MELROSEv.Kelley et al.

Patent Trial and Appeal Board

Sep 22, 2017

11529486 (P.T.A.B. Sep. 22, 2017)

BoxInterferences@uspto.gov Entered: September 22, 2017
Tel: 571-272-4683

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

David Melrose
and Graham Packaging Company,
Junior Party
(Application 13/270,886,
Inventor: David Melrose),

v.

Graham Packaging Company,
Senior Party
(Patents 8,087,525
Inventors: Paul Kelley, Scott Bysick and Justin Howell).

Patent Interference No. 106,050 (RES)
(Technology Center 3600)

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
DEBORAH KATZ, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

Decision – Priority (Derivation) - 37 C.F.R. § 41.125(a)
I. 1
This interference is between Melrose Application 13/270,886 and Graham 2
Patent 8,087,525. The interference had its genesis when Melrose copied Graham’s 3
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claims into the ‘866 application. Application 13/270,886, Transmittal Letter, 1
Received January 15, 2014. After examination of Melrose’s application was 2
complete, an examiner recommended declaration of an interference. This 3
interference was subsequently declared. Notice of Declaration, Paper 1. 4
During a conference call in the earliest phase of the interference, each party 5
was authorized to file a motion addressing inventorship. Melrose was authorized 6
to file a motion for “judgment based on prior inventorship/deriviation that Melrose 7
was the first inventor of the subject matter of Count 1.” Order Authorizing 8
Motions, Paper 16, 2:1-3. Graham was authorized to file a motion that Melrose 9
was not an inventor of the subject matter claimed in Graham’s patent. Order 10
Authorizing Motions, Paper 16, 1:5-6. Melrose motion (Mot. 1, Paper 80) is 11
before us. Graham did not file a motion, but opposed Melrose Motion. Graham 12
Opp. 1, Paper 102.1 13
We conclude that Melrose has established that the Graham inventors derived 14
the subject matter of the count from Melrose. We enter judgment against Graham. 15
II. 16
The invention relates to plastic containers that are designed, at least in part, 17
to accommodate changes in internal pressure that result from packaging or 18
subsequent handling. A change in internal pressure may occur when a sealed and 19
filled container is placed in a cooler environment. For example, plastic containers 20
for sports drinks typically must be filled and sealed hot to insure that the product 21
remains sterile. As the filled container cools, the container internal pressure 22

1 Graham filed a motion to exclude certain of Melrose’s evidence. Graham Mot.
Exclude, Paper 109. We have not found it necessary to rely on most of the
evidence sought to be excluded. We do not address the motion as to that evidence.
With respect to the objected-to evidence relied upon, we have addressed the
objections in footnotes where the objected-to evidence is first relied upon in this
opinion.
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decreases. The decreased pressure can result in deformation of the container 1
causing ugly aesthetics or poor container performance such as difficult end-user 2
handling. 3
Prior to the invention claimed by the parties, the industry incorporated 4
vacuum panels in the wall of the container to reduce the effects of decreased 5
internal pressure. The panels are designed to deform inwardly and ameliorate the 6
effects of the decrease in pressure and to achieve controlled deformation of the 7
container. The vacuum panels are incorporated into the wall of the container as 8
part of the blow molding processes typically used to make such containers. The 9
parties’ invention is apparently a refinement of the use of vacuum panels. 10
As claimed by the parties, the container includes a plastic body having a 11
neck with an opening. The neck is connected to a shoulder portion, which is 12
connected to a sidewall, which is connected to a bottom portion that forms the 13
base. The body sidewall includes deformable vacuum panels that contract to 14
decrease the volume of the container under reduced internal pressure conditions. 15
The panels are adapted to move inwardly or contract in response to the decrease in 16
pressure that occurs as a result of cooling. The inward movement causes both a 17
decrease in the volume of the container and a reduction in the internal pressure. 18
The sidewall also includes vertical transitional walls between and joining the 19
panels. 20
The parties each have three independent claims. Melrose’s independent 21
claims are identical to Graham’s. The six independent claims make-up the count: 22
Count 1 23
Claim 52 or Claim 74 or Claim 75 of [Melrose] Application 24
13/270,886 or Claim 1 or Claim 22 or Claim 24 of [Graham] 25
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Patent 8,087,525. 2 1
Notice of Declaration, Paper 1, p. 4. As noted in the declaration, the Count is the 2
disjunctive of the parties’ independent claims and priority may be proved by 3
showing an embodiment meeting all the limitations of any one of the alternative 4
claims. Id. 5
Melrose claim 52 and Graham claim 1 specify that the sidewalls include 6
“four [vacuum] panels,” that are designated as primary and secondary panels. The 7
secondary panels include contiguous horizontal ribs without intermediate regions 8
separating the ribs. The secondary panels must also be “vertically arced.” Melrose 9
Clean Claims, Paper 6, p. App A-1; Graham Clean Claims, Paper 8, p. 2. 10
Melrose claim 74 and Graham claim 22 require that the sidewall include “at 11
least a first and second pair of [vacuum] panels.” The second pair of panels must 12
be “vertically concave” and include horizontal ribs. Melrose Clean Claims, 13
Paper 6, p. App A-3 – A-4; Graham Clean Claims, Paper 8, p. 5. 14
Melrose claim 75 and Graham claim 24 require the sidewall include “more 15
than two vacuum panels,” and that “at least two panels are vertically concave.” 16
Melrose Clean Claims, Paper 6, p. App A-4; Graham Clean Claims, Paper 8, p. 6. 17
Claims 75 and 24 do not require that the vacuum panels include ribs. 18
We reproduce Melrose claims 52 and 75 as illustrative with italics and 19
bracketed paragraph lettering added. See Melrose Mot. 1, Paper 80, 4:3 – 5:20. 20
Melrose claim 52 21

2 The count is a so-called McKelvey count, now familiar in interferences.
Notwithstanding the disjunctive combination of claims, the count represents a
single patentable invention. 37 C.F.R. § 41.201, definition of “count.” In other
words, the individual claims represent different embodiments of a single invention.
If a party thinks the count should be different, e.g., that it covers more than a single
invention, it may request authorization to file a motion to substitute and/or add a
count. 37 C.F.R. § 41.121(a)(i); § 41.208(a); SO, Paper 2, ¶¶ 121 and 208.2.
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[a] A container comprising a plastic body having a neck 1
portion defining an opening, connected to a shoulder portion 2
extending downward and connecting to a sidewall extending 3
downward and joining a bottom portion forming a base, 4
[b] said sidewall including four panels, wherein said four 5
panels are vacuum panels, and including vertical transitional 6
walls disposed between and joining said panels, 7
[c] wherein said body is adapted to increase volume 8
contraction and reduce pressure, and said panels are adapted to 9
contract inwardly in response to internal negative pressure 10
created during hot-fill processing and subsequent cooling of a 11
hot liquid in said container; and 12
[d] wherein at least one of said panels is adapted for greater 13
uptake of internal negative pressure than one other of said 14
panels, wherein said panels comprise primary panels and 15
secondary panels and wherein said primary panels comprise 16
smaller surface area than said secondary panels; and 17
[e] further wherein the container comprises horizontal 18
transitional walls; wherein the secondary panels are recessed 19
with respect to the horizontal transitional walls; and wherein 20
said secondary panels include horizontal ribbings; 21
[f] wherein said horizontal ribbings are contiguous without 22
being separated by intermediate regions, and 23
[g] further wherein said secondary panels are vertically 24
arced. 25
Melrose Claim 75 26
[a] A container comprising a plastic body having a neck 27
portion defining an opening, connected to a shoulder portion 28
extending downward and connecting to a sidewall extending 29
downward and joining a bottom portion forming a base, 30
[b] said sidewall comprising more than two vacuum panels, 31
and including vertical transitional walls disposed between and 32
joining said more than two panels, 33
[c] wherein said body is adapted to increase volume 34
contraction and reduce pressure, and said panels are adapted to 35
contract inwardly in response to internal negative pressure 36
created during hot-fill processing and subsequent cooling of a 37
hot liquid in said container; and 38
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[d] wherein at least two panels of said more than two 1
vacuum panels are adapted for greater uptake of internal 2
negative pressure than one other of said vacuum panels, 3
[g] further wherein said at least two panels are vertically 4
concave. 5
III. 6
Melrose motion makes two arguments: (1) that he is the prior inventor by 7
virtue of a prior conception of the subject matter of the count coupled with 8
diligence to a reduction to practice and (2) that Graham derived the subject matter 9
of the count from Melrose. Melrose Mot. 1, 1:12-23. Graham responds that 10
Melrose (1) fails to prove a prior conception of the subject matter of the count and 11
(2) did not disclose to Graham a container meeting all the elements of the count. 12
Graham Opp. 1, Paper 102, 2-19. 13
At the outset, the parties disagree on the proper construction of certain 14
language of the claims that make-up the count. First, they disagree as to the 15
meanings of the requirements that the vacuum panels be “vertically arced” or 16
“vertically concave.” The former appears in Graham claim 1 and Melrose 17
claim 52. The latter appears in Graham claims 22 and 24 and Melrose claims 74 18
and 75. Secondly, they also disagree as to the effect of certain functional 19
limitations appearing in the claims. 20
Neither party has directed us to testimony on how one skilled in the art 21
would understand the scope of the claims. Rather, both parties address the claim 22
language, the specification, and the prosecution history to support their positions. 23
A. 24
In interferences the count is given its broadest reasonable construction. 25
Davis v. Loesch, 998 F.2d 963, 968 (Fed. Cir. 1993); DeGeorge v. Bernier, 768 26
F.2d 1318, 1321 (Fed.Cir. 1985). Where the count is the actual claims of the 27
parties, as here, those claims are given their broadest reasonable construction in 28
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light of the specification in which they form a part.3 See Rolls-Royce PLC v. 1
United Technologies Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010). 2
B. 3
Graham contends that the phrases “vertically arced” and “vertically 4
concave” are synonymously used in its specification and should be given the same 5
meaning. Graham Opp. 1, 9:1-3. Specifically, Graham argues that there is no 6
difference between the broadest reasonable construction of the two terms and 7
“vertically arced” should be interpreted to mean “inwardly curved” or “concave:” 8
Thus, when read in the appropriate context of the claim 9
language and specification, the broadest reasonable 10
construction of “vertically arced” and “concave” refers to the 11
inwardly-arced shape of the panels prior to any contraction in 12
response to negative internal pressure. 13
Graham Opp. 1, Paper 102, 9:10-12. 14
Melrose disagrees that “vertically arced” and “vertically concave” both 15
denote an inwardly-arced shape: 16
Graham’s entire argument boils down to an assertion that the 17
secondary panels must be concave prior to contraction, and the 18
Melrose evidence does not show that. 19
Melrose Rep. 1, Paper 103, 6:7-8. 20

3 The claims that make up the count are literally the claims of the application and
patent of which they form a part. Each of the claims that make up the count is
construed in light of its own specification. This is true even for copied claims.
Copied claims are construed in light of the donor’s specification only for the
purpose of written description to address the issue of whether the copier has
adequate basis to challenge the patentee’s priority of invention. Cf. Agilent
Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009).
Written description is not an issue in this interference.
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We agree with Melrose that “vertically arced” and “vertically concave” as 1
used in the claims that make up the count are not synonymous. We conclude that 2
“vertically arced” is generic and encompasses “vertically concave.” 3
1. 4
The two phrases have not been alleged to have an art recognized meaning. 5
The ordinarily understood, every day, meaning of “arced” denotes curvature or 6
something that has a curved shape. “Vertically arced” implies curvature in a 7
vertical direction, i.e. top to bottom. “Concave” denotes a particular type of 8
curvature--an inwardly curved shape. “Vertically concave” implies an inward 9
curvature that extends from top to bottom. Thus, the ordinarily understood 10
meanings of the phrases indicates that “vertically arced” is generic to and 11
encompasses “vertically concave.” 12
2. 13
The syntax of the parties’ claims also supports construing “vertically arced” 14
as generic. Graham claim 1 and Melrose claim 52 require that “said secondary 15
panels are vertically arced.” Graham clean claims, Paper 8, p. 2; Melrose clean 16
claims , Paper 6, p. App. A-1. Graham contends that “vertically arced” means 17
concave or “inwardly arced.” Graham Opp. 1, Paper 102, 9:10-12. However, 18
Graham Claim 15, depends from claim 13, which in turn depends from claim 1. 19
Claim 1 requires that the secondary panels be “vertically arced.” Dependent 20
claim 15 requires that “the secondary panels are convex.” Graham clean claims, 21
Paper 8, 2:21-22; 3:21-22 and 4:3-4. Because a dependent claim must add a 22
limitation, i.e., further limit, the claim from which it depends, the “vertically 23
arced” secondary panels of claim 1, as a matter of claim syntax, should be read to 24
encompass the convex secondary panels required by dependent claim 15. 25
Construing “vertically arced” in Graham claim 1 as meaning “vertically concave” 26
or “inwardly-arced” would necessarily exclude convex or outwardly arced 27
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secondary panels from the subject matter of claims 1 and 13, putting claim 15 in 1
likely violation of 35 U.S.C. § 112, ¶ 4. The same can be said with respect to 2
Melrose’s identical claims 52, 53 and 55. Thus, the syntax of Graham’s claims 1, 3
13 and 15 (and Melrose claims 52, 53 and 55) is consistent with a construction that 4
“vertically arced” is generic to “vertically concave.” 5
3. 6
The parties’ specifications also support a generic construction of the phrase 7
“vertically arced.” Thus, Graham’s specification notes that the panels may be 8
designed to be convex, concave or flat: 9
Prior to relief of negative internal pressure, e.g., during hot-fill 10
processing, the primary panels and secondary panels may be 11
designed to be convex, substantially straight/flat or concave 12
shaped, and/or combinations thereof . . . . 13
Ex. 2005, 6:42-45. Melrose specification makes an essentially identical statement. 14
Ex. 2001, ¶ [0075]. As used in the specifications “arced” is an apt generic word 15
for describing the possible curved structures of the vacuum panels, i.e., convex or 16
concave. 17
Additionally, the parties’ specifications seem to distinguish “vertically 18
concave” from “vertically acred.” In describing the secondary panels shown in 19
Graham’s Figure 1 embodiment, Graham’s specification provides the following 20
guidance with respect to the meaning of “vertically concave:” “The secondary 21
panels 108 are vertically concave (e.g., arced inwardly in progressing from top to 22
bottom) . . . .” Ex. 2005, 7:28-32 (emphasis added). Melrose specification 23
provides essentially the same statement. Ex. 2001, p. 7, ¶ [0081]. Thus, the 24
parties’ specifications identify “concave,” i.e., “inwardly arced,” as a species of 25
“arced.” 26
Graham directs us to portions of its specification where the phrase 27
“vertically concave” and “concave shaped” are paired with the parenthetical 28
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“arced” as supporting that “vertically arced” and “vertically concave” should be 1
given the same meaning. Graham Opp. 1, 8:15 – 9:9. For example, Graham’s 2
written description states: 3
In still other exemplary embodiments, for example as illustrated 4
in FIG. 8, the primary panels 807 can be vertically concave 5
shaped (arced) and become wider progressing from top to 6
bottom thereof. The secondary panels 808 can be vertically 7
concave (arced) and have consistent width progressing from top 8
to bottom thereof. 9
Ex. 2005, 7:45-51. However, in light of the general teaching that the panels may 10
be convex, substantially straight/flat or concave shaped, and/or combinations 11
thereof before and after filling and sealing (Ex. 2005, 6:42-49), the effect of the 12
parenthetical on “concave” in the context of the use of those phrases is ambiguous 13
at best. The parenthetical may indicate that “concave” is simply an example of 14
“arced” or may indicate that “concave” means “arced.” However, looking at the 15
totality of the disclosures and the ordinary meaning of the words, we determine 16
that the use of the parenthetical “arced” indicates that “concave” is an example of 17
“arced.” 18
4. 19
Graham also points to portions of its prosecution history to support its 20
argument. Graham Opp. 1, Paper 102, 9:13 – 10:11. Graham specifically refers to 21
the Krishnakumar patent (Ex. 1006). That patent, combined with other references, 22
was cited by the examiner against Graham’s claims. According to Graham, 23
Krishnakumar taught vertically-elongated vacuum panels that form a convex wall 24
that moves inwardly to form a concave profile due to negative pressure after 25
filling, sealing and cooling: According to Graham, 26
if “vertically arced” or “concave” panels were construed to 27
include the shape of such [concave] panels after contraction due 28
to negative internal pressure, such a feature is disclosed by 29
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Krishnakumar, which was considered by the Examiner during 1
prosecution of the application for the ’525 Patent and would 2
render the claims unpatentable. 3
Graham Opp. 1, Paper 102, 10:7-11. 4
We fail to see the relevance of this argument to the claim construction issue 5
as to the meaning of “vertically arced” and “vertically concave.” To the extent the 6
examiner in reaching a decision on patentability may have construed certain claim 7
language in the manner proposed by Graham, that construction is not binding on 8
this Board with respect to a different record developed in this interference. And 9
the Examiner’s ex parte decision is certainly not binding on Melrose who did not 10
have an opportunity to be heard. 11
5. 12
Thus, consistent with the ordinary meanings of “arced” and “concave,” as 13
well as the use in the parties’ claims and written descriptions, “vertically concave” 14
and “vertically arced” would not have the same meaning. The former requires an 15
inward curvature or arc progressing from top to bottom, while the latter simply 16
requires any curvature progressing from top to bottom. Thus, “vertically arced” is 17
generic as to the type of curvature. 18
We conclude that giving “vertically arced” and “vertically concave” their 19
broadest reasonable construction, they do not have the same meaning and the 20
former phrase is generic to, and encompasses, the latter phrase. 21
C. 22
The parties also disagree as to when the panels must be vertically arced or 23
vertically concave. Graham contends that “vertically arced” or “vertically 24
concave” are structural features of the container that refer to the shape of the panels 25
prior to internal pressure reduction and contraction. Graham Opp. 1, Paper 102, 26
12:1-2. In Graham’s view the structural element [g] in the claims (supra, pp. 4-5), 27
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requires that the bottle must possess “vertically arced” or “vertically concave” 1
panels prior to filling, sealing and cooling. Graham Opp. 1, Paper 102, 4:6 -11:6. 2
Melrose argues those limitations encompass vacuum panels that, while not 3
originally vertically arced or vertically concave, become vertically arced or 4
vertically concave due to contraction from the reduction in internal pressure: 5
As the sidewall panels of the bottle contract inwardly, they 6
become arced in the vertical dimension of the bottle. With 7
relation to the bottle, this arcing forms a vertically concave 8
surface. 9
Melrose Mot. 1, Paper 80, 16:5-8 (citations to the record omitted). Melrose argues 10
that the claims are not limited as Graham contends. Melrose Reply 1, Paper 103, 11
5:19 – 9:23. 12
1. 13
Looking at the claim language, the parties’ claims certainly can be read on a 14
bottle that, for example, has vertically arced or vertically concave vacuum panels 15
prior to filling. However, we fail to see anything expressed in the claims 16
themselves that would exclude coverage, for example, of a filled, sealed and 17
cooled bottle having vertically arced or vertically concave vacuum panels and 18
which also met all the functional capabilities regardless of the shape of the vacuum 19
panels prior to filling. 20
In this regard, we note that it would have been a simple matter for Graham 21
to have added language to the claims that would have limited the claims as it now 22
contends. For example, Graham could have simply written the ultimate limitation 23
of its claim 24 as “further wherein said at least two panels are vertically concave 24
prior to relief of negative internal pressure.” This would have been consistent 25
with its written description: 26
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“Prior to relief of negative internal pressure, e.g., during hot-1
fill processing, the primary panels and secondary panels may be 2
designed to be convex, substantially straight/flat or concave 3
shaped, and/or combinations thereof . . . .” 4
Ex. 2005 6:42-45 (emphasis added.) Graham’s specification goes on to state that 5
the vacuum panels must also be capable of changing configuration due to 6
contraction 7
so that after cooling of a closed container or after filling the 8
container with hot product, sealing and cooling, the primary 9
panels and/or secondary panels would decrease in convexity, 10
become vertically substantially straight/flat or increase in 11
concavity. 12
Ex. 2005, 6:45-49. Melrose’s written description says essentially the same thing. 13
Ex. 2001, ¶ [0075]. Thus the parties’ respective written descriptions describe that 14
the panels may be convex, flat or concave before filing but must have changed 15
configuration in response filling, sealing and cooling which may result in convex, 16
flat or concave panels. Nothing in the portions of the specification to which we 17
have been directed mandates when the panels should be vertically arced or 18
vertically concave prior to filling, sealing and cooling.. 19
2. 20
Graham also points to its drawings as support. Graham Opp. 1, Paper 102, 21
8:15-22. Graham there directs us to Figs. 1-8 and various portions of the 22
specification. Id. We have reviewed those drawings and the identified portions of 23
the specification. In this regard, we note that only Fig. 1A clearly shows an 24
unsealed bottle. Ex. 2005, p. 3. The remainder of the bottles shown in Figs 1-8 are 25
capped. Id., pp. 3-12. The portions of the specification describing those drawings 26
do not identify whether or not the bottles are also filled, sealed and cooled. In any 27
event, those figures are not inconsistent with the parties’ written descriptions 28
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which, as noted above, teach that the panels may be convex, flat or concave, either 1
before or after filling, sealing and cooling. 2
3. 3
We construe the parties’ claims as encompassing the configuration of the 4
panels as ‘vertically arced” or “vertically concave” both before or after filling, 5
sealing and cooling. 6
IV. 7
Melrose argues that the Graham inventors derived the subject matter from 8
Melrose. Melrose Mot. 1, Paper 80. 9
A. 10
A challenger asserting derivation must show that there was a “prior 11
conception of the claimed subject matter and communication of the conception” to 12
the opposing claimant. Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir.1993); see 13
Cumberland Pharmaceuticals Inc. v. Mylan Institutional LLC, 846 F.3d 1213, 14
1217-18 (Fed. Cir. 2017); Creative Compounds, LLC v. Starmark Labs., 651 F.3d 15
1303, 1313 (Fed. Cir. 2011); Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 16
1344 (Fed. Cir. 2003); Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 17
1573, 1576 (Fed. Cir. 1997) (“To show derivation, the party asserting invalidity 18
must prove both prior conception of the invention by another and communication 19
of that conception to the patentee.”). Conception is the touchstone of inventorship, 20
the completion of the mental part of invention. Sewall v. Walters, 21 F.3d 411, 21
415 (Fed.Cir. 1994). In an interference proceeding, a “count” defines the 22
interfering subject matter and corresponds to a patentable invention. See Slip 23
Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1263 (Fed. Cir. 2002). The 24
party seeking to establish prior conception must show possession of each feature 25
recited in the count. Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). 26
Because conception is a mental act, corroborating evidence of a contemporaneous 27
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disclosure that would enable one skilled in the art to make the invention is 1
necessary. Id. Thus, “proof of conception requires objective evidence of what the 2
inventor has disclosed to others, and what that disclosure would fairly suggest to 3
one of ordinary skill in the art.” In re Jolley, 308 F.3d 1317, 1321 (Fed. Cir. 4
2002). 5
B. 6
Melrose argues that derivation is shown by documents provided to Graham 7
on May 7, 2004, June 7, 2004, June 17, 2004, June 24, 2004, June 30, 2004, and 8
July 28, 2005. Melrose, Mot. 1, Paper 80, 1:18-23. 9
1. 10
During 2003 Melrose was asked by Visy Beverage Co. to design a new 11
container for Coca-Cola for the Australian market. Ex. 2009, ¶¶ 10 and 15. 12
Neither he nor any of the companies in which he has an ownership interest that he 13
uses to assist in his design efforts has facility to manufacture the containers he 14
designs. Ex. 2009, ¶ 13. For this purpose, he contacts other companies and 15
supplies the specifications for the containers in the form of drawings, CAD files 16
and other electronic data. Ex. 2009, ¶ 13. Graham Packaging Co. is one of those 17
companies. Ex. 2009, ¶ 14.4 He has worked with Graham since 1998. Ex. 2009, 18
¶ 14. Graham produced test and sample bottles from Melrose supplied designs and 19
data. Ex. 2009, ¶ 14. At the time. Melrose was aware that soft drinks were bottled 20
hot for safety reasons and that those filled bottles were subject to decreased 21
internal pressure and possible deformation upon cooling. Ex. 2009, ¶ 16. He was 22

4 Graham moves to exclude certain parts of Ex. 2009. Paragraph 14 is said to be
irrelevant because in relates only to prior business relationship between Melrose
and Graham. Graham Mot. Exclude, Paper 109, 2:7-13. The testimony on the
showing the existence of a business relationship between the parties is relevant to
the communication element of derivation.

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also aware that the bottles had to withstand the decrease in internal pressure 1
without significantly deforming. Ex. 2009, ¶ 16. He testifies that he conceived 2
and designed a bottle for Visy that would withstand the decreased pressure without 3
adverse deformation. Ex. 2009, ¶ 17. The bottle is referred to as the Visy bottle. 4
Id. Two individuals—Campbell Melrose-Allen and Andrew Candy—assisted him 5
in performing finite element analysis and uploading data for that analysis. 6
Ex. 2009, ¶ 17. 7
2. 8
On June 7, 2004 at 6:45 a.m., Melrose sent an email to Paul Kelley of 9
Graham Packaging showing designs for the Visy bottle. Ex. 2009, ¶ 75, Ex. 2027, 10
p. 1, Ex. 2034, ¶¶ 19-20.5 Kelley is one of the named inventors of the Graham 11
patent. Ex. 2005, p. 1. The email header indicates that the email included a 12
PowerPoint® attachment titled “Visy_Powerade_Trial_2_v2.ppt.” Ex. 2027, p.1. 13
That file was last modified on June 7, 2004 at 6:40 a.m. Ex. 2034, ¶¶ 19-20. The 14
images in the attachment Visy_Powerade_Trial_2_v2.ppt are the same images 15
shown in pages 2-17 of Ex. 2027: Ex. 2035, ¶ 54. 16
The images on pages 1 and 2 of the attachment (pages 2 and 3 of Ex. 2027) 17
are said to show a number of embodiments of the Visy bottle. Ex. 2009, ¶ 75. The 18
remaining pages show results from a finite element analysis (FEA) on the bottles. 19
Ex. 2009, ¶ 75, Ex. 2027, pp. 4-17. 20
FEA is an approximate numerical methodology for solving engineering 21
problems of complex structures subjected to loads. It describes how a proposed 22

5 Graham moves to exclude, inter alia, ¶ 75 of Melrose’s testimony (Ex. 2009) and
Melrose Ex. 2027. Garham Mot. Exclude, Paper 109, 2:14-20 and 3:9-11.
Graham contends that the testimony and Ex. 2027 are irrelevant because they go to
an alleged reduction to practice of the invention which is beyond the scope of
determining inventorship. Id. The testimony and exhibit are relevant to the
communication of conception.
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structure will deform under stress. Ex. 2035, ¶ 17. Designers use FEA to identify 1
potential problems with a new bottle prior to undertaking the expense of making a 2
mold for a prototype. Ex. 2035, ¶ 21. The deformation analysis is presented in a 3
series of time steps denominated 0 (no stress) to 1 (full load). Ex. 2035, ¶ 20, 6:13-4
16. When the results of FEA shows excessive deformation, the FEA model may 5
be numerically refined, avoiding the need to build a mold and test a prototype prior 6
to modifying the design. Ex. 2035, ¶ 21. 7
The attachment to the email is sixteen pages. Ex. 2027, pp. 2-17. The first 8
two pages show renderings of possible bottle designs. Ex. 2027, pp. 2-3, Ex. 2035, 9
¶ 38. The remaining pages show images generated from the FEA analysis of 10
certain bottles. Ex. 2027, pp. 1, 4-17, Ex. 2035, ¶ 55. The images on page 5 and 6 11
show the amount of predicted physical deformation when a bottle is subjected to 12
certain vacuum conditions. A superimposed color map represented by a spectrum 13
indicates the amount of deformation. Ex. 2035, ¶ 40. The legend on the right side 14
ties the amount of deformation to the colors in the spectrum. Ex. 2035, ¶ 40. Dark 15
blue represents no deformation with green, yellow and red indicating increasing 16
amounts. Ex. 2035, ¶ 40. Dark red represents the maximum amount of 5 mm. Ex. 17
2035, ¶ 40, Ex. 2027, pp. 5-6. The attachment also predicts how the cross-section 18
of the bottle reacts to pressure. Pages 9 to 17 show the contraction at different time 19
points in response to a vacuum at time steps from 0.1 to 0.9. Ex. 2027, 9-17. 20
For ease of reference we reproduce the count alternative of Melrose claim 75 21
below with bracketed material added: 22
[a] A container comprising a plastic body having a neck portion 23
defining an opening, connected to a shoulder portion extending 24
downward and connecting to a sidewall extending downward 25
and joining a bottom portion forming a base, 26
[b] said sidewall comprising more than two vacuum panels, and 27
including vertical transitional walls disposed between and 28
joining said more than two panels, 29
Interference 106,050

18

[c] wherein said body is adapted to increase volume contraction 1
and reduce pressure, and said panels are adapted to contract 2
inwardly in response to internal negative pressure created 3
during hot-fill processing and subsequent cooling of a hot liquid 4
in said container; and 5
[d] wherein at least two panels of said more than two vacuum 6
panels are adapted for greater uptake of internal negative 7
pressure than one other of said vacuum panels, 8
[g] further wherein said at least two panels are vertically 9
concave. 10
The renderings shown on pages 2 and 3 of Ex. 2027 show containers having 11
a plastic body with a neck portion defining an opening, connected to a shoulder 12
extending downward. The shoulder is connected to a sidewall that extends 13
downward and joins with the base. Ex. 2027, pp. 2-3. This structure meets 14
limitation [a]. 15
The sidewalls are shown having two pairs of vacuum panels—one pair 16
without significant structure (flat panels) and the other having ribs (grip panels). 17
Ex. 2027, pp. 2-3; Ex. 2035, ¶ 55. The sidewall also includes vertical transition 18
walls between and joining the panels. Ex. 2027, p.2, left image, p. 3, left two 19
images. This structure meets element [b]. 20
The renderings also show two sidewalls that are vertically concave. 21
Ex. 2027, p. 3, most right image. This meets element [g] of the count. 22
Element [c] requires that the container body be adapted to increase volume 23
contraction (i.e., decrease in volume) and reduce pressure, and said panels are 24
adapted to contract inwardly in response to internal negative pressure created 25
during hot-fill processing and subsequent cooling of a hot liquid in said container. 26
As shown in the images on pages 4 and 5 the grip panels and flat panels are shown 27
as contracting. Ex. 2027, pp. 4-5; Ex. 2035, ¶ 19. Most significantly, the cross-28
sections shown on pages 9-17 show the increasing contraction at different time 29
Interference 106,050

19

points from .1 to .9. Ex. 2027, pp. 9-17; Ex. 2035, ¶ 13. Thus,the bottles shown in 1
Ex. 2027 bottles meets element [c]. 2
Lastly element [d] requires “at least two panels of said more than two 3
vacuum panels are adapted for greater uptake of internal negative pressure than 4
one other of said vacuum panels.” The color mappings on pages 5 and 6 of 5
Ex. 2027 show contraction of the grip panels (right and left facing panels on page 5 6
and forward facing panel on page 6) as in the range of green to red. The flat panels 7
(front facing on page 5) shows contraction in the blue to green range. This 8
demonstrates that the grip panels contract more than the front facing flat panel 9
shown on page 5. Ex. 2027, p. 5; Ex. 2035, ¶ 55. 10
3. 11
Graham argues that the Melrose’s testimony is not credible because he is an 12
inventor and interested party and testifies about activities that happened many 13
years before his testimony. Graham Opp. 1, Paper 102, 21:15 – 23:9. While those 14
assertions are true, the Melrose testimony on conception and communication of the 15
conception to Graham is corroborated by the June 7, 2004 email from Melrose to 16
Paul Kelley, one of Graham’s named inventors (Ex. 2027). 17
Graham also argues that Melrose-Allen’s and Candy’s declarations are not 18
credible because of the near identity of their testimony which they allegedly 19
derived from Melrose. Graham Opp. 1, Paper 102, 27:10 – 29:14. In reaching our 20
decision, we have not found it necessary to rely on either Melrose-Allen’s or 21
Candy’s testimony with respect to the facts relating to conception and 22
communication. 23
Graham also contends that during cross-examination, Melrose conceded that 24
the concept of “vertically arced” and “vertically concave” vacuum panels came 25
from Graham. Graham Opp. 1, Paper 102, 23:19 – 24:2. In response to questions 26
as to the origin of Figs. 1C - 1E in Melrose involved application (Ex. 2001, p. 3), 27
Interference 106,050

20

Melrose testified that he presumed the drawings came from one of the Graham 1
inventors. Melrose Cross, Ex. 1007, 168:16 – 169:10. 2
Assuming that the drawings shown as Figs. 1C – 1E came from Graham, we 3
fail to appreciate how those drawings establish that the concept of “vertically 4
arced” or “vertically concave” vacuum panels did not originate with Melrose. 5
Melrose did not testify that the concept of “vertically arced” and “vertically 6
concave” vacuum panels came from Graham. He testified only that the specific 7
drawings did. Ex. 1007, 168:17 – 19 (“it’s a drawing supplied by one of the other 8
three inventors”). The June 7, 2004 email from Melrose to Kelly (Ex. 2027) shows 9
conception including “vertically arced” and “vertically concave” panels that 10
predates the filing dates of any of the parties’ claimed priority applications. 11
Ex. 2001, p. 1; Ex. 2005, p. 1. 12
Graham further argues that Melrose’s testimony is not credible because it is 13
inconsistent with the Declaration for United States Patent Application he signed in 14
application 11/664,265. Graham Opp. 1, Paper 102, 25:5 – 27:9. The 15
‘265 application issued as patent 8,186,528 identifying the inventors as Melrose 16
and the three Graham inventors. Ex. 2001, p. 1. Melrose’s involved application is 17
identified as a continuation of the ‘265 application. Ex. 2001, p. 1. Graham 18
identifies the following portion of Melrose’s testimony as inconsistent with the 19
oath in the ‘265 application (Graham Opp. 1, Paper 102, 26:13-16): 20
I have never viewed Graham as an inventor of any of the 21
containers that I have originally designed and delivered to them. 22
I have never viewed Graham as an inventor of any of the 4-23
Panel containers that have been designed by me or my 24
companies for Visy or TCCC Powerade. I have on occasion 25
worked with Graham on some of my other containers, and they 26
have contributed in part to the inventive development thereof. 27
In such cases I have always acknowledged this in my patent 28
Interference 106,050

21

applications. However, this is not the case with the 4-Panel 1
container invention that is the subject of the current 2
interference. 3
Ex. 2009, ¶ 14 (emphasis added). 4
We fail to see the relevance of Graham’s argument to the inventorship issue 5
before us. The inventorship of the subject matter claimed in the ‘528 patent is not 6
an issue here. That inventorship is presumed to be correct. Cumberland Pharm., 7
Inc. v. Mylan Institutional LLC, 846 F.3d 1213, 1218 (Fed. Cir. 2017). Inventors 8
may be considered joint inventors even if they do not physically work together or 9
at the same time, each did not make the same type or amount of contribution, or 10
each did not make a contribution to the subject matter of every claim. 35 U.S.C. § 11
116(a). It is sufficient to note that while the subject matter of the claims in the 12
‘528 patent and the involved claims are related, even closely related, they are 13
different. We see no reason to assume that the inventorship of different claims in a 14
different application should be assumed to be the same. 15
4. 16
The email sent by Melrose to Kelley on June 7, 2004 (Ex. 2027), establishes 17
both prior conception of the invention of the count and communication of that 18
conception to Graham. 19
ORDER 20
Melrose has persuaded us that the Graham inventors derived the invention 21
from Melrose. We award priority against Graham. A judgment to that effect will 22
issue in a separate paper. 23

Interference 106,050

22

cc (electronic):

Counsel for Melrose

R. Danny Huntington, Esq.
William N. Hughet, Esq.
ROTHWELL, FIGG, ERNST
&MANBECK, P.C.
607 14th St., N.W., Suite 800
Tel: 202-783-6040
Fax: 202-783-6031
dhuntington@rfem.com
whughet@rfem.com

Counsel for Graham

Daniel J. Hulseberg, Esq.
BAKER BOTTS L.L.P.
30 Rockefeller Plaza, Floor 45
New York, NY 10112-4498
daniel.hulseberg@bakerbotts.com

Paula Heyman, Esq.
BAKER BOTTS L.L.P.
98 San Jacinto Boulevard, Suite
1500
Austin, TX 78701-4078
Tel: 512-322-2555
Fax: 512-322-3610
paula.heyman@bakerbotts.com

Daniel H. Shulman, Esq.
1900 West Field Court
Lake Forest, IL 60045
Tel: 847-482-2587
Fax: 847-615-6464
daniel.shulman@RankNA.com

Christopher R. Patrick
30 Rockefeller Plaza, Floor 45
New York, NY 10112-4498
Tel: 212-408-2590
Fax: 212-259-2590
christopher.patrick@bakerbotts.com

BoxInterferences@uspto.gov Entered: September 22, 2017
Tel: 571-272-4683

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

David Melrose
and Graham Packaging Company,
Junior Party
(Application 13/270,886,
Inventor: David Melrose),

v.

Graham Packaging Company,
Senior Party
(Patents 8,087,525
Inventors: Paul Kelley, Scott Bysick and Justin Howell).

Patent Interference No. 106,050 (RES)
(Technology Center 3600)

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
DEBORAH KATZ, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.
Judgment – Priority (Derivation) - 37 C.F.R. § 41.127
In a decision issued simultaneously with this judgment, we have granted
Melrose’s motion (Paper 80) on derivation. We therefore award a judgment of
priority against Graham.
Accordingly it is—
2

ORDERED that Judgment on priority is entered against Graham for the
subject matter of Count 1 (Paper 1, p. 4);
FURTHER ORDERED that Claims 1-24 of Graham’s involved Patent
8,087,525 are cancelled (35 U.S.C. § 135(a) (2010));1
FURTHER ORDERED that a copy of this judgment shall be entered in the
administrative records of each of the involved patent and the involved application;
and
FURTHER ORDERED that if a party seeks judicial review, the party must
promptly serve notice on the Director of the United States Patent and Trademark
Office (37 C.F.R. §§ 90.1 and 104.2) and simultaneously file a copy of the notice
in the record of this interference (37 C.F.R. § 41.8(b).

Notice:
"Any agreement or understanding between parties to an interference, including any
collateral agreements referred to therein, made in connection with or in
contemplation of the termination of the interference, shall be in writing and a true
copy thereof filed in the Patent and Trademark Office before the termination of the
interference as between the said parties to the agreement or understanding."
35 U.S.C. § 135(c); see also 37 C.F.R. § 41.205 (settlement agreements).

Judicial review under 35 U.S.C. § 146 (2010) is no longer available.
Biogen MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648 (Fed.
Cir. 2015).

1 “For the purposes of determining priority and derivation, all claims of a party
corresponding to the count are presumed to stand or fall together.” 35 U.S.C.
§ 41.207(b).
3

cc (electronic):

Counsel for Melrose

R. Danny Huntington, Esq.
William N. Hughet, Esq.
ROTHWELL, FIGG, ERNST
&MANBECK, P.C.
607 14th St., N.W., Suite 800
Tel: 202-783-6040
Fax: 202-783-6031
dhuntington@rfem.com\
whughet@rfem.com

Counsel for Graham

Daniel J. Hulseberg, Esq.
BAKER BOTTS L.L.P.
30 Rockefeller Plaza, Floor 45
New York, NY 10112-4498
daniel.hulseberg@bakerbotts.com

Paula Heyman, Esq.
BAKER BOTTS L.L.P.
98 San Jacinto Boulevard, Suite
1500
Austin, TX 78701-4078
Tel: 512-322-2555
Fax: 512-322-3610
paula.heyman@bakerbotts.com

Daniel H. Shulman, Esq.
1900 West Field Court
Lake Forest, IL 60045
Tel: 847-482-2587
Fax: 847-615-6464
daniel.shulman@RankNA.com

Christopher R. Patrick
30 Rockefeller Plaza, Floor 45
New York, NY 10112-4498
Tel: 212-408-2590
Fax: 212-259-2590
christopher.patrick@bakerbotts.com