Quark Distribution Inc v. Epac Holdings LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Quark Distribution, Inc. (New York)
  • Defendant: ePac, Holdings, LLC; Advanced Converting Works Holdings, LLC; Advanced Converting Works, Inc.; and Advanced Converting Works LLC (all Delaware entities)
  • Plaintiff’s Counsel: Bayard, P.A.; Meister Seelig & Fein LLP
• Case Identification: 1:20-cv-00349, D. Del., 03/10/2020
• Venue Allegations: Venue is alleged based on the Defendants being incorporated in Delaware, conducting systematic business in the district, and committing acts of infringement that have consequences within the district.
• Core Dispute: Plaintiff alleges that Defendants’ child-resistant flexible pouches infringe two patents related to child-resistant sealing systems for containers.
• Technical Context: The technology concerns resealable mechanisms for flexible packaging, such as plastic bags, designed to be difficult for children to open.
• Key Procedural History: The complaint alleges that Plaintiff provided pre-suit notice of infringement to Defendant ePac on or about February 20, 2020, and to Defendant ACW on February 20, 2020. The '403 Patent was subject to a Certificate of Correction, issued October 29, 2019, which corrected language in the asserted Claim 1.

Case Timeline

Date	Event
2017-02-23	Earliest Priority Date for '403 and '404 Patents
2018-07-03	Issue Date for U.S. Patent No. 10,011,403 ('403 Patent)
2018-07-03	Issue Date for U.S. Patent No. 10,011,404 ('404 Patent)
2019-10-29	Certificate of Correction issued for '403 Patent
2020-02-20	Pre-suit notice of infringement allegedly received by ePac
2020-02-20	Pre-suit notice of infringement allegedly sent to ACW
2020-03-10	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,011,403, "Child Resistant Sealing System," issued July 3, 2018

The Invention Explained

• Problem Addressed: The patent addresses the problem of conventional resealable plastic bags being too easily opened, making them unsuitable for storing substances that could be hazardous to children, such as medicines ('403 Patent, col. 1:15-21).
• The Patented Solution: The invention is a flexible container with a multi-layered wall structure and a specialized directional closure system. The system uses a pair of interlocking strips and three distinct "upward extending flaps" created by attaching the different material layers to specific extensions of the closure strips ('403 Patent, col. 4:41-50; Fig. 3). To open the container, a user must pull on a specific, non-obvious combination of two of the three flaps. Pulling on an incorrect combination of flaps is designed to prevent the interlocking strips from releasing, thereby providing child resistance ('403 Patent, col. 5:4-18).
• Technical Importance: The technology provides a method for making flexible packaging child-resistant that is integral to the bag's structure, rather than relying on external components like sliders ('403 Patent, col. 1:10-15).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2-3, 5, and 16-17 (Compl. ¶¶32, 55).
• Independent Claim 1, as corrected by the Certificate of Correction, requires:
  • A container comprising a first layer of sheet material (first side) and at least a second and third layer of sheet material (second side).
  • A pair of closure strips with linear interlocking features.
  • A first closure strip having extensions both above and below the interlock, and a second strip having an extension only below the interlock.
  • The first layer is attached to the extension below the first strip, forming a first upward extending flap.
  • The second layer is attached to the extension below the second strip, forming a second upward extending flap.
  • The third layer is attached to the extension above the first strip, forming a third upward extending flap.
  • The container is capable of being opened by pulling the first and second flaps apart.
  • The interlocking strips are configured such that pulling apart other combinations (e.g., the first and third flaps) prevents release.
• The complaint reserves the right to assert additional claims (Compl. ¶¶32, 55).

U.S. Patent No. 10,011,404, "Child Resistant Sealing System," issued July 3, 2018

The Invention Explained

• As the '404 Patent is a continuation of the application that led to the '403 Patent and shares an identical specification, it addresses the same technical problem with the same proposed solution, as described in Section II above ('404 Patent, col. 1:5-21).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2-4 and 6 (Compl. ¶¶41, 63).
• Independent Claim 1 requires:
  • A container comprising a first layer of sheet material (first side) and at least a second and third layer of sheet material (second side).
  • A pair of closure strips with linear interlocking features.
  • A first closure strip having extensions both above and below the interlock, and a second strip having an extension only below the interlock.
  • The second layer is attached to the extension below the first strip, forming a first upward extending flap.
  • The first layer is attached to the extension below the second strip, forming a second upward extending flap.
  • The third layer is attached to the extension above the first strip, forming a third upward extending flap.
  • The interlocking strips are configured such that pulling apart flaps other than the first and second prevents release.
• The complaint reserves the right to assert additional claims (Compl. ¶¶41, 63).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are the "ePac Accused Products" and the "ACW Accused Products," identified as a "line of flat and stand up child resistant pouches" (Compl. ¶¶18, 24).

Functionality and Market Context

• The complaint alleges these products are child-resistant pouches marketed and sold throughout the United States via Defendants' respective websites (Compl. ¶¶19, 25). The complaint includes a visual from the ACW website showing a pouch with instructions that include pulling a "HIDDEN FLAP" to open (Compl. ¶29, Fig. C). This image depicts a multi-step opening process intended to provide child resistance. Another visual shows instructions on an ePac product that also require manipulation of specific flaps to open (Compl. ¶23, Fig. A). The complaint alleges, upon information and belief, that the accused products use zippers supplied by a non-party, Reynolds Presto Products, Inc. (Compl. ¶¶20, 26).

IV. Analysis of Infringement Allegations

The complaint states that claim charts were attached as exhibits, but these exhibits were not filed with the complaint. Therefore, the infringement allegations are summarized in prose based on the complaint's narrative.

'403 and '404 Patents Infringement Allegations

The complaint alleges that the ePac and ACW Accused Products directly infringe the '403 and '404 patents because they embody all the elements of at least claim 1 of each patent, respectively (Compl. ¶¶33, 42, 56, 64). The core of the infringement theory is that the physical construction of the accused pouches—their specific layers of material, the flaps formed from those layers, and the zipper mechanism—corresponds to the structural limitations recited in the asserted claims. The instructions for use printed on the accused products are presented as evidence that the pouches are intended to be opened in the specific manner claimed by the patents (Compl. ¶¶34, 43, 57, 65). For example, a visual of the ACW product's instructions shows a diagram directing the user to pull on a "HIDDEN FLAP" to initiate opening (Compl. ¶29, Fig. C). This suggests a non-obvious opening procedure that the Plaintiff alleges maps to the claims' functional requirements.

Identified Points of Contention

• Scope Questions: A central dispute may arise over the construction of the claim terms defining the bag's structure, such as "first layer," "second layer," and "third layer." The infringement analysis will depend on whether the physical layers of the accused pouches can be mapped to these claim elements, particularly since the independent claims of the '403 and '404 patents recite different layer-to-flap attachment schemes. The assertion of both patents raises the question of whether the Plaintiff is pleading in the alternative or believes the accused products meet both configurations.
• Technical Questions: A key evidentiary question will be whether the internal construction of the accused pouches matches the claims. The complaint's allegations appear to be based on external inspection. Discovery will be required to verify the precise attachment points of the bag's material layers to the upper and lower extensions of the closure strips. A further question is whether the "zipper" used in the accused products (Compl. ¶¶20, 26) functions as the claimed "linear interlocking strip," including any asymmetrical properties required by dependent claims.

V. Key Claim Terms for Construction

For U.S. Patent 10,011,403 and 10,011,404

• The Term: "a first layer of sheet material forming the first side... and at least a second and third layer of sheet material forming the second side" (e.g., ’403 Patent, cl. 1)

• Context and Importance: This language defines the fundamental three-layer structure of the container. The infringement analysis for both patents will hinge on how the physical components of the accused pouches are identified as the "first," "second," and "third" layers, as the claims assign them specific roles in forming the required flaps. Practitioners may focus on this term because the subtle differences in attachment points between the '403 and '404 claims make the identity of each layer critical.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claims use the general term "layer of sheet material," which a party could argue does not require the layers to be separate, unconnected sheets of material prior to assembly.
  • Evidence for a Narrower Interpretation: The specification describes an embodiment where one side of the bag is a "first full layer 110" and the opposite side is formed from a "plurality of partial (abutting or overlapping) layers 102, 104" ('403 Patent, col. 4:52-57). This description and the associated Figure 1 could support an argument that the claims require a specific construction of one full layer opposite two partial layers.

• The Term: "attached to the first of the pair of closure strip at the extension below the respective linear interlocking strip" (e.g., ’403 Patent, cl. 1)

• Context and Importance: This term, and its counterparts for other attachment points, is crucial for defining the claimed invention. The child-resistant functionality derives directly from which layer is connected to which extension of the closure strip to form a specific flap. Any ambiguity in what "attached to" means could broaden or narrow the claim scope significantly.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party might argue that "attached to" could encompass indirect as well as direct connections, so long as the flap is functionally associated with the specified extension.
  • Evidence for a Narrower Interpretation: The specification describes the closure strip assembly as being "heat sealed, to the opposing sides 102, 104 and 110 of the bag 100" ('403 Patent, col. 4:4-6). Figure 3 depicts a direct connection between the sheet layers and the extensions. This may support a narrower construction requiring a direct physical bond, such as a heat seal, at the specified location.

VI. Other Allegations

Indirect Infringement

• The complaint alleges both inducement and contributory infringement against all defendants for both patents. The inducement claim is based on allegations that the defendants' instructions for use, as depicted on the product packaging and websites, actively instruct and encourage end-users to open the pouches in an infringing manner (Compl. ¶¶34, 57; Fig. A, C). The contributory infringement claim is based on allegations that the accused pouches are a material component of the invention, are not suitable for substantial non-infringing use, and are especially adapted for use in infringing the patents (Compl. ¶¶35, 58).

Willful Infringement

• The complaint alleges that the defendants’ infringement has been willful since at least February 20, 2020, the date on which they allegedly had knowledge of the Asserted Patents and the high likelihood of infringement via pre-suit notification letters (Compl. ¶¶21-22, 27-28, 36, 45). The complaint alleges that despite this knowledge, the defendants continued their infringing activities in "reckless disregard of Quark's patent rights" (Compl. ¶¶36, 45).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A central issue will be one of structural correspondence: Can the plaintiff prove through discovery that the physical construction of the accused pouches—specifically, the attachment points of their various material layers to the closure strip extensions—is the same as the precise configuration required by the asserted independent claims of either the '403 Patent or the '404 Patent, which notably differ from each other?

2. A key evidentiary question will be one of functional operation: Does the accused products’ opening mechanism function in the specific sequence recited in the patent claims (i.e., pulling specific flaps causes a multi-stage release of the interlocks), or does it open through a different, non-infringing mechanical action?

3. Finally, the determination of willfulness will be a significant issue for damages. The case will likely examine the defendants' actions following the receipt of pre-suit notification letters in February 2020 to determine if their continued conduct constituted objective or subjective recklessness.