DCT
1:22-cv-02741
New York Packaging v. Unistar Plastics
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: New York Packaging, II, LLC (New York)
- Defendant: UniStar Plastics, LLC (Louisiana)
- Plaintiff’s Counsel: DNL ZITO CASTELLANO
- Case Name: New York Packaging, II, LLC v. UniStar Plastics, LLC
- Case Identification: 1:22-cv-02741, D.D.C., 09/10/2022
- Venue Allegations: Plaintiff alleges venue is proper in the District of Columbia because Defendant has sold accused goods into the District, establishing minimum contacts.
- Core Dispute: Plaintiff alleges that Defendant’s headerless produce bags are manufactured using a patented method that increases adhesion between bags, causing them to self-open when dispensed.
- Technical Context: The technology concerns the high-volume manufacturing of plastic produce bags, such as those found on rolls or racks in grocery stores, aiming to improve dispensing convenience and reduce waste.
- Key Procedural History: Plaintiff alleges it placed Defendant on notice of infringement on June 28, 2022, approximately two and a half months before filing the complaint. The complaint contains a notable clerical error, referencing U.S. Patent No. 8,479,423 in the heading for Count I, while all substantive allegations and the prayer for relief pertain exclusively to U.S. Patent No. 10,513,078.
Case Timeline
| Date | Event |
|---|---|
| 2015-10-01 | ’078 Patent Priority Date |
| 2016 | Plaintiff introduces its patented produce bags |
| 2019-12-24 | ’078 Patent Issue Date |
| 2022 | Defendant introduces its allegedly infringing bags |
| 2022-06-28 | Plaintiff sends notice of infringement to Defendant |
| 2022-09-10 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,513,078 - Method of Manufacturing Headerless Produce Bags with Increased Adhesion (Issued Dec. 24, 2019)
The Invention Explained
- Problem Addressed: Conventional plastic produce bags dispensed from a rack or roll are difficult to open manually, which leads to waste, potential slip-and-fall hazards from discarded bags on the floor, and unsanitary conditions when customers moisten their fingers to separate the plastic sheets (’078 Patent, col. 2:12-25).
- The Patented Solution: The invention is a manufacturing method that modifies the properties of the bags to make them self-opening. The process treats the exterior surface of at least one plastic sheet with low-temperature corona discharge plasma to increase its surface energy and, consequently, its adhesion to an adjacent bag. This electrostatic adhesion, optionally combined with mechanically formed "recesses" or "dimples," creates enough force so that when a user pulls the top bag from a stack, the mouth of the next bag in the stack is automatically pulled open (’078 Patent, Abstract; col. 5:12-23; col. 6:30-43).
- Technical Importance: This method aims to provide a more convenient and hygienic user experience while reducing material waste and associated costs for retailers, by eliminating the need for manual bag opening (’078 Patent, col. 2:32-38, 62-65).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9 (Compl. ¶19).
- Independent Claim 1 recites a method with the following key steps:
- Providing and aligning two continuous web sheets of plastic film.
- Applying pressure and heat to form heat-sealed sides and a mouth, creating a headerless bag.
- Advancing the bag to a plasma treatment station to apply low-temperature corona discharge plasma to only the first sheet.
- Treating that sheet to increase its surface energy to at least 43 Dyne, creating sufficient adhesion to automatically open the mouth of an adjacent bag upon removal.
- Advancing and cutting the bag.
- Advancing the cut bag to a stacking station and stacking it.
- Concurrently forming mated recesses in a pair of bags to create releasable mechanical adherence, which combines with the plasma-induced adherence to cause the automatic opening.
- The complaint also reserves the right to assert dependent claims 2-8 and 10-14 (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "stacks of headerless produce bags" manufactured, sold, and imported by Defendant UniStar Plastics, LLC ("USP"), including products identified by the name "fruits and veggies more matters" (Compl. ¶15-16).
Functionality and Market Context
- The complaint alleges that the accused bags are direct competitors to Plaintiff's products and are sold in the same markets to the same customers (Compl. ¶15). The core infringing functionality is not in the product's use, but in its method of manufacture. The complaint alleges that the accused bags possess "characteristics which result from the patent manufacturing method" and that a "detailed analysis" confirmed they are made by a process that infringes the claims of the ’078 Patent (Compl. ¶16, ¶18). The complaint references photographs of an accused product, attached as Exhibit B, to provide a visual example (Compl. ¶16).
IV. Analysis of Infringement Allegations
The complaint alleges that USP directly infringes the ’078 Patent by making, using, selling, offering to sell, and/or importing the accused bags, which are products made by the patented process, in violation of 35 U.S.C. §271(a) and §271(g) (Compl. ¶¶ 22-28). The allegations are not presented in a detailed claim chart but are based on a "detailed analysis" Plaintiff claims to have conducted (Compl. ¶18).
’078 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method useful for manufacturing a headerless plastic bag from sheets of thin plastic film... | The complaint alleges that USP manufactures its accused headerless produce bags using the claimed method. | ¶18, ¶28 | col. 7:56-58 |
| providing a first continuous web sheet aligned in facing relation to a second continuos web sheet... | The complaint alleges USP's manufacturing process involves providing and aligning continuous plastic sheets. | ¶18, ¶28 | col. 8:59-62 |
| applying and then removing pressure and heat... to form heat sealed sides and a mouth of a headerless plastic bag; | The complaint alleges USP's process uses pressure and heat to form the bags. | ¶18, ¶28 | col. 8:63-67 |
| advancing the headerless plastic bag... to a plasma treatment station configured to directly apply low temperature corona discharge plasma treatment to only the first sheet; | Based on analysis of the final product, the complaint alleges USP's process includes treating one sheet with corona discharge plasma. | ¶12, ¶18 | col. 8:1-4 |
| treating the first sheet... to increase the surface charge magnitude... to a surface energy of at least 43 Dyne wherein the surface energy is sufficient to cause the headerless plastic bag to adhere to an adjacent second plastic bag with a force sufficient to automatically open the mouth... | The complaint alleges the accused bags exhibit characteristics, such as increased adhesion sufficient to cause automatic opening, that result from being treated to the claimed surface energy level. | ¶12, ¶18 | col. 8:5-14 |
| cutting the first and second aligned sheets to separate the headerless plastic bag... | The complaint alleges USP's process involves cutting the sheets to form individual bags. | ¶18, ¶28 | col. 8:18-21 |
| forming concurrently both a first pair of mated recesses... configured to cause the first sheet to releasably mechanically adhere to the second sheet... | The complaint alleges that the accused bags contain recesses that result from USP's manufacturing process, which contribute to the automatic opening feature. | ¶12, ¶18 | col. 8:26-34 |
Identified Points of Contention
- Evidentiary Questions (Process Patent): The central dispute will likely involve proving the characteristics of USP's confidential manufacturing process. A key question is what evidence NYP can present, based on its "detailed analysis" of the finished product, to demonstrate that USP's method performs the specific steps claimed, such as applying "low temperature corona discharge plasma" to achieve a surface energy of "at least 43 Dyne".
- Technical Questions: The complaint alleges the "mated recesses" in the accused bags contribute to the automatic opening function as claimed. A point of contention may be whether the physical features of the accused bags function as the claimed "mated recesses" to provide "releasably mechanically adhere[nce]" in combination with the plasma treatment, as required by the claim.
V. Key Claim Terms for Construction
The Term: "low temperature corona discharge plasma"
- Context and Importance: This term is the core of the invention's technical contribution. The definition is critical because infringement will depend on whether USP's manufacturing process, if it uses a plasma treatment, falls within the scope of this term. Practitioners may focus on whether "low temperature" has a specific technical meaning or is simply descriptive of a standard corona discharge process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not define a specific temperature range for "low temperature," which may suggest the term should be given its ordinary meaning in the context of plasma treatment for plastic films (’078 Patent, col. 5:15-18).
- Evidence for a Narrower Interpretation: A defendant might argue that the term, in the context of the patent, is tied to the specific outcome of achieving a surface energy of "at least 43 Dyne" (’078 Patent, col. 5:16-18), potentially limiting the term to processes capable of producing that specific result.
The Term: "mated recesses"
- Context and Importance: This term, recited in the final step of claim 1, adds a mechanical component to the adhesion mechanism. The nature and function of these "recesses" are essential to infringement, as the claim requires their adherence to combine with the plasma-induced adherence to cause the bag opening.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent refers to these features as "recesses or 'dimples'" created by "blunt ends" of tools, suggesting the term could cover various forms of physical indentations that are not pierced through the bag (’078 Patent, col. 6:11-16).
- Evidence for a Narrower Interpretation: Claim 1 requires that the recesses are "mated" and configured to cause the sheets "to releasably mechanically adhere." This functional language could be interpreted to require a specific interlocking or frictional engagement, potentially narrowing the scope beyond simple indentations (’078 Patent, col. 8:30-32).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect infringement (inducement or contributory infringement).
- Willful Infringement: The complaint alleges willful infringement based on USP’s continued infringing activities after receiving a notice letter from NYP on June 28, 2022 (Compl. ¶30). The allegation is based on post-suit knowledge and a refusal to cease the allegedly infringing conduct or engage in resolution discussions (Compl. ¶30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of proof and inference: As this is a process patent asserted against a competitor's product, the case will likely hinge on whether the plaintiff can produce sufficient evidence—derived from analyzing the final product—to allow a reasonable inference that the defendant’s confidential manufacturing process practices every step of the claimed method, including the specific plasma treatment and recess-forming steps.
- The case will also present a core question of claim scope: The construction of the terms "low temperature corona discharge plasma" and "mated recesses" will be critical. Whether these terms are given a broad, ordinary meaning or are limited by the functional results described in the specification (e.g., achieving "at least 43 Dyne" surface energy) will likely determine the outcome of the infringement analysis.
- A threshold question will be one of functionality: The court will need to determine if the accused bags actually exhibit the claimed "automatic opening" feature. The dispute may turn on the degree of opening required to meet this limitation and whether the accused bags' behavior upon dispensing constitutes "automatic opening" as understood in the context of the patent.