DCT
1:19-cv-01364
Schwendimann v. Neenah Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jodi A. Schwendimann (Individual) and NuCoat, Inc. (Minnesota)
- Defendant: Neenah, Inc. (Delaware) and Avery Products Corporation (Delaware)
- Plaintiff’s Counsel: Berger Harris LLP
- Case Identification: 1:19-cv-01364, D. Del., 07/22/2019
- Venue Allegations: Venue is based on Defendants’ incorporation in Delaware, which Plaintiffs allege makes them residents of the district, and on a substantial part of the events giving rise to the claim allegedly occurring in the district.
- Core Dispute: Plaintiffs allege that Defendants’ heat transfer paper products infringe two patents related to polymeric compositions designed to be compatible with laser printers.
- Technical Context: The technology concerns chemical formulations for coatings on "iron-on" transfer papers that prevent the coating from melting at the high temperatures inside laser printers, while ensuring the final transferred image is flexible and durable.
- Key Procedural History: The patents-in-suit were assigned to Plaintiff Schwendimann in 2018 after a series of prior assignments. Plaintiff NuCoat is a royalty-free licensee. Subsequent to the filing of this complaint, both asserted patents were the subject of Inter Partes Review (IPR) proceedings. In July 2024, IPR certificates were issued cancelling all asserted claims in this litigation, including claim 1 of the ’200 patent, claim 29 of the ’200 patent, and claim 1 of the ’773 patent.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-01 | Earliest Priority Date for ’200 and ’773 Patents |
| 2002-06-25 | ’200 Patent Issued |
| 2004-04-20 | ’773 Patent Issued |
| 2011-08-01 | License agreement entered between then-owner MJS and CCI |
| 2012-12-31 | CCI becomes a subsidiary of Plaintiff NuCoat |
| 2013-07-01 | Approximate start of alleged damages period |
| 2017-01-01 | Approximate date of meeting between Avery and Schwendimann regarding patents |
| 2018-01-01 | Patents-in-Suit assigned to Plaintiff Schwendimann |
| 2019-07-22 | Complaint Filed |
| 2020-07-26 | IPR petitions filed against the Patents-in-Suit |
| 2024-07-03 | IPR Certificate issued cancelling asserted claim 1 of ’773 Patent |
| 2024-07-09 | IPR Certificate issued cancelling asserted claims 1 and 29 of ’200 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,410,200 - "Polymeric Composition and Printer/Copier Transfer Sheet Containing the Composition"
- Patent Identification: U.S. Patent No. 6,410,200, "Polymeric Composition and Printer/Copier Transfer Sheet Containing the Composition," issued June 25, 2002. (Compl. ¶19).
The Invention Explained
- Problem Addressed: The patent's background describes an issue with conventional heat transfer sheets where polymer materials, such as wax, would partially melt due to the high temperatures inside laser printers or copiers, necessitating frequent cleaning of the equipment. (’200 Patent, col. 2:11-18).
- The Patented Solution: The invention is a multi-layer transfer sheet designed to solve this problem. Its core is a "release layer" with a specific polymeric composition that overlays a substrate. This composition is designed to withstand the heat of a laser fuser while still effectively transferring a printed image to a receptor element like a t-shirt, resulting in a flexible and durable design. (’200 Patent, Abstract; col. 3:19-28).
- Technical Importance: The invention aimed to enable consumers and businesses to use standard, cost-efficient laser printers for creating custom fabric transfers, which was previously a technically challenging process. (Compl. ¶¶15-17).
Key Claims at a Glance
- The complaint asserts independent claim 1 and additionally alleges infringement of claim 29. (Compl. ¶¶70, 73, 75).
- Independent Claim 1 requires:
- A coated transfer sheet comprising:
- a substrate having a first and second surface; and
- at least one release layer overlaying said first surface, said release layer comprising a film-forming binder, an elastomeric emulsion, a water repellant and a plasticizer.
- The complaint does not explicitly reserve the right to assert other dependent claims but alleges infringement of "one or more other claims" generally. (Compl. ¶70).
U.S. Patent No. 6,723,773 - "Polymeric Composition and Printer/Copier Transfer Sheet Containing the Composition"
- Patent Identification: U.S. Patent No. 6,723,773, "Polymeric Composition and Printer/Copier Transfer Sheet Containing the Composition," issued April 20, 2004. (Compl. ¶20).
The Invention Explained
- Problem Addressed: As a divisional of the application leading to the ’200 patent, this patent addresses the same technical problem of transfer sheet materials melting in laser printers. (’773 Patent, col. 1:13-20).
- The Patented Solution: Rather than claiming the entire multi-layer sheet, this patent claims the polymeric composition itself. The claimed composition consists of four key components: an acrylic dispersion, an elastomeric emulsion, a water repellant, and a plasticizer. This formulation is what comprises the "release layer" described in the ’200 Patent and is designed to provide wash stability and flexibility to the transferred image. (’773 Patent, Abstract; col. 2:35-39).
- Technical Importance: By claiming the composition per se, the patent provides a different and potentially broader scope of protection than the parent patent's claims to the transfer sheet product.
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶74).
- Independent Claim 1 requires:
- A polymeric composition comprising:
- an acrylic dispersion,
- an elastomeric emulsion,
- a water repellant and
- a plasticizer.
- The complaint does not explicitly reserve the right to assert other dependent claims.
III. The Accused Instrumentality
Product Identification
The complaint names Neenah’s "JetProSS heat transfer paper" and "Photo Trans SC heat transfer paper," as well as "Avery's T-Shirt Transfers for Light Fabric (8938)" as the accused instrumentalities. (Compl. p.7 ¶2; p.10 ¶45).
Functionality and Market Context
- The complaint alleges that the accused products are coated, polymeric, iron-on transfer sheets used to apply images to garments. (Compl. p.7 ¶¶4-6; p.10 ¶¶46-48). The functionality described includes creating a soft, stretchable, and durable image that can withstand laundering. (Compl. p.8 ¶¶16-18; p.11 ¶¶57-59).
- The complaint alleges that Neenah and Avery are direct competitors to Plaintiff NuCoat in the fabric transfer market and that some of NuCoat's potential customers have turned to the Defendants. (Compl. p.6 ¶¶1, 28).
Visual Evidence
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’200 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substrate having a first and second surface | The accused JetProSS and 8938 products are alleged to have a substrate with first and second surfaces. | ¶¶7, 8, 49, 50 | col. 4:33-37 |
| at least one release layer overlaying said first surface | The accused products are alleged to have at least one release layer overlaying the first surface of the substrate. | ¶¶9, 51 | col. 8:50-54 |
| said release layer comprising a film-forming binder | The release layers of the accused products are alleged to contain a film-forming binder. | ¶¶10, 52 | col. 8:62-64 |
| an elastomeric emulsion | The release layers are alleged to have an elastomeric emulsion. | ¶¶12, 54 | col. 8:62-64 |
| a water repellant | The release layers are alleged to have a water repellant. | ¶¶13, 55 | col. 8:62-64 |
| and a plasticizer | The release layers are alleged to have a plasticizer. | ¶¶14, 56 | col. 8:62-64 |
’773 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A polymeric composition comprising: an acrylic dispersion | The accused JetProSS product is alleged to have an acrylic dispersion in its polymeric composition. | ¶11 | col. 2:35-39 |
| an elastomeric emulsion | The accused JetProSS product is alleged to have an elastomeric emulsion. | ¶12 | col. 2:35-39 |
| a water repellant | The accused JetProSS product is alleged to have a water repellant. | ¶13 | col. 2:35-39 |
| and a plasticizer | The accused JetProSS product is alleged to have a plasticizer. | ¶14 | col. 2:35-39 |
Identified Points of Contention
- Scope Questions: The complaint makes conclusory allegations that the accused products contain the claimed components. A central dispute would question whether the chemical compounds in the accused products fall within the definitions of the claimed components (e.g., "film-forming binder," "elastomeric emulsion"). The patents' specifications provide numerous examples, creating potential arguments over the breadth of these terms.
- Technical Questions: A key question for the court would be an evidentiary one: what proof can Plaintiffs offer that the accused products contain these four distinct chemical components performing the functions as described in the patents? The complaint does not present any chemical analysis or reverse engineering data, relying instead on conclusory statements and references to product marketing materials.
V. Key Claim Terms for Construction
For the ’200 Patent
- The Term: "film-forming binder"
- Context and Importance: This is a primary structural component of the claimed release layer. The scope of this term will determine which chemical compositions can meet this limitation, directly impacting the infringement analysis. Practitioners may focus on this term because the patents' preferred embodiments are specific, while the general description is broad.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists a wide range of potential binders, including "polyacrylates, polyacrylic acid, polymethacrylates, polyvinyl acetates, co-polymer blends of vinyl acetate and ethylene/acrylic acid co-polymers, ethylene-acrylic acid copolymers, polyolefins, and natural and synthetic waxes." (’200 Patent, col. 9:1-8).
- Evidence for a Narrower Interpretation: The specification repeatedly identifies "ethylene acrylic acid co-polymer dispersion" as a preferred embodiment and uses it in detailed examples, such as Release Layer Formulation 1. (’200 Patent, col. 10:49-65). A party could argue that the invention is centered on this specific class of binder.
For Both Patents
- The Term: "elastomeric emulsion"
- Context and Importance: This component provides the flexibility and "stretch" that is a key feature of the final transferred image. Its definition is critical for both the product claims of the ’200 Patent and the composition claims of the ’773 Patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists a broad group of "thermoplastic elastomers," including "polybutadiene, polyurethane, ... styrene-butadiene, ... polyacrylates," and others. (’200 Patent, col. 15:15-24).
- Evidence for a Narrower Interpretation: The patent highlights specific examples, such as "a polyacrylate terpolymer elastomer (for example, Hystretch V-29) and an aliphatic urethane acryl hybrid (for example, Daotan VTW 1265)," as having been introduced into the invention. (’200 Patent, col. 15:10-14). A party may argue the term should be understood in the context of these specific examples.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by asserting that Defendants sell the accused transfer sheets with "explicit instructions" that guide end consumers to use the products in a manner that directly infringes. (Compl. ¶77). Specific instructions alleged include how to press the image onto a garment. (Compl. p.8 ¶¶19-23; p.11 ¶¶60-63).
- Willful Infringement: The complaint alleges willful infringement based on purported pre-suit knowledge for both defendants. It is alleged that Neenah had knowledge via its Vice President, Bob Conforti, who was previously told about the patents. (Compl. ¶43). It is alleged that Avery had knowledge from a long-standing relationship with the inventor and a 2017 meeting where Plaintiff Schwendimann "provided a list of her patents." (Compl. ¶¶65-66).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive threshold issue is the effect of subsequent claim cancellation. The IPR proceedings, concluded in 2024, resulted in the cancellation of every claim asserted in the 2019 complaint. The central question for the case is whether any viable claims remain, as the original basis for the lawsuit appears to have been extinguished.
- Assuming the claims had survived, a key question would have been one of evidentiary sufficiency. The complaint's infringement theory rests on conclusory assertions that the accused products contain the claimed chemical components. The case would have turned on whether Plaintiffs' technical evidence, likely from product reverse engineering, could prove that the specific formulations used by Neenah and Avery meet each limitation of the asserted claims.
- A third question would have been one of definitional scope. The dispute would likely have centered on claim construction, specifically whether functional terms like "film-forming binder" and "elastomeric emulsion" should be interpreted broadly to cover a wide class of materials or be narrowed by the specification’s more specific examples and preferred embodiments.