DCT
1:24-cv-01215
American Fuji Seal Inc v. Brook + Whittle Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: American Fuji Seal, Inc. (Delaware)
- Defendant: Brook + Whittle LTD (Delaware)
- Plaintiff’s Counsel: Saul Ewing LLP; Frost Brown Todd LLP
- Case Identification: 1:24-cv-01215, D. Del., 11/04/2024
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because both the Plaintiff and Defendant are Delaware corporations.
- Core Dispute: Plaintiff, a manufacturer of shrink sleeve labels, seeks a declaratory judgment that its products do not infringe Defendant’s patent related to recyclable heat shrink films for containers.
- Technical Context: The lawsuit concerns technology for product labels on clear polyethylene terephthalate (PET) containers, which aims to provide light protection for the contents while ensuring the entire package remains recyclable.
- Key Procedural History: The complaint alleges that after licensing discussions failed, the patent owner (Defendant B+W) sued one of the Plaintiff's customers, Nestlé USA, Inc., for infringement of the patent-in-suit in the Eastern District of Texas. This prior lawsuit against a customer forms the basis for the Plaintiff's alleged "reasonable apprehension of suit," a prerequisite for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2021-05-14 | Earliest Priority Date for '422 Patent |
| 2023-01-30 | Application Filing Date for '422 Patent |
| 2024-04-16 | '422 Patent Issue Date |
| 2024-06 | B+W approaches American Fuji Seal about the '422 Patent |
| 2024-09-08 | B+W sues Nestlé USA, Inc. in E.D. Tex. |
| 2024-11-04 | Complaint Filing Date (Current Action) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,961,422 - Recyclable Heat Shrink Film for Recyclable Container (Issued April 16, 2024)
The Invention Explained
- Problem Addressed: The patent addresses a conflict in the consumer packaging market between the need for light-protective packaging (for products like dairy and food) and the goal of using recyclable materials. Traditionally, color-impregnated PET bottles or certain types of labels were used to block light, but these solutions contaminate the clear PET recycling stream, rendering the packaging non-recyclable. (U.S. Patent No. 11,961,422, col. 1:12-28).
- The Patented Solution: The invention is a multi-layer recyclable shrink label designed to be used on clear PET containers. The label itself includes a heat shrink film, preferably made of PET, and a specialized "light blocking layer" constructed to block a high percentage of incident light across a wide spectrum (200 nm to 900 nm). (U.S. Patent No. 11,961,422, col. 1:36-44). Because the label's base film is PET and the inks and coatings are designed to wash off during the reclamation process, both the container and the label can be processed together in the PET recycling stream without contamination. (U.S. Patent No. 11,961,422, col. 7:10-34).
- Technical Importance: This technology purports to enable the use of clear, highly recyclable PET containers for light-sensitive products, which would otherwise require less-recyclable packaging, thereby aligning product preservation needs with sustainability goals. (U.S. Patent No. 11,961,422, col. 7:4-8).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 19 as having been asserted against its customer. (Compl. ¶15).
- Independent Claim 1:
- a heat shrink film comprising polyethylene terephthalate (PET) and having a first surface and a second surface opposite of the first surface, the heat shrink film having a thickness from 15 µm to 100 µm; and
- a light blocking layer disposed adjacent the first surface and comprising a light blocking component, the light blocking layer being constructed for the recyclable shrink label to block at least 80% of incident light having wavelengths in a range of 200 nm to 900 nm,
- wherein the light blocking component comprises a particulate having a particle size of 0.1 µm to 100 µm,
- wherein the particulate comprises metal, metal oxide, a reflective pigment, carbon black, mica, or a combination thereof, and
- wherein the recyclable shrink label is recyclable with a PET container.
- Independent Claim 19:
- a heat shrink film comprising polyethylene terephthalate (PET) and having a first surface and a second surface opposite of the first surface, the heat shrink film having a thickness from 15 µm to 100 µm;
- a light blocking layer disposed adjacent the first surface and comprising a light blocking component, the light blocking layer being constructed for the recyclable shrink label to block at least 80% of incident light having wavelengths in a range of 200 nm to 900 nm, and
- a high opacity layer comprising a white pigment,
- wherein the recyclable shrink label is recyclable with a PET container.
III. The Accused Instrumentality
- Product Identification: The complaint identifies the accused instrumentalities as "certain of American Fuji Seal's shrink sleeve labels," referred to as the "Accused Products." (Compl. ¶11).
- Functionality and Market Context: These are shrink sleeve labels that American Fuji Seal develops, manufactures, and sells to customers, such as Nestlé USA, Inc., for use on their products. (Compl. ¶10-12). The complaint does not provide specific technical details about the composition or functionality of the Accused Products, other than to deny that they meet certain claim limitations. (Compl. ¶21).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action for non-infringement. The table below summarizes the Plaintiff's (American Fuji Seal's) central allegation of non-infringement.
No probative visual evidence provided in complaint.
’422 Patent Infringement Allegations
| Claim Element (from Independent Claims 1 and 19) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a heat shrink film comprising polyethylene terephthalate (PET) and having a first surface and a second surface opposite of the first surface, the heat shrink film having a thickness from 15 µm to 100 µm | The complaint alleges that the Accused Products do not have a film with this specific material composition and thickness, a limitation required by all claims of the patent. | ¶21 | col. 27:21-25; col. 30:10-14 |
- Identified Points of Contention:
- Factual Question: The primary dispute appears to be a factual one: what is the material composition and thickness of the accused shrink sleeve labels? The complaint’s non-infringement theory rests entirely on the assertion that the Accused Products do not meet the "heat shrink film comprising PET... having a thickness from 15 µm to 100 µm" limitation. (Compl. ¶21).
- Scope Questions: Should the factual dispute proceed, the case may raise questions regarding the scope of the term "comprising polyethylene terephthalate (PET)." The court may need to determine if this requires PET to be the sole or primary component, or if the presence of PET in a blend with other polymers falls within the claim's scope.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for a full analysis of potential claim construction disputes beyond the explicit denial of infringement. However, based on the non-infringement theory pleaded, the following phrase is central.
- The Term: "heat shrink film comprising polyethylene terephthalate (PET)"
- Context and Importance: This term is the foundation of the non-infringement argument presented in the complaint. (Compl. ¶21). The determination of whether the Accused Products meet this limitation is dispositive of the case as pleaded. Practitioners may focus on this term because it links the claimed invention directly to the PET recycling ecosystem, which is the central problem the patent purports to solve.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists several types of polymers that can be used for shrink films, including PET, PETG, PVC, polystyrene, and others, suggesting that while PET is a preferred embodiment, the general concept is not strictly limited to it. (U.S. Patent No. 11,961,422, col. 9:4-10). The use of the open-ended term "comprising" may suggest that the film can include other components in addition to PET.
- Evidence for a Narrower Interpretation: The claims at issue explicitly recite "polyethylene terephthalate (PET)." The patent's background and summary repeatedly emphasize the importance of PET-on-PET recycling to avoid contamination. (U.S. Patent No. 11,961,422, col. 1:12-18, col. 7:4-8). Furthermore, dependent claim 5 specifies "wherein the heat shrink film consists of polyethylene terephthalate (PET)," which could be used to argue that "comprising" in claim 1 should be interpreted as having a distinct, broader meaning, but one still centered on PET as the key component. (U.S. Patent No. 11,961,422, col. 28:47-48).
VI. Other Allegations
- Indirect Infringement: The complaint notes a "reasonable apprehension" that B+W would sue it for direct or indirect infringement, but it does not plead specific facts concerning indirect infringement allegations beyond noting that its customer was sued for direct infringement. (Compl. ¶18).
- Exceptional Case: The Plaintiff requests a judgment that this is an "exceptional case" under 35 U.S.C. § 285, which would entitle it to an award of attorneys' fees. (Compl. ¶23, Prayer for Relief B). This allegation suggests the Plaintiff believes the Defendant's conduct in asserting the patent (at least against its customer) lacks a reasonable basis.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central question will be one of factual evidence: what is the precise material composition and thickness of American Fuji Seal’s Accused Products? The resolution of this factual question may be dispositive of the non-infringement claim as currently pleaded in the complaint.
- A secondary question may concern claim scope: how should the term "comprising polyethylene terephthalate (PET)" be construed? The court may need to decide if this limitation requires a film made entirely or predominantly of PET, or if it can read on a film that includes PET as part of a blend of materials.
- A significant procedural issue will be the relationship between this DJ action and the earlier-filed suit against a customer in Texas. The court will likely have to address the "first-to-file" rule and its exceptions, which could determine whether the case proceeds in Delaware or is stayed, transferred, or dismissed in favor of the Texas action.