Tekni-Plex, Inc. v. Converter Mfg.

• Decision Date: 20 October 2022
• Docket Number: IPR2021-00919,Patent 10,562,680 B2
• Parties: TEKNI-PLEX, INC., Petitioner, v. CONVERTER MANUFACTURING, LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

1

TEKNI-PLEX, INC., Petitioner,
v.
CONVERTER MANUFACTURING, LLC, Patent Owner.

IPR2021-00919

Patent 10,562,680 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

October 20, 2022

Before GRACE KARAFFA OBERMANN, JAMES A. TARTAL, and AVELYN M. ROSS, Administrative Patent Judges.

JUDGMENT FINAL WRITTEN DECISION DETERMINING ALL CHALLENGED CLAIMS UNPATENTABLE 35 U.S.C. § 318(A) ORDER DENYING PATENT OWNER'S MOTION TO EXCLUDE (PAPER 66) 37 C.F.R. § 42.64(C) ORDER ENTERING STIPULATED PROTECTIVE ORDER AND GRANTING PATENT OWNER'S MOTIONS TO SEAL (PAPERS 18, 30) 37 C.F.R. § 42.54 ORDER GRANTING PETITIONER'S MOTION TO SEAL (PAPER 46) 37 C.F.R. § 42.54

TARTAL, Administrative Patent Judge.

2

We have jurisdiction to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2020). For the reasons discussed below, we determine Tekni-Plex, Inc. ("Petitioner")^[1] has shown by a preponderance of the evidence that claims 1-5, 7-12, and 15-24 ("the Challenged Claims") of U.S. Patent No. 10,562,680 B2 (Ex. 1001, "the '680 patent") are unpatentable.

I. INTRODUCTION

A. Summary of Procedural History

Petitioner filed a Petition pursuant to 35 U.S.C. §§ 311-319 requesting an inter partes review of the Challenged Claims. Paper 1 ("Pet."). We instituted an inter partes review of the Challenged Claims on all grounds of unpatentability asserted in the Petition. Paper 7. Converter Manufacturing, LLC ("Patent Owner")^[2] filed a Corrected Patent Owner Response. Paper 25 ("Resp."). Petitioner filed under seal a Reply to the Patent Owner Response. Paper 47 ("Reply"); see also Paper 45 (publicly

3

accessible, redacted version of the Reply). Patent Owner filed a Sur-reply in support of the Patent Owner Response. Paper 61 ("Sur-reply").

Petitioner filed a Motion to Exclude Exhibit 2064. Paper 58; see also Paper 65 (Patent Owner's Opposition to Petitioner's Motion to Exclude); Paper 67 (Petitioner's Reply in Support of Its Motion to Exclude). Subsequently, Petitioner withdrew its Motion to Exclude, explaining that it was moot because Petitioner understood Patent Owner has "withdrawn the exhibit." Paper 76, 31:21-32:7. Accordingly, we consider Petitioner's Motion to Exclude as withdrawn.

Patent Owner filed a Motion to Exclude Exhibits 1037-1040, 1051, 1053, 1057, 1058, and portions of Exhibits 1044 and 1045. Paper 66 ("MTE"), 1; see also Paper 64 (Petitioner's Opposition to Patent Owner's MTE ("MTE Opp.")); Paper 68 (Patent Owner's Reply in Support of Its MTE ("MTE Reply"). As explained below, we deny Patent Owner's Motion to Exclude. See infra Section III. We also grant Patent Owner's Motions to Seal (Papers 18, 30) and Deny Without Prejudice Petitioner's Motion to Seal (Paper 46). See infra Section IV.

Following oral argument, we entered a transcript of the hearing in the record. Paper 76. Petitioner bears the burden of proving unpatentability of each claim it has challenged by a preponderance of the evidence, and the burden of persuasion never shifts to Patent Owner. See 35 U.S.C. § 316(e) (2018); 37 C.F.R § 42.1(d); Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).

B. Related Matters

The parties identify the '680 patent as a subject of Clearly Clean Prods., LLC, et al. v. Tekni-Plex, Inc., et al., No. 2:20-cv-04723-AB (E.D. Pa.); Clearly Clean Prods. LLC, et al. v. Eco FoodPak USA Inc., et al.,

4

No. 5:20-cv-01054 (CD. Cal); and In re Certain Rolled-Edge Rigid Plastic Food Trays, No. 337-TA-1203 (ITC). Pet. 142-43; Paper 5, 1-2. Petitioner also states that it concurrently filed petitions for inter partes review of U.S. Patent Nos. 9,908,281 (IPR2021-00916) and 10,189,624 (IPR2021-00918), which share a priority chain with the '680 patent. Pet. 142.

C. The '680 Patent

The '680 patent issued February 18, 2020, from an application filed on December 7, 2018, and is directed to articles processed according to "methods of displacing a sharp edge away from the periphery of an article made from a thermoplastic material, where the sharp edge might otherwise damage surfaces that contact the periphery of the article." Ex. 1001, 4:66-5:5, codes (21), (22), (45). According to the '680 patent, "[f]ormation of shaped article from thermoplastic materials is well known," and "[o]ne common use for shaped thermoplastics is to form containers that can be sealed with thin plastic films." Id. at 1:23-24, 1:44-47. However, if the trimmed edge of the article is sharp, "it can cut or break the film." Id. at 1:50-56. Thus, the '680 patent recognizes that "[i]t would be beneficial if the sharp edges of shaped thermoplastic articles could be displaced in such a way that the risk of injury or damage to sealing films could be reduced," and "[i]t would be further beneficial if such individual shaped articles could be used with multiple known sealing technologies." Id. at 3:48-54. The '680 patent includes over 70 figures, many with multiple drawings further labeled alphabetically. We address Figures 1, 24A, 24B, and 24C below.

5

(IMAGE OMITTED)

Figure 1 illustrates "a sectional view of a thermoplastic article 100 having a deflectable flange 160 formed at an edge thereof." Id. at 6:37-39. Deflectable flange 160 includes bend region 150, peripheral edge 110, and, optionally, spacer 140. Id. at 19:46-48. The angle "A" formed by the bend region, between extension 50 and spacer 140, is preferably about ninety degrees. Id. at 13:40-44, 13:57-63, 19:52-58.

Petitioner draws attention in the Petition to Figure 25C of the '680 patent. Pet 3. Reproduced below are Figures 24A, 24B, and 24C of the '680 patent.

(IMAGE OMITTED)

Figures 24A, 24B, and 24C sequentially "illustrate deflection and rolling over of the deflectable flange 160, including the sharp peripheral edge 110,"

6

using ram 300. Id. at 9:21-23, 32:53-56. The '680 patent explains that "the same deflection and rolling over of the edge can be performed on multiple edges (e.g., all edges) of the article simply by using multiple rams or a ram that contacts all edges to be so treated." Id. at 9:23-28. To roll and shape the edge of article 100, deflectable flange 160 is urged (in the direction indicated by the open arrows) against upper heated surface 302 of heated ram 300. Id. at 30:24-35. Deflectable flange 160 includes peripheral flange 120 at the peripheral end of spacer 140. Id. at 32:53-58. "[T]he peripheral flange 120 deflects . . . during bending of the deflectable flange 160 to the extent that it becomes completely bent over the spacer 140, forming a 'hook'-like structure." Id. at 32:59-63.

The '680 patent, in some embodiments, describes the degree of displacement of the peripheral edge in the context of its "offset angle" ("OA"). Id. at 26:48-59. The '680 patent explains that the offset angle may be assessed "using a plane that extends through the peripheral edge 110 and the portion of the deflectable flange immediately adjacent to it or by measuring the offset angle OA using a plane that extends through the elbow 130 and the portion of the deflectable flange 160 immediately proximal to it, relative to the body." Id.

D. Illustrative Claim of the '680 Patent

Petitioner challenges claims 1-5, 7-12, and 15-24 of the '680 patent. Pet. 1. Claim 1, the only independent claim of the '680 patent, is illustrative of the claimed subject matter and is reproduced below.

1. An article having a smooth, non-circular periphery, the article comprising a shaped thermoplastic substrate sheet the shape of the substrate sheet including

a body including a bottom surrounded by sidewalls and

7

a deflectable flange joined at a junction to the sidewalls at at least a portion of the periphery, the deflectable flange including

a peripheral edge of the substrate sheet at a position distal from the junction

a smoothly-curved bend region interposed between the junction and the peripheral edge wherein a proximal portion of the bend region is offset from a distal portion thereof by an angle A of from 85 to 135 degrees

a substantially planar extension interposed between the junction and the proximal portion of the bend region, the plane of the extension being substantially parallel to the bottom, and the distal portion of the bend region and the body extending away from the same face of the extension

a peripheral flange bearing the peripheral edge and being connected to the rest of the deflectable flange by way of an elbow; and

a curved bent portion interposed between the elbow and the bend region,

wherein the curvatures of the bend region and the bent portion position the peripheral edge away from the periphery.

Ex. 1001,72:57-73:17.

E. References and Testimony

Below we provide an abbreviated summary of the qualifications of Glenn May, who provided testimony in support of Petitioner, and James W. Clements, who provided testimony in support of Patent Owner. We also provide a table identifying the primary references relied upon by Petitioner, as well as the exhibits corresponding to the declarations and deposition testimony in the record for Mr. May and Mr. Clements. Additional testimony was provided by Mr. James Naughton, Executive Vice President at Thermoforming Systems LLC (Ex. 1045, ¶ 3), Mr. Jeff Maguire, Managing Partner of Patent Owner and of Clearly Clean Products, LLC

8

(Ex. 2031 ¶ 2); and Mr. Millard Wallace, Partner of Patent Owner and of Clearly Clean Products, LLC (Ex. 2063 ¶ 2).

Mr. May indicates he received a Bachelor of Science in Packaging Science from Michigan State University in 1992 and a Food Processing Certification from the University of California, Davis, in "Container Closure and Thermal Processing" in 1995. Ex. 1003 ¶ 6. He states he has "over 29 years of experience in packaging design, development, testing, sourcing and...