Capsa Packaging: patents also apply to cardboard boxes

27 March 2024

Capsa Packaging sends a message to the market that its boxes cannot be copied without permission but can be marketed through its licensing program.

27 March 2024

When we think of patents, we usually think of medicines, telecommunications or medical devices. However, patents are also important in other traditionally less technological fields, such as cardboard.

We have all had to use cardboard boxes at some point during a move, using adhesive tape to assemble the bottom to prevent it from sagging under the weight of its contents and to interleave the flaps of the lid to close it. The result is that the box is unusable after the move.

The first patents

In 2007, Capsa Packaging invented and patented boxes designed for removals.

These boxes have a so-called automatic or self-assembly bottom, which does not require adhesive tape, and a lid with engageable flaps, which allows the box to be closed without adhesive tape and the box to be reused.

These patents can be consulted here:

In addition, in 2011 Capsa Packaging also invented and patented a box specially designed for the self-storage and logistics sector for companies, which was a dual-use box, to be able to store and ship products several times, in any order, known in the market as 2in1®.

These 2in1® boxes, in addition to the automatic bottom and the engageable flaps, use the other two flaps of the lid to seal the box for shipping. In this way, the box can be used in two different ways, one for shipping and one for storage, in any order and several times.

These features make the 2in1® boxes ideal for use in the self-storage and logistics sector.

This patent family can be consulted here:

Although the granting of these patents was not easy, as they required oral proceedings for granting before the European Patent Office with the submission of samples of the background and box of the filed patents, the examiners found these boxes to be new and inventive, and they were granted in Europe, United States, China, Japan, Australia and Russia, among other countries.

The Bluespace lawsuit

These new boxes were successfully received in the market, winning the IPA Awards 2018 and Liderpack 2018, and one of the users within the self-storage sector was Bluespace.

However, after years of relationship, Bluespace decided to buy its boxes from another supplier in 2018.

The new boxes sold by Bluespace were analyzed for possible patent infringement, and we concluded that despite the differences introduced, they infringed Capsa’s patents.

To defend its rights, Capsa filed a lawsuit against Bluespace in the Barcelona Commercial Courts in 2018 for infringement of four of its patents.

In response to this lawsuit, Bluespace requested the invalidation of these patents. Furthermore, it considered that even if the patents were valid, they were not being infringed.

Despite its view that there was no infringement, Bluespace changed the design of its new boxes twice during the proceedings. The first modified version was also found to infringe Capsa’s patents and it filed a corresponding lawsuit, which was joined to the first lawsuit.

The second modified version of the boxes was found not to infringe the patents and was excluded from the lawsuit.

In other words, it was a lawsuit involving four patents, three types of boxes and 13 expert reports to justify infringement or non-infringement and the validity or invalidity of these patents.

The judgement

The judgment of Section 15 of the Barcelona Provincial Court ruled that Capsa’s four patents were valid and that two of them had been infringed.

In the following we analyze some of the decisive aspects of this judgment:

Correct selection of the closest antecedent for determining the inventive step

The judgment states that “the patent owner who is faced with an action for invalidity of its claims for lack of inventive step can logically challenge the starting document proposed in the challenger’s analysis. In such a case, the two documents would have to be compared in order to decide which would be more promising. Now, if it is decided that the more promising document is the one proposed by the patentee, the invalidity action must be dismissed without further action, because we cannot analyze its inventive step to reach the conclusion that it lacks such a patentability requirement, since the invalidity action is based on other arguments”.

In other words, if it can be justified that the closest prior art must be other than the one used to challenge the lack of inventive step, the claim must be found to have inventive step.

Differences with the closest prior art

The judgment also makes clear the need to objectively demonstrate the features in common with the closest prior art using the problem-solution method, since in case of discrepancy, the inventive step analysis cannot be continued.

According to this judgment, “Given that the differences that we observe between the patent and the closest prior art are not the same as those alleged by the defendants, we cannot continue with the analysis of the inventive step as proposed by the defendants, since the formulation of the objective technical problem must change according to the new differences. This leads us to dismiss the invalidity action brought by the defendants in their counterclaim”.

The objective technical problem

The judgment also refers to the need to correctly formulate the objective technical problem on the basis of the closest prior art: “It is not for this court to formulate the objective technical problem, but to verify whether or not the formulation proposed by the party claiming invalidity is correct, in order to be able to analyze the inventive step. If it is not, the claim must be dismissed”.

Ex post facto analysis

Another issue addressed by the judges is the analysis of the features cited in the prior art, partially or only on the basis of the drawings, without taking into account the full description of the prior art.

The judge states that “The defendants’ reasoning is a perfect example of an ex post facto analysis, prohibited to analyze the inventive step of a claim (…) The defendants’ experts, knowing this solution, choose from the priority document the teaching that best suits them to deny the inventive step of claim 1 and select the relevant teaching to discard the irrelevant one”.

Translations of foreign documents

Another issue to consider is the use of machine translations for foreign language documents. In this case, the defendants used a Korean prior art and its machine translation.

According to the judge “A document filed in a foreign language, in order to be valid in court, must be accompanied by a translation. If this translation is contested, it must be signed by an official translator, in accordance with the provisions of art. 144 LEC. In any case, if the translation cannot be understood by an expert, a fact which has not been contested, it cannot be used”.

Literal infringement

According to the judgment, the two patents are infringed literally, as they reproduce all the features of their independent claims.

Capsa’s strategy

Capsa’s intention with this lawsuit was not to prevent the presence of its boxes in the market, but quite the opposite, as it has a licensing program to invite other companies and corrugated board manufacturers to join it and thus share its business model in a balanced, reasonable and transparent way.

This licensing program for its 91 patents in 33 countries allows any packaging manufacturer and customer to quickly, easily and globally access a patented and disruptive technology, helping to reduce the environmental impact of packaging associated with its logistics, warehousing, transport or e-commerce, while increasing the efficiency and reliability of its logistics chain.

Of course, Capsa has not stopped innovating with these boxes, but continues with specially designed boxes for e-commerce, among others, with corresponding patents.

In short, Capsa is a clear example that patents are not only a tool to obtain economic benefits for large multinationals or for traditionally technological sectors, but can be for any company, large or small, in any sector, as long as it has an innovative spirit.

5/5 - (2 votes)

Alfons Femenia

Mechanical Industrial Engineer.European Patent Agent.Patents Department.


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