DCT
1:24-cv-01073
Pratt Retail Specialties LLC v. Proampac LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pratt Retail Specialties, LLC (Delaware)
- Defendant: ProAmpac LLC (Delaware)
- Plaintiff’s Counsel: Morris James LLP; Taylor English Duma LLP
- Case Identification: 1:24-cv-01073, D. Del., 09/25/2024
- Venue Allegations: Venue is asserted on the basis that Defendant is a Delaware corporation and therefore "resides" in the District of Delaware for purposes of patent venue.
- Core Dispute: Plaintiff alleges that Defendant’s recyclable insulated bags infringe a patent related to recyclable paper-based packaging that incorporates a thin metallic layer for thermal insulation.
- Technical Context: The technology operates in the sustainable packaging sector, addressing the market need for materials that provide effective thermal insulation for shipping perishable goods while remaining fully recyclable within standard paper waste streams.
- Key Procedural History: Plaintiff Pratt Retail Specialties, LLC is the exclusive licensee of the patent-in-suit, which was granted to Sigma Technologies Int'l, LLC, and possesses the right to sue for infringement. The complaint alleges that Defendant had pre-suit knowledge of its infringement, based on a notification provided to one of Defendant’s customers in July 2024.
Case Timeline
| Date | Event |
|---|---|
| 2018-01-08 | U.S. Patent No. 11,072,148 Priority Date |
| 2021-07-27 | U.S. Patent No. 11,072,148 Issued |
| 2023-03-XX | Plaintiff obtains exclusive license to patent |
| 2024-06-04 | Defendant announces launch of Accused Product |
| 2024-07-XX | Plaintiff notifies Defendant's customer of infringement |
| 2024-09-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 11,072,148, Recyclable paper-containing packaging with radiant barrier insulation, issued July 27, 2021.
The Invention Explained
- Problem Addressed: The patent seeks to solve a conflict between thermal performance and recyclability in packaging materials. While metallized layers (like aluminum) provide excellent thermal insulation due to low heat emissivity, they typically contaminate the paper recycling process, creating defects known as "stickies" or visual blemishes in the final paper product. ('148 Patent, col. 3:55 - col. 4:4).
- The Patented Solution: The invention is a multi-layer packaging material comprising a paper layer, a polymer layer, and an extremely thin aluminum layer (200 nanometers or less). This structure is designed to provide low emissivity (≤ 0.10) for effective insulation, while ensuring the aluminum layer is so minimal that it fully oxidizes and becomes non-visible and non-adhering during a standard, high-heat, aqueous repulping process. ('148 Patent, Abstract; col. 2:27-44). This allows the entire composite material to be recycled as paper without needing to separate the layers.
- Technical Importance: This technology purports to enable the creation of high-performance insulated packaging for temperature-sensitive goods, such as food and pharmaceuticals, that can be disposed of in standard curbside recycling bins, addressing a significant sustainability challenge in the e-commerce and logistics industries. ('148 Patent, col. 1:16-22).
Key Claims at a Glance
- The complaint asserts independent claim 14. (Compl. ¶8).
- The essential elements of independent claim 14, a method claim, are:
- Placing a specific "reflective insulation material" in proximity to a good.
- The material itself comprises a "recyclable packaging" that includes:
- a paper layer;
- a polymer layer affixed to the paper layer;
- an aluminum layer (≤ 200 nm thick) deposited on the polymer layer, which causes the packaging to have an emissivity of ≤ 0.10.
- The claim further requires that this aluminum layer "becomes fully oxidized with no visible aluminum present" when subjected to a specific four-step treatment process involving blending, disintegration in hot water, screening, and drying.
- The complaint alleges infringement of "at least claim 14," reserving the right to assert other claims. (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
The "ProActive Recyclable® FiberCool" bag. (Compl. ¶11).
Functionality and Market Context
The Accused Product is marketed as a "curbside recyclable insulated bag" intended for use with chilled food products. (Compl. ¶¶12, 14). The complaint cites Defendant’s press release, which claims the product "outperforms a standard paper bag by demonstrating temperature retention by as much as 30%" and "has been pre-qualified for curbside recyclability." (Compl. ¶¶13-14). The complaint includes a promotional image showing the branded bags alongside perishable food items, illustrating their intended use. (Compl. ¶11).
IV. Analysis of Infringement Allegations
'148 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for thermally insulating a good within a recyclable packaging, the method comprising: placing a reflective insulation material in a pre-defined proximity with the good... | The Accused Product is an insulated bag sold for the purpose of thermally insulating goods. The complaint alleges the interior metalized surface of the bag is the reflective insulation material placed in proximity to the good. | ¶¶12, 13, 15 | col. 2:36-41 |
| wherein said reflective insulation material comprises the recyclable packaging that includes: a paper layer with first and second surfaces; a polymer layer with third and fourth surfaces, wherein the third surface is affixed to the second surface; | Based on pre-filing testing, the Accused Product is alleged to be a laminate structure comprising a paper layer and a polymer layer affixed to the paper layer. | ¶16 | col. 2:44-47 |
| an aluminum layer deposited on the fourth surface, wherein the aluminum layer has a first thickness of 200 nanometers or less and wherein the aluminum layer causes an emissivity of the recyclable packaging to be equal to or smaller than a first value of 0.10; | Based on pre-filing testing, the Accused Product is alleged to have an aluminum layer with a thickness of 200 nanometers or less, which causes the material to have an emissivity of 0.10 or less. | ¶¶16, 17 | col. 2:48-52 |
| and wherein said aluminum layer becomes fully oxidized with no visible aluminum present in a recyclable material that results from the recyclable packaging being subjected to a treatment that includes [a specific four-step blending, disintegrating, separating, and drying process]. | The complaint alleges that when the Accused Product was subjected to the precise four-step treatment process recited in the claim, the aluminum layer became fully oxidized and left no visible aluminum in the resulting material, as confirmed by testing conducted prior to filing. | ¶¶18, 19 | col. 2:52-62 |
Identified Points of Contention
- Scope Questions: Claim 14 is a method claim directed to "thermally insulating a good." Infringement occurs when a user places a good inside the accused bag. A central question for indirect infringement will be whether ProAmpac, the seller of the bag, can be held liable for its customers' use. The complaint also alleges direct infringement by ProAmpac's own "using and testing" of the product (Compl. ¶22), the extent and nature of which may become a factual dispute.
- Technical Questions: The complaint's allegations for several key limitations rely on "testing conducted prior to the filing of this action." (Compl. ¶¶16, 17, 18). The infringement analysis will likely focus on the factual and evidentiary support for these tests. Key questions include:
- What evidence will Plaintiff produce to substantiate its measurements of the accused bag's aluminum layer thickness (≤ 200 nm) and its emissivity (≤ 0.10)?
- Can the results of Plaintiff's recyclability test be replicated? The claim requires a specific outcome—that the aluminum becomes "fully oxidized with no visible aluminum"—when subjected to a specific four-step process. The verifiability of this functional limitation will be a critical point of discovery and expert testimony.
V. Key Claim Terms for Construction
The Term: "fully oxidized with no visible aluminum present"
- Context and Importance: This result-oriented, negative limitation appears to be the core of the invention's patentability, distinguishing it from prior art where metallic components contaminate recycled paper. Practitioners may focus on this term because infringement directly depends on whether the accused product achieves this specific outcome under the claimed test conditions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification links this claimed outcome to the material becoming "substantially transparent" and having an optical density of less than 0.09. ('148 Patent, col. 12:51-68). A party might argue that "fully oxidized" is met if this quantitative optical density threshold is achieved, even if trace amounts of metallic aluminum remain.
- Evidence for a Narrower Interpretation: The phrase "no visible aluminum present" suggests a strict, absolute standard. The specification heavily references industry testing standards for visual defects, such as TAPPI T-563 for "visual 'spot' testing," which could be used to argue that the term requires passing a specific, objective visual inspection test without any detectable metallic specks. ('148 Patent, col. 11:39-42; col. 12:5-18).
The Term: "recyclable packaging"
- Context and Importance: This term appears in the preamble and is structurally linked to the material that undergoes the method steps. Practitioners may focus on this term because Defendant could argue its product is "recyclable" under a different, more common standard (e.g., accepted in municipal recycling programs) that does not align with the patent's specific definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term should be given its plain and ordinary meaning as understood by consumers or the packaging industry, potentially divorcing it from the specific treatment process recited in the claim body.
- Evidence for a Narrower Interpretation: The patent repeatedly frames recyclability in the context of passing "The Voluntary Standard For Repulping and Recycling," a specific industry test. ('148 Patent, col. 5:1-col. 6:8). Plaintiff may argue that, within the context of the patent, "recyclable packaging" is a term of art defined by the ability to undergo the specific treatment recited in the claim and yield the claimed non-contaminating result.
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement.
- Inducement: The allegations are based on ProAmpac selling the Accused Product with knowledge of the patent and with the specific intent that its customers will use the bag for its stated purpose—thermally insulating goods—thereby performing the infringing method. (Compl. ¶¶23-24). The complaint points to ProAmpac's provision of instructions and support for the product as evidence of intent. (Compl. ¶24).
- Contributory Infringement: The complaint alleges the Accused Product is a material component of the invention, is especially adapted for practicing the patented method, and lacks substantial non-infringing uses. (Compl. ¶25).
Willful Infringement
The complaint alleges willfulness based on both pre-suit and post-suit knowledge. It claims Defendant knew of the '148 Patent prior to the lawsuit because competitors in the industry monitor each other's technology and, more specifically, because Plaintiff notified a ProAmpac customer of the infringement in July 2024, who then allegedly informed ProAmpac. (Compl. ¶10).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical verification: can Plaintiff's pre-filing test results be substantiated in discovery to prove that the accused ProActive FiberCool bag meets the precise quantitative limitations of Claim 14 regarding aluminum thickness (≤ 200 nm) and surface emissivity (≤ 0.10)?
- The case will also turn on a question of functional performance: does subjecting the accused product to the specific four-step repulping process recited in Claim 14 consistently result in an outcome where the aluminum layer is "fully oxidized with no visible aluminum present," as the patent requires?
- A core legal issue will be one of indirect infringement: as the asserted claim is a method performed by the end-user, the case will depend on Plaintiff's ability to prove that ProAmpac, as the seller of the product, possessed the requisite knowledge and specific intent to encourage its customers' infringing acts.