weight as compared to the 28 mm PCO finish and the 26.7MM Water finish.”
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`(Id. ¶ 129 (citing Gross Decl., Ex. 25 (dkt. #110-4)).) This PDF drawing showed a distance
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`from the bottom of the support ring to the top of the opening of 15.01 mm or .591 inches
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`and a distance from the top of the neck finish to the lower surface of the tamper bead (also
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`known as the “D distance”) of 10.31 mm, which is consistent with the design Falzoni sent
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`to Darr. Falzoni testified at his deposition that the drawing prepared by Darr had a neck
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`height (or X dimension) greater than he had provided in the original 3D model -- 15.01
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`mm versus 14.304 mm -- because Darr’s drawing had a thicker support ledge.
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`The very next day after Darr sent his drawing, June 14, 2005, Scudellari and Darr
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`exchanged emails to arrange a meeting between Scudellari, Darr, Young and another
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`Plastipak employee, Bill Slat, in Plymouth, Michigan, on June 22, 2005. On June 29,
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`Scudellari further sent Darr, Young and Slat an email thanking them for their hospitality
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`and discussing closures for the ML27 system, giving rise to a reasonable inference that the
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`June 22 meeting occurred. Regardless, on August 4, 2005, Darr sent an email to yet
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`another SACMI employee, Giuseppe Lesce, copying Scudellari and Slat, discussing an
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`12
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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 13 of 37
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`upcoming meeting at the “drinktec” trade exhibition, during which Darr explained that he
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`would like “to have a discussion . . . regarding the exclusivity that [Plastipak] would like to
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`have on the closure. You should be prepared to offer us a proposal on what you would
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`require from Plastipak to make this happen.” (Def.’s PFOFs (dkt. #107) ¶ 153 (citing
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`Gross Decl., Ex. 34 (dkt. #111-4)).)
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`On August 8, Lesce responded to Darr that SACMI had decided to present its design
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`-- describing it as “our ML27 cap” -- to a couple of companies, including Plastipak. On
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`August 16, Darr replied, informing Lesce and Scudellari that he intended to visit SACMI
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`on September 12 and wanted to arrange a meeting at drinktec on September 14 to discuss
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`the ML27. Darr emphasized that he would be present in person, along with Young, Slat,
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`and other Plastipak employees. On August 29, Darr again wrote to Lesce and Scudellari
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`indicating that the Plastipak attendees would also include Ed Morgan, President Bill
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`Young’s son-in-law, who would become the other named inventor on the patents-in-suit.
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`Finally, on September 8, 2005, Plastipak provided SACMI with plastic bottles to test the
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`closure and neck finish in advance of their planned meeting.8 Plaintiff disputes that the
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`bottles reflected the ML27 design, again based on its contention that the neck finish in
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`the 3D image lacked the bottom surface of a support flange, making it “incomplete.”
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`In September 2005, SACMI and Plastipak employees met in Munich, Germany, at
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`the drinktec exhibition. On September 27, Scudellari then followed-up by emailing
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`Plastipak employees, including Darr, a quotation for the sale of a machine capable of
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`8 Plastipak also provided SACMI with bottles featuring its own PCO 1810 neck finish for
`comparison’s sake.
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`13
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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 14 of 37
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`manufacturing a version of the ML27 closure design, which was specifically for use with
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`plastic water containers. On September 28, Lesce next emailed to Darr and Young a
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`proposal under which SACMI would grant Plastipak one year of exclusivity on the
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`production of caps and preforms using the M27 design in the United States. On December
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`29, Lesce further emailed Darr a more detailed proposal setting forth specific terms under
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`which SACMI was prepared to offer use of the ML27 system, including a three-year period
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`of exclusivity on the production of caps and preforms using the ML27 design in the United
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`States market subject to certain limitations.
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`After Darr responded to Scudellari with a counterproposal on January 2, 2006,
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`however, Scudellari observed on January 27 that “our respective Companies’ positions
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`don’t quite come . . . together.” (Def.’s PFOFs (dkt. #107) ¶ 167.) In particular, Scudellari
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`stated that Plastipak’s commitment to purchase only SACMI’s cap-making machines “does
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`not quite get even close to our idea of fair payback, since it would represent a relatively
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`minor aspect of the deal if compared to the technology and machinery volumes engendered
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`by the PET preform’s side of the deal.” (Id. (quoting Gross Decl., Ex. 46 (dkt. #112-5)).)
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`Despite additional back and forth between the two sides, the parties failed to reach an
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`agreement on exclusivity on SACMI’s preform design by March 2006, prompting Slat to
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`cancel the order Plastipak had placed with SACMI for a molding machine to produce
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`closures for water bottles.
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`That same month, unbeknownst to Scudellari, Falzoni or anyone else at SACMI,
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`Plastipak applied for a patent claiming a plastic container with specific neck finish
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`dimensions and naming Darr and Morgan as the sole inventors. Plastipak did not disclose
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`the SACMI ML27 system in any documents to the USPTO. Defendant further points out
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`that this system was not disclosed in other Plastipak lawsuits involving the patents-in-suit,
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`although plaintiff points out that the defendant in one case asked SACMI to identify prior
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`art to the Plastipak patents. (Pl.’s Resp. to Def.’s PFOFs (dkt. #160) ¶ 181.)
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`In September 2006, Falzoni also presented a drawing PPM04898006 to the
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`Reduced Height/Lightweight PCO 1881 Finish Subcommittee of the International Society
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`of Beverage Technologists (“ISBT”), which he represents reflects the ML27 design and
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`shows a neck height of 15 mm (or 0.59 inches) from the top to the bottom of the support
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`ring. A Plastipak employee, Rebecca Vachow-Smith, was also in attendance at that
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`presentation. In addition, the parties stayed in touch with Scudellari visiting Darr in
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`Michigan, and in May 2007, Darr indicated that he and Slat would be interested in visiting
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`SACMI to observe a new compression molding prototype. Darr also indicated that they
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`would “like to receive an update on what you are doing with the ML27 finish.” (Id. ¶ 178
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`(quoting Gross Decl., Ex. 50 (dkt. #112-9)).) However, it appears Darr never discussed
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`that he and Plastipak were seeking a series of patents based on Falzoni’s original design
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`and their subsequent collaboration.
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`B. Disclosure of Invalidity Contentions Based on SACMI ML27 System
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`Before turning to the merits of defendant’s invalidity contentions based on the
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`SACMI ML27 design, the court must first determine whether defendant’s untimely
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`disclosure of this contention was justified or harmless. To begin, Premium Waters served
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`its first set of document requests and interrogatories on Plastipak on April 16, 2020, the
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`date of the parties’ Rule 26(f) conference. Interrogatory No. 16 states:
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`15
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`Describe all of Plastipak’s prior efforts to design, develop, or
`manufacture—whether on its own or with a third party—water
`bottles and preforms for water bottles where the vertical
`distance from the dispensing opening to the lower surface of
`the support flange (“Vertical Distance”) was 0.75 inches or
`less. Plastipak’s answer should identify each preform and
`bottle having a unique Vertical Distance of 0.75 inches or less,
`the date such designs were created, and the individuals
`involved in creating the designs.
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`(Pl.’s Resp. to Def.’s PFOFs (dkt. #153) ¶ 196 n.1.) In response to this interrogatory,
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`Plastipak neither disclosed the ML27 system nor its plans with SACMI to manufacture
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`exclusively caps and preforms using SACMI’s design. Similarly, Plastipak produced no
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`documents concerning its dealings with SACMI concerning the ML27 system. At most,
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`plaintiff produced a document from ISBT that merely identifies SACMI generally.
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`By way of explanation, plaintiff contends wholly unconvincingly that the “potential
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`business opportunity with SACMI did not concern a water bottle or a preform for a water
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`bottle, and thus the details of this opportunity are not responsive to Interrogatory No. 16.”
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`(Id.) Plaintiff’s argument rests on an extremely strained interpretation of SACMI and
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`Plastipak’s interactions in 2005 and 2006 just detailed above, focusing on either the initial
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`3D image that it contends depicts a metal tool or the part of the deal concerning the design
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`and production of caps or closures rather than preforms. Viewing the full interaction
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`between Plastipak and SACMI in 2005 and 2006, and even extending into 2007,
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`defendant’s Interrogatory No. 16 required Plastipak to disclose its discussions of and
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`possible involvement in the design, development and manufacture of a bottle with a neck
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`finish well below .75 inches.9
`
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`9 Perhaps Plastipak’s aggressive document destruction policy could explain some of its failure to
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`
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`16
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`

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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 17 of 37
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`On July 10, 2020, Premium Waters then served invalidity contentions; and on
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`November 5, 2020, Premium Waters served supplemental invalidity contentions.
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`Unsurprisingly, given the lack of disclosure by plaintiff, neither document identifies
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`SACMI or ML27. However, on November 18, 2020, Premium Waters served a document
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`subpoena on SACMI, and on November 30, Premium Waters received responsive
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`documents, including documents concerning a neck finish and closure system referred to
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`as “ML27.” Moreover, as detailed above, many of the documents in SACMI’s production
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`were emails between its personnel and Plastipak personnel concerning the ML27 system,
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`including some with one of the named inventors of all twelve of the patents-in suit, Dick
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`Darr. Specifically, SACMI produced the June 13, 2005, email from Falzoni to Darr,
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`containing the 3D schematic of the ML27 design. Premium Waters also received
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`additional documents from SACMI later in December 2020, and again in January and
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`February 2021.
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`On December 8, 2020, approximately one week after SACMI’s initial document
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`production, Premium Waters also served its opening invalidity expert report by Dr.
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`Gregory Fisher, in which he opined that the patents-in-suit were invalid based on
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`derivation of SACMI. (Fisher 12/8/20 Rept. (dkt. #86) ¶¶ 637-47.)10 Dr. Fisher reiterated
`
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`disclose documents themselves, but as detailed below, Plastipak eventually produced engineering
`drawings with the “ML27” label prominently displayed from its own documents.
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`10 The court notes that plaintiff Plastipak has moved to exclude Fisher’s testimony as impermissible
`under Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579,
`591 (1993). (Dkt. #121.) In ruling on Premium Waters’ motion for summary judgment, the court
`is not relying on the substance of any opinion offered by Fisher, and, therefore, the court need not
`reach this motion. Fisher’s report is only cited for purposes of establishing when plaintiff was on
`notice of a § 102(f) defense.
`
`
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`17
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`

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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 18 of 37
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`this opinion in his January 27 and February 13, 2021, supplemental reports, appending
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`claim charts and updating based on additional information produced by SACMI in January
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`and February 2021. (Fisher 1/27/21 Rept. (dkt. #89) ¶ 32; Fisher 2/13/21 Rept. (dkt.
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`#90) ¶ 22).) Plastipak’s expert Ottmar Brandau also wisely served a supplemental report
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`to address Dr. Fisher’s opinions regarding SACMI on February 19, 2021. (Brandau
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`2/19/21 Rept. (dkt. #92) 13-21, 31-32.) Plaintiff does not dispute any of this.11 Indeed,
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`as plaintiff acknowledges in response to defendant’s additional findings of facts, “Plastipak
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`has been on notice of Premium Waters’ theory that the Patents-in-Suit are all invalid under
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`§ 102(f) since at least December 8, 2020.” (Pl.’s Resp. to Def.’s Add’l PFOFs (dkt. #163)
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`¶ 174.)12
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`On December 15, 2020, Premium Waters further sent Plastipak a letter requesting
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`the following:
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`• Plastipak produce all documents referring to or relating to SACMI’s ML27 finish
`and any closures for same;
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`• Plastipak supplement Interrogatory No. 16 to address its activities with SACMI
`concerning the ML27 finish; and
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`• Plastipak produce inventors Morgan and Darr for another deposition to address
`the SACMI ML27 finish.
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`Also on December 15, Premium Waters served a Rule 30(b)(6) deposition notice that
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`included topics directed to Plastipak’s involvement with SACMI.
`
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`11 At most, Plastipak points out that Fisher’s reports mention “derivation” rather than “nonjoinder,”
`which the court addresses below.
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`12 Plaintiff also points out that defendant did not plead an affirmative defense based on 35 U.S.C.
`§ 102(f), but the preliminary pretrial conference order provides that invalidity and unenforceability
`contentions are “treated as elements of pleading.” (Dkt. #17 at 2.) Moreover, in its contentions,
`defendant expressly relied on the disclosures in its expert reports.
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`
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`18
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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 19 of 37
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`Counsel and the parties then met and conferred on December 22, concerning
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`SACMI discovery issues. During that meet and confer, counsel for Plastipak represented
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`that it does not have email records from the period when Plastipak and SACMI were
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`communicating about the ML27 system, which is “consistent with its document retention
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`policy.” Specifically, counsel represents that Plastipak does not retain emails, samples and
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`other documents from 2005, although it did locate and produce the engineering drawings
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`related to the neck finishes it designed as detailed below. The parties dispute whether
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`Plastipak was willing to make Darr available for a second deposition. Although only
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`tangentially related to the parties’ dispute over defendant’s invalidity contentions as to the
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`ML27 system with regard to the SACMI revelations, defendant also takes issue with
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`plaintiff’s refusal to appoint Darr as the 30(b)(6) representative on this new topic and the
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`inadequacy of the corporate representative for the SACMI line of questioning.
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`Regardless, on January 7, 2021, Plastipak ultimately produced 22 documents in
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`response to Premium Waters’ December 15, 2020, letter concerning SACMI. The
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`production did not include email correspondence between Plastipak and SACMI, any notes
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`of discussions or collaborations, or internal correspondence concerning Plastipak’s dealings
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`with SACMI about the ML27 system, draft agreements concerning rights to the ML27
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`system or physical samples of preforms or bottles Plastipak created with the ML27 neck
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`finish. In particular, the produced documents did not contain the 3D model Falzoni
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`emailed to Darr on June 13, 2005. Again, plaintiff contends that this is all consistent with
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`its practice of regular document destruction under the retention policy.
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`As required by the court, Premium Waters filed a list of 21 enumerated invalidity
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`
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`19
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`

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`Case: 3:20-cv-00098-wmc Document #: 183 Filed: 08/19/21 Page 20 of 37
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`defenses on March 10, 2021. The 21st defense was “derivation/nonjoinder relating to
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`unasserted claims” and listed at least two claims for each of the patents-in-suit. (Dkt.
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`#84.)