DCT
1:19-cv-08206
Ranpak Corp v. Sealed Air Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ranpak Corp. (Ohio)
- Defendant: Sealed Air Corporation (Delaware)
- Plaintiff’s Counsel: Renner Otto; Latimer Levay Fyock LLC
- Case Identification: 1:19-cv-08206, N.D. Ill., 12/16/2019
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining a regular and established place of business within the district and having made, used, or sold the accused products in the district.
- Core Dispute: Plaintiff alleges that Defendant’s paper void-fill supplies, when used as instructed, infringe a patent related to a supply of sheet stock material for cushioning conversion machines that features a pre-applied adhesive for splicing.
- Technical Context: The technology concerns consumable supplies for automated paper-based packaging systems, which convert large stacks or rolls of paper into cushioning material for shipping.
- Key Procedural History: The complaint alleges Plaintiff provided Defendant with notice of the asserted patent and its infringement allegations in late 2013. A subsequent Inter Partes Review (IPR) proceeding, initiated after this complaint was filed, resulted in the cancellation of claims 13-15 of the patent-in-suit. As the complaint exclusively asserts claim 13, the cancellation of this claim presents a fundamental challenge to the continuation of the case.
Case Timeline
| Date | Event |
|---|---|
| 2000-11-17 | ’096 Patent Priority Date |
| 2004-06-29 | ’096 Patent Issue Date |
| 2013-12-31 | Approximate Date of Pre-Suit Notice to Defendant |
| 2019-12-16 | Complaint Filing Date |
| 2020-07-07 | IPR Proceeding (IPR2020-01249) Initiated |
| 2022-04-06 | IPR Certificate Issued Cancelling Claims 13-15 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,756,096 - METHOD OF LOADING A CUSHIONING CONVERSION MACHINE AND SHEET STOCK MATERIAL USEFUL THEREIN, Issued June 29, 2004
The Invention Explained
- Problem Addressed: The patent addresses the inefficiency and potential for error when splicing a new supply of paper stock (e.g., a roll or fan-folded stack) to an expiring one in a cushioning conversion machine. Prior methods, such as using separate strips of tape or spraying liquid adhesive, were described as "tedious" and could lead to machine jams or product defects if done improperly ('096 Patent, col. 1:49-68).
- The Patented Solution: The invention is a supply of sheet stock material that is manufactured with a pressure-sensitive adhesive layer and a removable release liner already present on its leading or trailing end. This design allows an operator to quickly splice a new supply to an old one by simply peeling off the liner and pressing the ends together, streamlining the reloading process ('096 Patent, Abstract; col. 2:7-16). Figure 4 of the patent, for instance, depicts a roll of stock material (100) with a pre-applied adhesive layer (112) and release liner (114) on its leading end.
- Technical Importance: By integrating the splicing mechanism into the consumable paper supply itself, the invention aimed to reduce machine downtime and simplify operator tasks in high-volume packaging environments ('096 Patent, col. 2:5-7).
Key Claims at a Glance
- The complaint asserts independent claim 13 ('096 Patent, col. 16:37-46; Compl. ¶11).
- The essential elements of claim 13 are:
- A supply of sheet stock material for use in a cushioning conversion machine, comprising:
- at least one ply of kraft paper rolled or folded into a compact configuration,
- each ply of kraft paper having on a leading or trailing end thereof a pressure sensitive adhesive layer and a removable release liner covering the pressure sensitive adhesive layer.
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are identified as "bundles of fan-fold kraft paper and double-sided adhesive tape provided therefor, including TigerFill paper for use with Defendant's FasFil® Paper Void-Fill System" (Compl. ¶12).
Functionality and Market Context
- The Accused Products are consumable supplies for Defendant's FasFil® void-fill machines (Compl. ¶12). They are provided to customers as a bundle of fan-folded kraft paper along with a separate strip of double-sided adhesive tape (Compl. ¶14). The complaint alleges that Defendant instructs customers to use this tape to splice the end of one paper bundle to the beginning of the next, enabling a continuous feed of paper into the machine (Compl. ¶16). A promotional video screenshot included in the complaint highlights the machine's "Large capacity paper tray for maximum efficiency," suggesting the system is intended for continuous, high-volume operation where splicing is a routine task (Compl. ¶24, p. 6). The complaint includes an image of the Accused Product, showing a fan-folded paper bundle with a strip of tape placed on top (Compl. ¶13, p. 3).
IV. Analysis of Infringement Allegations
The complaint's infringement theory is that the accused article is created by the end-user at the point of use, based on Defendant's instructions. The product as sold (a bundle of paper and a separate roll of tape) does not appear to literally meet the claim limitations.
’096 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A supply of sheet stock material for use in a cushioning conversion machine | The Accused Products are bundles of paper provided for use with Defendant's FasFil paper void fill system, which is described as a cushioning conversion machine. | ¶23 | col. 2:55-58 |
| at least one ply of kraft paper rolled or folded into a compact configuration | Each Accused Product is provided as a single ply of kraft paper fan-folded into a compact bundle for loading into the machine's paper tray. | ¶26 | col. 13:40-42 |
| each ply of kraft paper having on a leading or trailing end thereof a pressure sensitive adhesive layer and a removable release liner covering the pressure sensitive adhesive layer | By following instructions to remove one liner from the supplied double-sided tape and adhere the tape to the paper's edge, the user creates what is alleged to be a ply of paper with an attached adhesive layer (the tape) and a removable release liner (the tape's remaining liner). | ¶31 | col. 13:43-46 |
- Identified Points of Contention:
- Scope Questions: The primary dispute concerns the definition of the claimed "supply." A key question for the court is whether a kit of parts (paper bundle and separate tape) that is assembled by the end-user into an allegedly infringing configuration at the moment of use can be considered "A supply of sheet stock material ... comprising" the claimed features. The patent claim is directed to an article of manufacture, not a method of use.
- Technical Questions: A related question is whether a separately-provided, user-applied strip of double-sided tape (Compl. ¶14) constitutes an adhesive layer that is "on a leading or trailing end" of the paper supply in the manner required by the claim. The patent specification's embodiments appear to illustrate a supply where the adhesive is integrated during manufacturing ('096 Patent, Fig. 4, 19C).
V. Key Claim Terms for Construction
- The Term: "A supply of sheet stock material ... comprising"
- Context and Importance: The construction of this preamble is critical because Defendant provides paper and tape as separate components. The interpretation will determine whether the Accused Products could be seen as the claimed article, which is foundational to both direct and indirect infringement theories.
- Intrinsic Evidence for a Broader Interpretation: A party could argue that "supply" should be interpreted functionally to include a set of components provided together for the express purpose of creating the final article, as this fulfills the patent's stated goal of simplifying splicing ('096 Patent, col. 2:5-7).
- Intrinsic Evidence for a Narrower Interpretation: The patent consistently describes and depicts a single, pre-manufactured article, such as a "roll of wound stock material" or a "stack of fan-folded stock material" ('096 Patent, col. 2:11-12), where the adhesive layer is an integral feature, not a component to be added later by the user.
- The Term: "having on a leading or trailing end thereof"
- Context and Importance: This term's construction will determine whether the user's act of applying a separate tape strip can satisfy the claim. Practitioners may focus on this term because it addresses the physical and temporal relationship between the paper and the adhesive.
- Intrinsic Evidence for a Broader Interpretation: A party might argue that once the tape is applied by the user, the paper ply literally does "have on" its end the adhesive layer, satisfying the plain meaning of the words at the time of the infringing act (splicing).
- Intrinsic Evidence for a Narrower Interpretation: The specification states, "The ply of sheet stock material has disposed on a leading or trailing end thereof, a pressure sensitive adhesive layer" ('096 Patent, Abstract; col. 2:12-14), which suggests a pre-existing state of the supply, not a condition created momentarily by an end-user.
VI. Other Allegations
- Indirect Infringement: The complaint is primarily focused on theories of indirect infringement.
- Inducement: The complaint alleges that Defendant instructs customers on how to create the infringing article by providing written instructions, and in some cases different verbal instructions, on how to apply the separate tape to the paper to splice bundles together (Compl. ¶16, ¶17, ¶51). It is alleged Defendant did so with knowledge of the patent and with the intent to cause infringement (Compl. ¶53).
- Contributory Infringement: The complaint alleges the Accused Products are "specially designed" for use in Defendant's void-fill systems to splice bundles and have no substantial non-infringing use (Compl. ¶37, ¶43). It is further alleged that the provided double-sided tape is "specially designed for use by removing only one release liner" before adhering it to the paper (Compl. ¶39).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit notice of the '096 Patent and the infringement assertions, which the complaint states was provided to Defendant in "late 2013" (Compl. ¶33-34, ¶45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive procedural question is the impact of claim cancellation: given that the sole asserted claim (Claim 13) was cancelled in an IPR proceeding that concluded after the suit was filed, what is the legal viability of the lawsuit? The court will need to determine if a basis remains for recovering damages for any infringement that may have occurred before the claim was held unpatentable.
- If the case were to proceed, a core issue would be one of product definition: can a "supply of sheet stock material," as claimed, be construed to cover a kit of separate components (paper and tape) that are only assembled into the claimed configuration by an end-user, or does the claim require a single, pre-manufactured article?
- Finally, a central evidentiary question would be one of inducement: what is the precise content of the written and verbal instructions Defendant provided to its customers, and does that evidence demonstrate a specific intent to encourage the creation of an article meeting all limitations of the (now cancelled) claim?