DCT
1:23-cv-15282
Hexcelpack LLC v. Pregis LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hexcelpack LLC (Connecticut)
- Defendant: Pregis LLC (Delaware)
- Plaintiff’s Counsel: Leydig Voit Mayer LTD; Lewis Rice
- Case Identification: 1:23-cv-15282, N.D. Ill., 10/24/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because Defendant Pregis LLC is incorporated in and resides in the district, has a regular and established place of business in the district, and has committed alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Easypack® GeoTerra™ slit paper and its associated manual dispenser infringe four U.S. patents related to extensible paper cushioning products and the devices used to dispense them.
- Technical Context: The technology concerns paper-based packaging materials that are manufactured with slits, allowing the paper to expand into a three-dimensional honeycomb structure for cushioning items during shipping.
- Key Procedural History: The complaint alleges a prior business relationship between Plaintiff and Danco Packaging Supply Co., which included a supply contract and a non-compete agreement. Plaintiff alleges that Defendant acquired Danco in 2021 and subsequently launched the accused products, which are alleged to be copies of Plaintiff's own HexcelWrap™ products. The complaint also alleges Defendant used photographs of Plaintiff's product in its own advertising, for which Plaintiff sent a demand letter.
Case Timeline
| Date | Event |
|---|---|
| 2017-02-08 | U.S. Patent No. 11,479,009 Earliest Priority Date |
| 2017-06-26 | U.S. Patent Nos. 10,669,086, 11,383,906 & 11,760,548 Earliest Priority Date |
| 2017-01-01 | Hexcelpack LLC and Danco execute Confidentiality/Non-Compete and Supply agreements (approximated from "In 2017") |
| 2020-06-02 | U.S. Patent No. 10,669,086 Issued |
| 2021-08-10 | HexcelPack issues purchase order to Danco for die cutting equipment |
| 2021-08-26 | HexcelPack signs cessation of confidentiality, retaining non-compete with Danco |
| 2022-07-12 | U.S. Patent No. 11,383,906 Issued |
| 2022-10-25 | U.S. Patent No. 11,479,009 Issued |
| 2023-09-18 | U.S. Patent No. 11,760,548 Issued |
| 2023-10-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,760,548 - "Extensible Paper and its Use in the Production of Expanded Slit Packaging Wrap and Void Fill Products," issued September 19, 2023
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art expanded slit sheet paper as being non-extensible and primarily made from Kraft paper, which persisted in the market despite technological limitations (U.S. Patent No. US11760548B2, col. 1:28-39). This implies that such papers could be difficult to expand and prone to tearing.
- The Patented Solution: The invention is a slit sheet paper product made from "extensible" paper, which is paper designed to stretch. Using extensible paper is claimed to substantially reduce the pulling force necessary to expand the slit sheet material into its three-dimensional, cellular form. This approach is intended to reduce tearing and allow for simpler, manual expansion devices (’548 Patent, col. 1:47-58). The core of the invention is the application of a material with specific stretch properties to a known structural format (slit paper).
- Technical Importance: This innovation purportedly enables the use of lighter weight papers for cushioning and void-fill applications and expands the market to include customers who can use simpler manual dispensers instead of complex powered systems (’548 Patent, col. 1:53-63).
Key Claims at a Glance
- The complaint asserts independent claim 1, along with numerous dependent claims (Compl. ¶79).
- Independent Claim 1 requires:
- A slit sheet extensible paper cushioning product, comprising:
- a slit sheet extensible paper having a slit pattern including a plurality of slits extending in a cross direction that form open cells upon expansion in a machine direction,
- wherein extensibility of unslit extensible paper from which said slit sheet extensible paper is made is within a range from 4 to 20% in the machine direction.
U.S. Patent No. 11,479,009 - "Slit Sheet Tensioning Device," issued October 25, 2022
The Invention Explained
- Problem Addressed: The patent addresses the need for a tensioning device to resist the unwinding of a roll of expandable slit paper during dispensing (’009 Patent, col. 1:12-15). This is necessary to create the resistance against which a user pulls to expand the paper into its honeycomb structure.
- The Patented Solution: The patent describes a mechanical dispenser for a roll of slit paper. The device holds the roll on a rod and features a tensioning system comprising a "pressing member" that applies friction to the paper core, a spring that provides force to the pressing member, and a "manually adjusted member" (such as a screw) that allows a user to adjust the spring's force (’009 Patent, Abstract). This adjustable friction allows the user to control the resistance needed to unwind and expand the paper.
- Technical Importance: This device provides a simple, manually adjustable mechanism to control dispensing tension, which can be important as the roll's diameter and weight change during use, affecting the force required for proper expansion.
Key Claims at a Glance
- The complaint asserts independent claim 2, along with several dependent claims (Compl. ¶88).
- Independent Claim 2 requires:
- A device for dispensing expandable slit sheet paper, comprising:
- a roll of expandable slit sheet paper,
- an interior core member on which the roll is wound,
- a rod member on which the core member is mounted,
- a support member,
- a pressing member that is movable to apply a frictional resistance that inhibits rotation of said core member,
- a spring arranged to apply a spring force against said pressing member, and
- a manually adjusted member arranged to apply pressure against said spring to adjust the spring force.
Multi-Patent Capsule
U.S. Patent No. 11,383,906, "Extensible Paper and its Use in the Production of Expanded Slit Packaging Wrap and Void Fill Products," issued July 12, 2022
- Technology Synopsis: Similar to the ’548 Patent, this patent describes a cushioning product made from slit paper. The invention is the use of an extensible paper to form the product, which is claimed to reduce the force needed for expansion. This patent claims a specific, narrower extensibility range of 3 to 9% in the machine direction (’906 Patent, Claim 1).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶21, 96).
- Accused Features: The Accused Easypack® GeoTerra™ slit paper product is alleged to be made from extensible paper possessing the claimed properties (Compl. ¶41-43, 96).
U.S. Patent No. 10,669,086, "Extensible Paper and its Use in the Production of Expanded Slit Packaging and Void Fill Products," issued June 2, 2020
- Technology Synopsis: This patent also claims an extensible slit sheet paper cushioning product. It specifically claims the product in the form of a roll of slit sheet paper that resists pulling, where the paper itself has an extensibility of 3 to 20% in the machine direction (’086 Patent, Claim 1). The invention combines the physical form (a roll) with the specific material property (extensibility).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶24, 105).
- Accused Features: The Accused Easypack® GeoTerra™ product, which is sold as a roll of slit paper, is alleged to infringe (Compl. ¶39, 58, 105).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "Easypack® GeoTerra™ Slit Paper Product" and the accompanying "Accused Manual Dispenser" (Compl. ¶39, 50).
Functionality and Market Context
- The Accused Easypack® GeoTerra™ product is described as a paper-based packing solution that provides cushioning and interleaving protection (Compl. ¶48). The complaint alleges the paper has been slit with numerous slits aligned in the cross direction, which expand into open hexagonal cells when the paper is pulled under tension (Compl. ¶49). A photograph from the Defendant's website shows the paper roll loaded in the dispenser with the end portion expanded into a honeycomb structure (Compl. ¶50). The complaint alleges, upon information and belief, that the paper stock used is "extensible paper" with an extensibility of at least 5% to 6% in both the machine and cross directions (Compl. ¶41-42).
- The Accused Manual Dispenser is described as a "two-touch tensioning dispenser" that is included with the purchase of the slit paper product (Compl. ¶51). It includes a handle that can be turned to increase tension on the roll (Compl. ¶52). The complaint alleges the dispenser uses a handle-controlled friction assembly with a spring to exert pressure, thereby increasing the tension needed to unwind and expand the paper (Compl. ¶56). A user manual photograph shows the instruction to rotate the adjustment handle clockwise to increase tension (Compl. ¶55).
IV. Analysis of Infringement Allegations
11,760,548 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a slit sheet extensible paper having a slit pattern including a plurality of slits extending in a cross direction that form open cells upon expansion in a machine direction, | The accused product is an extensible paper that has been slit with numerous slits aligned substantially in the cross direction. These slits expand into open hexagonal cells upon expansion by pulling the paper in the machine direction. | ¶49 | col. 10:1-11 |
| wherein extensibility of unslit extensible paper from which said slit sheet extensible paper is made is within a range from 4 to 20% in the machine direction. | The paper stock used to make the accused product is alleged to be "extensible paper" with an extensibility of at least 5% to 6% in the machine direction, which falls within the claimed 4-20% range. | ¶42, ¶43 | col. 10:12-15 |
- Identified Points of Contention:
- Technical Question: The complaint's primary allegation regarding the paper's extensibility property is made "upon information and belief" (Compl. ¶42). Plaintiff states that Defendant has refused to provide a sample for testing (Compl. ¶47). Therefore, a key technical question is what evidence will establish that the paper used in the accused product actually possesses an "extensibility" within the specific 4% to 20% range required by the claim.
11,479,009 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a roll of expandable slit sheet paper, | The accused product is provided as a roll of expandable slit paper. A photograph from the user manual shows the roll on the dispenser. | ¶58 | col. 11:43-45 |
| an interior core member, wherein said roll of expandable slit sheet paper is wound on said interior core member, | The roll of accused paper is wound on an interior core member. A photograph shows the core after the paper has been dispensed. | ¶59 | col. 11:46-47 |
| a rod member, wherein said interior core member is mounted on said rod member... | The interior core member is mounted on a rod member of the Accused Manual Dispenser. A photograph shows the core mounted on the rod. | ¶60 | col. 11:48-49 |
| a pressing member that is movable to apply a frictional resistance that inhibits rotation of said core member, | The dispenser includes a friction assembly on one of the core plugs that exerts pressure to increase tension. This assembly acts as the pressing member. | ¶56 | col. 12:4-7 |
| a spring arranged to apply a spring force against said pressing member, | The friction assembly includes a spring that exerts pressure to increase the tension. | ¶56 | col. 12:7-9 |
| and further including a manually adjusted member that is arranged to apply a pressure against said spring such as to adjust the spring force applied by the spring against said pressing member. | The dispenser includes a handle that can be turned to tighten the roll, which compresses the spring and increases tension. This handle functions as the manually adjusted member. | ¶52, ¶56 | col. 12:10-14 |
- Identified Points of Contention:
- Scope Question: Claim 2 recites both a "pressing member" and a "manually adjusted member" as distinct elements. The complaint alleges a "handle that controls the friction assembly" (Compl. ¶56). A potential issue for the court is whether the accused dispenser's handle and friction assembly constitute two separate structures that map to these two distinct claim limitations, or whether they function as a single, integrated mechanism that does not meet the "all elements" rule for literal infringement.
V. Key Claim Terms for Construction
The Term: "extensibility" (’548 Patent, Claim 1)
- Context and Importance: This term is the central technical limitation of the product-focused patents-in-suit. The infringement analysis for the ’548, ’906, and ’086 patents will depend entirely on whether the accused paper has properties that fall within the specific numerical ranges of "extensibility" recited in the claims. Practitioners may focus on this term because the allegation of the accused product's extensibility is based on "information and belief" and is the most likely point of factual dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses extensibility in several contexts, including a broad range of 1%-9% in the machine direction in some embodiments, which is wider than the range in the asserted claim ('548 Patent, col. 2:3-4). This might be used to argue that the concept is not rigidly tied to one specific range.
- Evidence for a Narrower Interpretation: The asserted claim itself provides a clear numerical range of "4 to 20%." The abstract and detailed description repeatedly emphasize specific ranges, distinguishing the invention from both non-extensible paper and highly-extensible crepe paper, suggesting the patentee intended the term to be defined by these specific, recited numerical boundaries ('548 Patent, Abstract; col. 6:11-21).
The Term: "pressing member" (’009 Patent, Claim 2)
- Context and Importance: Claim 2 recites this term as a separate element from the "manually adjusted member." The viability of the infringement claim may depend on whether the accused device's tensioning mechanism can be shown to have two distinct corresponding structures. Practitioners may focus on this term because if the "handle" of the accused device is found to be both the "pressing member" and the "manually adjusted member," the claim may not be infringed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a specific definition for "pressing member." A party could argue for a broad, functional definition, such as any component that ultimately transmits pressure to the paper core, which could encompass a part of the friction assembly actuated by the handle.
- Evidence for a Narrower Interpretation: The patent's own figures (e.g., Fig. 1 of the parent '086 patent) depict a tensioning system with physically distinct components for adjusting (e.g., a setscrew) and pressing (e.g., a roll holder). A party could argue that the term requires a structurally separate component from the manual adjuster, not just a different functional aspect of the same component. The complaint's description of a "handle that controls the friction assembly on one of the core plugs" could support an interpretation where the "core plug" is the pressing member, distinct from the handle (Compl. ¶56).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement of the '548 and '906 patents. The allegations are based on Defendant's instructions to its customers, via a website video and user manual, on how to use the accused product and dispenser in a manner that allegedly practices the patented methods (Compl. ¶80, 97).
- Willful Infringement: Willfulness is alleged for all four patents-in-suit. The allegations are based on Defendant's alleged pre-suit knowledge stemming from its acquisition of Danco, which had a prior relationship and non-compete agreement with Plaintiff; alleged direct copying of Plaintiff's product; alleged use of Plaintiff's product in Defendant's advertising photos; and an alleged offer to sell "Hexcel" paper to a major retailer (Compl. ¶29-37, 83-84, 91-92).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Will discovery and expert testing confirm the complaint's "information and belief" allegations that the paper used in the accused GeoTerra™ product possesses the specific numerical "extensibility" ranges required by the asserted product patent claims?
- A central question of claim scope will be whether the accused dispenser's single-handle tensioning system contains structurally distinct components that can be mapped to the separate "pressing member" and "manually adjusted member" limitations of the '009 patent's claim.
- A key factual dispute underlying the willfulness claim will be the nature of Defendant's conduct post-acquisition of Danco. The court will examine whether the evidence demonstrates that Defendant engaged in deliberate copying with knowledge of Plaintiff's patent rights, or if its actions constituted legitimate, independent competition.