DCT
1:18-cv-01412
Max Intl Converters Inc v. Iconex LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MAX International Converters, Inc. (Pennsylvania) and MAXStick Products Ltd. (Delaware)
- Defendant: Iconex LLC (Delaware)
- Plaintiff’s Counsel: Farnan LLP; Harris Beach PLLC
- Case Identification: 1:18-cv-01412, D. Del., 09/12/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and maintains a registered agent in the district.
- Core Dispute: Plaintiffs allege that Defendant’s linerless thermal label roll products infringe three patents related to the construction and use of repositionable, thermally printable adhesive labels.
- Technical Context: The technology at issue involves linerless, repositionable label rolls used in thermal point-of-sale printers, commonly found in industries such as quick-service restaurants for order labeling.
- Key Procedural History: The complaint alleges that Defendant received actual notice of the patents-in-suit via a cease and desist letter no later than August 2, 2018. The asserted U.S. Patent No. 9,208,699 is subject to a terminal disclaimer over the co-asserted U.S. Patent No. 8,445,104. Post-complaint, a disclaimer was filed for claims 1 and 6 of the ’699 patent, which may significantly impact the scope of allegations under that patent. The asserted U.S. Patent No. 9,646,517 is subject to a terminal disclaimer over the ’699 patent.
Case Timeline
| Date | Event |
|---|---|
| 2006-05-18 | Priority Date for ’104, ’699, and ’517 Patents |
| 2013-05-21 | ’104 Patent Issue Date |
| 2015-12-08 | ’699 Patent Issue Date |
| 2017-05-09 | ’517 Patent Issue Date |
| 2018-08-02 | Alleged date of actual notice to Defendant |
| 2018-09-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,445,104 - "Thermally Printable Adhesive Label," issued May 21, 2013
The Invention Explained
- Problem Addressed: The patent describes challenges with prior art linerless label rolls, which either caused adhesive buildup and feed jams in thermal printers or were restricted to printing labels of a fixed length determined by pre-set index marks, requiring specialized optical sensors. (’104 Patent, col. 1:45-62).
- The Patented Solution: The invention is a multi-layered, continuous roll of thermal paper designed to overcome these issues. It comprises a substrate with a thermal printing surface on top and a specific sequence of layers on the bottom: a base coat to act as a barrier, an adhesive strip over the base coat, and a silicone-free release coat on the top surface to allow the roll to unwind without the adhesive sticking to the printable surface. (’104 Patent, Abstract; col. 2:1-11). This construction enables a standard thermal printer to print and cut repositionable labels of variable lengths.
- Technical Importance: This design allowed for the flexible use of continuous, repositionable linerless labels in standard thermal printers without the need for the special sensors required by prior art indexed rolls. (’104 Patent, col. 1:52-58).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶ 30).
- The essential elements of independent claim 1 are:
- A continuous liner-free repositionable label roll for use in a thermal point-of-sale printer with an auto-cutting mechanism.
- a) A web of thermal paper wound into a continuous roll without preset tear areas.
- b) A base coat on the bottom surface.
- c) At least one adhesive strip on the bottom surface, extending in a "substantially uninterrupted manner" along the web's axis, where the base coat secures the adhesive to prevent fouling the printer's cutter, and the adhesive comprises an acrylate copolymer.
- d) A silicone-free release coat on the top surface, positioned behind the adhesive strip, so a cut label of variable length will have a continuous adhesive backing.
- The complaint reserves the right to assert dependent claims 2, 3, and 4. (Compl. ¶¶ 33-34).
U.S. Patent No. 9,208,699 - "Thermally Printable Adhesive Label," issued December 8, 2015
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the '104 patent, the '699 patent addresses the same problem of adhesive buildup and jamming in thermal printers that use continuous linerless label rolls. (’699 Patent, col. 2:1-4).
- The Patented Solution: The invention is structurally similar to that of the ’104 patent, but the key asserted claim recites an "adhesive pattern" rather than an "adhesive strip." A key functional requirement is that any lateral cut across the web must intersect this adhesive pattern, ensuring that every custom-length label has adhesive. (’699 Patent, Claim 6; col. 2:6-19).
- Technical Importance: The invention refines the concept of a variable-length linerless label by focusing on the functional requirement of the adhesive's placement—the "pattern"—to guarantee its presence on any label cut from the continuous roll. (’699 Patent, col. 2:6-19).
Key Claims at a Glance
- The complaint asserts independent claim 6. (Compl. ¶ 41).
- The essential elements of independent claim 6 are:
- A liner-free repositionable label for use in a thermal point-of-sale printer with an auto-cutting mechanism.
- a) A web of thermal paper without preset tear areas.
- b) A base coat on the bottom surface.
- c) At least one "adhesive pattern" on the bottom surface, extending in a "substantially uninterrupted manner" such that a lateral cut across the web "intersects the adhesive pattern," with the base coat securing the adhesive to prevent cutter fouling, and the adhesive comprising an acrylate copolymer.
- d) A silicone-free release coat on the top surface.
- The complaint reserves the right to assert dependent claims 1, 2, 5, 8, and 9. (Compl. ¶¶ 44-45).
U.S. Patent No. 9,646,517 - "Thermally Printable Adhesive Label," issued May 9, 2017
Technology Synopsis
The ’517 Patent claims methods for making and using linerless labels. Asserted claim 1 describes the manufacturing method, including steps of providing a thermosensitive substrate, applying a base coat, applying a "substantially continuous" adhesive layer, and applying a release layer. (’517 Patent, Claim 1). Asserted claim 9 describes a method of use, wherein customers cut a custom-length label from a roll of media using a thermal printer. (’517 Patent, Claim 9). (Compl. ¶ 15).
Asserted Claims
Independent method claims 1 and 9 are asserted. (Compl. ¶¶ 52, 63).
Accused Features
The complaint alleges that Defendant’s manufacturing processes for its products directly infringe method claim 1. (Compl. ¶ 54). It further alleges that Defendant induces infringement of method claim 9 by encouraging its customers to use the accused products in thermal printers. (Compl. ¶ 62).
III. The Accused Instrumentality
Product Identification
The complaint identifies two accused products: "Iconex Sticky Media Extreme" (SKU 9016-3227) and "Iconex Sticky Media Full-Tack" (SKU 9023-1873). (Compl. ¶¶ 21, 23).
Functionality and Market Context
The accused products are linerless label rolls designed for use in thermal printers and are sold to customers such as fast-food franchises for creating custom-length labels. (Compl. ¶ 25). The complaint alleges the "Extreme Product" has a "solid continuous strip of adhesive with parallel non-adhesive areas running along both lateral sides of the substrate." (Compl. ¶ 32). The complaint alleges the "Full-Tack Product" has "diagonal stripes of adhesive area." (Compl. ¶ 32). An image provided in the complaint for the Extreme Product shows callouts for a "Release Coating" and "Adhesive Coverage." (Compl. ¶ 22). A similar image is provided for the Full-Tack Product. (Compl. ¶ 24).
IV. Analysis of Infringement Allegations
’104 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a web of thermal paper having a top surface and a bottom surface wound into a continuous roll without preset tear areas thereon | The products consist of a web of thermal paper wound into a continuous roll without preset tear areas. | ¶32 | col. 5:53-54 |
| b) a base coat provided on said bottom surface | The products have a base coat. | ¶32 | col. 5:56 |
| c) at least one adhesive strip provided on said bottom surface, said adhesive strip extending in a substantially uninterrupted manner along a running axis of said web | The Extreme product has a "solid continuous strip of adhesive." The Full-Tack product has "diagonal stripes of adhesive area." | ¶32 | col. 5:57-60 |
| wherein said base coat secures the adhesive...to prevent fouling of the auto-cutting mechanism... | The base coat secures the adhesive to prevent fouling of the printer. | ¶32 | col. 5:60-63 |
| and wherein the adhesive...comprises acrylate copolymer formed into microparticles, microspheres or combinations thereof | The complaint alleges "upon information and belief" that Defendant uses the same adhesive supplier as Plaintiff, whose adhesive is comprised of this copolymer. | ¶32 | col. 5:63-67 |
| d) a silicone-free release coat provided on said top surface...so that when said web...is caused to be...cut...said adhesive will extend in a continuous manner...to form a repositionable label | The products have a silicone-free release coat on the top surface, allowing a cut label to be repositionable. | ¶32 | col. 7:1-9 |
’699 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a web of thermal paper having a top surface, a bottom surface and a length without preset tear areas thereon | The products consist of a web of thermal paper without preset tear areas. | ¶43 | col. 8:39-41 |
| b) a base coat provided on the bottom surface | The products have a base coat. | ¶43 | col. 8:42 |
| c) at least one adhesive pattern provided on the bottom surface, the adhesive pattern extending the length of the web in a substantially uninterrupted manner such that a lateral cut...intersects the adhesive pattern | The "solid continuous strip" of the Extreme product and the "diagonal stripes" of the Full-Tack product are alleged to be adhesive patterns that are intersected by a lateral cut. | ¶43 | col. 8:43-47 |
| and wherein the base coat secures the adhesive...to prevent fouling of the auto-cutting mechanism... | The base coat secures the adhesive to prevent fouling of the printer. | ¶43 | col. 8:47-51 |
| and wherein the adhesive...comprises acrylate copolymer formed into microparticles, microspheres or combinations thereof | The complaint alleges the adhesive comprises this copolymer. | ¶43 | col. 8:51-54 |
| d) a silicone-free release coat provided on the top surface, the release coat extending along the length of the web and behind the at least one adhesive pattern... | The products have a silicone-free release coat on the top surface behind the adhesive pattern. | ¶43 | col. 8:55-63 |
Identified Points of Contention
- Scope Questions: A primary question for the ’104 patent is whether the "diagonal stripes" of the Full-Tack product can be considered "at least one adhesive strip extending in a substantially uninterrupted manner." For both patents, a question arises as to whether adhesive applied in patterns with non-adhesive areas (stripes or strips with bare edges) meets the "substantially uninterrupted manner" limitation.
- Technical Questions: The complaint's allegation regarding the chemical composition of the adhesive ("acrylate copolymer") is made "upon information and belief." (Compl. ¶ 32). This raises an evidentiary question regarding how Plaintiffs will prove this element, which will likely be a focus of discovery.
V. Key Claim Terms for Construction
The Term: "at least one adhesive strip...extending in a substantially uninterrupted manner" (’104 Patent, Claim 1c)
- Context and Importance: The viability of the infringement allegation against the Full-Tack product, with its "diagonal stripes" of adhesive, may depend on the construction of this term. Practitioners may focus on this term because the difference between a "strip" and "stripes" presents a clear dispute over claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification discloses an embodiment with two parallel, separate adhesive strips, which could support an argument that a single, monolithic band is not required. (’104 Patent, Fig. 9; col. 4:63-67). The functional goal is to ensure the cut label has adhesive, which could be achieved by various configurations.
- Evidence for a Narrower Interpretation: The patent also discloses an embodiment where the adhesive extends "substantially over the entire surface" of the web, which could support an argument that "uninterrupted" requires a more solid, continuous application of adhesive along the web's running axis. (’104 Patent, Fig. 5; col. 5:1-4).
The Term: "adhesive pattern" (’699 Patent, Claim 6c)
- Context and Importance: This term replaced "adhesive strip" from the parent '104 patent, suggesting a potential difference in meaning. Its construction is central to all infringement allegations under the ’699 patent. Practitioners may focus on this term because the post-filing disclaimer of this very claim suggests its scope was a point of contention that may have been resolved or narrowed during subsequent proceedings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain meaning of "pattern" is arguably broader than "strip" and could encompass stripes, dots, or other regular or irregular arrangements. The claim's functional language—requiring only that a lateral cut "intersects the adhesive pattern"—may support a broad construction that covers any configuration achieving that result. (’699 Patent, Claim 6c).
- Evidence for a Narrower Interpretation: The specification is nearly identical to that of the ’104 patent, which could be used to argue the scope is not substantively different. The most significant evidence for a narrower interpretation may come from the prosecution history and the subsequent disclaimer of this claim, which could have been intended to surrender certain subject matter.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induces infringement of method claim 9 of the ’517 patent. The factual basis for this allegation is that Defendant sells the accused products with the knowledge and intent that its customers will use them in thermal printers to cut custom-length labels, as allegedly encouraged by Defendant's website and a white paper. (Compl. ¶¶ 62, 66, 69).
Willful Infringement
The complaint alleges willful infringement of all three patents. The allegations are based on "information and belief" that Defendant had knowledge of the patents, and specifically on the allegation that Defendant received a cease and desist letter providing actual notice on or before August 2, 2018, which predates the filing of the complaint. (Compl. ¶¶ 20, 35, 46, 57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and scope: can the term "adhesive strip" from the ’104 patent be construed to read on the "diagonal stripes" of the accused Full-Tack product, and what is the effective scope of the term "adhesive pattern" in the ’699 patent, particularly in light of the post-filing disclaimer of the asserted independent claim?
- A key legal question will be the impact of the disclaimers: the terminal disclaimers link the enforceability of the patents, and the subsequent disclaimer of claim 6 of the ’699 patent raises a significant question about what subject matter, if any, remains for adjudication under that patent.
- A central evidentiary question will be one of composition: can the Plaintiffs produce evidence beyond "information and belief" to prove that the adhesive used in Defendant's products contains the "acrylate copolymer" chemistry required by the asserted claims of both the ’104 and ’699 patents?