Tekni-Plex, Inc. v. Converter Mfg.

• Decision Date: 20 October 2022
• Docket Number: IPR2021-00918,Patent 10,189,624 B2
• Parties: TEKNI-PLEX, INC., Petitioner, v. CONVERTER MANUFACTURING, LLC, Patent Owner. v.
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board

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

IPR2021-00918

Patent 10,189,624 B2

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

October 20, 2022

FOR PETITIONER: Michael A. Fisher Kevin M. Flannery DECHERT LLP

FOR PATENT OWNER: Joseph A. Farco Brian C. Anscomb Benjamin Schwartz NORRIS MCLAUGHLIN, P.A.

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 (PAPERS 55) 37 C.F.R. § 42.64(C) ORDER ENTERING STIPULATED PROTECTIVE ORDER (PAPER 17) AND GRANTING PATENT OWNER'S MOTIONS TO SEAL (PAPERS 16, 29, 62) 37 C.F.R. § 42.54 ORDER GRANTING PETITIONER'S MOTION TO SEAL (PAPER 45) 37 C.F.R. § 42.54

ROSS, ADMINISTRATIVE PATENT JUDGE.

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I. INTRODUCTION

Tekni-Plex, Inc. ("Petitioner") filed a Petition (Paper 1, "Pet.") requesting an inter partes review of claims 1-20, 22-26, and 29 of U.S. Patent No. 10,189,624 B1 (Ex. 1001, "the '624 patent"). Converter Manufacturing, LLC ("Patent Owner") waived the preliminary response to the Petition. Paper 5.

Upon consideration of the Petition and evidence cited therein, we determined that Petitioner had demonstrated a reasonable likelihood that it would prevail with respect to at least one claim of the '624 patent. Paper 6 ("Decision on Institution" or "DI"). Thus, pursuant to the Supreme Court's decision in SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018), and USPTO Guidance,^[1] we instituted review of all challenged claims on all asserted grounds. Id.

Following institution of trial, Patent Owner filed a corrected Patent Owner Response (Paper 24, "PO Resp."), Petitioner filed a Reply (Paper 46, "Reply"), see also Paper 44 (publicly accessible, redacted version of the Reply), and Patent Owner filed a Sur-reply (Paper 60, "Sur-reply"). In support of their respective positions, Petitioner relies on the testimony of

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Mr. Glenn May (Ex. 1002, "May Declaration," dated May 7, 2021; Ex. 1044, "May Reply Declaration," dated June 7, 2022; Ex. 2009, "May Deposition;" Ex. 2070 "May Second Deposition;" Ex. 2075, "May Third Deposition") and Patent Owner relies on the testimony of Mr. James W. Clements (Ex. 2007, "Clements Declaration;" Ex. 1047, "Clements Deposition;" Ex. 1048, "Clements Continued Deposition;" Ex. 2040, "Clements Supp. Declaration").

Patent Owner also filed a Motion to Exclude certain exhibits and testimony. Paper 55 ("MTE"). Thereafter, Petitioner filed an Opposition to Patent Owner's Motion to Exclude (Paper 63, "MTE Opp.") and Patent Owner filed a Reply in Support of its Motion to Exclude (Paper 66, "MTE Reply"). Petitioner also filed a Motion to Exclude Exhibit 2064 (Paper 57) but withdrew that motion during the oral hearing. Paper 74, 31:21-32:7 ("Tr.").

Patent Owner also filed three motions to seal. Papers 16, 29, 62. Petitioner filed one motion to seal. Paper 45.

We held an oral hearing for this proceeding on July 28, 2022, and a transcript of the hearing is included in the record.

We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R § 42.73. For the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-20, 22-26, and 29 of the '624 patent are unpatentable. We grant Patent Owner's Motions to Seal (Papers 16, 29, 62) and grant Petitioner's Motion to Seal (Paper 45). We deny Patent Owner's Motion to Exclude (Paper 55).

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A. Related Proceedings

Petitioner identifies as related proceedings the pending district court litigation styled Clearly Clean Prods., LLC, et al. v. Tekni-Plex, Inc., et al, No. 2:20-cv-04723-AB (E.D. Pa.) ("the district court litigation"). Pet. 145.

Petitioner also identifies its co-pending petitions for an inter partes review of U.S. Patent Nos. 9,908,281 B1 and 10,562,680 B2 as related proceedings. Id.; IPR2021-00916, Paper 1; IPR2021-00919, Paper 1. Petitioner indicates that "Patent Owner has asserted the '281 Patent and the related '680 Patent against third parties other than Petitioner" in the following proceedings: In re Certain Rolled-Edge Rigid Plastic Food Trays, No. 337-TA-1203 (ITC) and Clearly Clean Prods. LLC, et al. v. Eco Food Pak USA Inc., et al, No. 5:20-cv-01054 (CD. Cal). Pet. 145.

B. The '624 Patent

The '624 patent, titled "Tray-Shaped Article Having Smooth Edges and Amenable to Multiple Film Sealing Methods," issued on January 29, 2019. Ex. 1001, codes (45), (54). The '624 patent "relates generally to the field of forming shaped thermoplastic articles" in which thermoplastics that can be thermoformed are used "to form containers that can be sealed with thin plastic films, such as trays, bowls, or bins intended to contain foodstuffs and intended to be sealed with transparent plastic film." Id. at 1:19-25, 29-33. Articles can be sealed via overwrap ("OW") technology that "involves enveloping or wrapping a shaped article," vacuum-sealed package ("VSP") technology that "involves adhering a thin . . . plastic film against a face of a shaped article bearing a foodstuff," or modified atmosphere packaging ("MAP") technology in which a flexible film "is sealed (e.g., using heat or an adhesive) about the perimeter of a substantially rigid shaped article." Id.

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at 1:64-65, 2:16-18, 40-44. The '624 patent explains that when material is trimmed to form containers, a sharp edge is left that "can injure flesh or tear or cut materials which come into contact with the edge." Id. at 1:26-29. Further, the sharp edge "can cut or break the film," thereby interfering "with the sealing process." Id. at 1:40-42. The '624 patent purports to solve the problem of the unwanted sharp edge by displacing the 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." Id. at 4:31-35. According to the '624 patent, a smooth edge and a smooth periphery are made by forming a deflectable flange at the edge of the body of the article, in which the deflectable flange "includes a peripheral edge of the thermoplastic material at the peripheral end of the deflectable flange, optionally on a peripheral flange that extends peripherally from the deflectable flange." Id. at 4:38-45. The peripheral flange can be "connected by an elbow to a spacer and extends peripherally beyond the spacer by a peripheral flange distance" and can be "selected to yield a desired degree of deflection when it is impinged against a surface." Id. at 4:46-50. "The spacer is connected by a bend region to the body, the bend region defining an angle . . . between the spacer and the body." Id. at 4:52-56.

Figures 1A and 1B are illustrative and are reproduced below.

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(Image Omitted)

Figure 1A shows a sectional view of thermoplastic article 100 inserted within interior of upper body 200, shown in Figure IB, prior to bending an unwanted sharp edge away from the periphery of the article. Id. at 6:14-34. Thermoplastic article 100 has "deflectable flange 160 formed at an edge thereof." Id. at 6:19-21. Deflectable flange 160 includes extension 50, bend

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region 150, spacer 140, and peripheral flange 120. Id. at 6:21-27. Elbow 130 connects spacer 140 to peripheral flange 120. Id. at 6:27-28.

Figure 8K of the '624 patent, reproduced below, illustrates how thermoplastic article 100 is shaped near peripheral flange 120. Id. at 10:55-67.

(Image Omitted)

Figure 8K shows that after a series of steps (Figures 8E-8J), thermoplastic article 100 is ultimately urged into ram 300 (identified in Figures 8E, 8H) in the direction indicated by the open arrow to produce a shaped deflectable flange 160 that includes peripheral flange 120 at the peripheral end of spacer 140. Id. at 10:56-61. The '624 patent discloses that shaped articles can be "in the form of a rounded rectangular tray" having "an internal concave compartment." Id. at 10:39-40, 22:7-8.

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C. Illustrative Claim

Petitioner challenges claims 1-20, 22-26, and 29 of the '624 patent. Independent claim 1 is the independent claim challenged and is reproduced below.

1. A tray intended to be suitable for use in any or all of overwrap (OW), vacuum-sealed packaging (VSP), and modified atmosphere packaging (MAP) sealing technologies, the tray being[:]

an article formed from a thermoplastic sheet having a peripheral edge, the article comprising a tray-shaped body having a concave portion surrounded by an extension extending peripherally away from the concave portion

the extension including the peripheral edge, a flat sealing surface surrounding the concave portion and being suitable for sealing a sealing film thereto using either of VSP and MAP sealing technologies, a bend region adjacent the sealing surface and interposed between the peripheral edge and the sealing surface, the bend region having the conformation of a smooth curve, and a bent portion interposed between the peripheral edge and a spacer separating the bent portion from the bend region; and

the article having a smooth periphery and having the overall shape of a rectangular tray with rounded corners, and the bent portion being bent sufficiently that the peripheral edge is turned at least approximately opposite the periphery

Ex. 1001,41:13-36.

D. The Asserted Unpatentability Challenges

Petitioner asserts that claims 1-20, 22-26, and 29 would have been unpatentable on the following grounds:

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Claim(s) Challenged	35 U.S.C. §[2]	Reference(s)/Basis
1-9, 13-20, 22-26, 29	102	Long[3]
1-20, 24, 29	102	Portelli[4]
1, 6-14, 22, 23, 29	102[5]	Meadors[6]
1-20, 22-26, 29

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