DCT
3:10-cv-00014
Berry Plastics Corp v. Intertape Polymer Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Berry Plastics Corporation (Delaware)
- Defendant: Intertape Polymer Corporation (Delaware)
- Plaintiff’s Counsel: Rudolph, Fine, Porter & Johnson, LLP; Barnes & Thornburg LLP
- Case Identification: 3:10-cv-00014, S.D. Ind., 01/22/2010
- Venue Allegations: Venue is alleged to be proper in the Southern District of Indiana, where Plaintiff Berry Plastics has its principal place of business.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's U.S. Patent No. 7,476,416 is invalid and unenforceable due to alleged inequitable conduct, derivation of the invention from a third party, and failure to meet statutory patentability requirements.
- Technical Context: The technology concerns a process for manufacturing pressure-sensitive adhesives using a specialized piece of industrial equipment known as a planetary roller extruder.
- Key Procedural History: The action was precipitated by a notice letter from Defendant Intertape to Plaintiff Berry Plastics, asserting the patent-in-suit and demanding that Berry Plastics take actions to avoid infringement. The complaint alleges that this letter created a case of actual controversy, providing jurisdiction for this declaratory judgment action. The core of the complaint’s invalidity and unenforceability claims centers on events at a 2003 trade exposition, where the patent’s inventors allegedly learned of the claimed technology from a third-party equipment manufacturer, Entex.
Case Timeline
| Date | Event |
|---|---|
| 2003-06 | National Plastics Expo 2003; Entex allegedly discloses invention |
| 2003-11-24 | Earliest Priority Date (Provisional Application No. 60/524,505 filed) |
| 2004-11-24 | Non-provisional application for '416 Patent filed |
| 2005-04-14 | '416 Patent inventors file declarations acknowledging duty of disclosure |
| 2009-01-13 | U.S. Patent No. 7,476,416 issues |
| 2009-11-12 | Intertape sends notice letter to Berry Plastics |
| 2010-01-22 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,476,416 - "Process for preparing adhesive using planetary extruder" (Issued Jan. 13, 2009)
The Invention Explained
- Problem Addressed: The patent’s background describes the difficulty in producing pressure-sensitive adhesives, which are blends of elastomers, resins, and other additives ('416 Patent, col. 1:30-38). Traditional planetary roll extruders (PREs) were typically used for processing thermoplastics like PVC, not for the mastication (mechanical breakdown) and compounding of non-thermoplastic elastomers required for certain adhesives ('416 Patent, col. 1:39-48).
- The Patented Solution: The patent discloses a process for continuously preparing an adhesive using a modified PRE. The process involves introducing raw materials, including a non-thermoplastic elastomer, into the extruder and mixing them in a compounding section that contains specific "double transversal mixing spindles" with "back-cut helical flights" ('416 Patent, Abstract). These specialized spindles, illustrated in the patent’s Figure 2, are described as slowing the material's transit through the extruder, which increases residence time and improves mixing and mastication of the elastomer ('416 Patent, col. 4:36-40).
- Technical Importance: The described process purports to enable a continuous, low-temperature method for manufacturing self-adhesive compositions from non-thermoplastic elastomers, a task for which prior equipment was not ideally suited ('416 Patent, col. 1:10-18).
Key Claims at a Glance
- The complaint notes the patent contains two independent claims (Compl. ¶38). Independent Claim 1 is representative.
- Essential elements of Independent Claim 1 include:
- introducing primary raw materials comprising a non-thermoplastic elastomer into a feeding section of a planetary roller extruder;
- conveying the primary raw materials to a compounding section;
- mixing the materials in the compounding section, which comprises a main spindle intermeshed with a plurality of planetary spindles, wherein "at least one of the planetary spindles is a double transversal mixing spindle comprising a plurality of back-cut helical flights";
- producing a homogeneous adhesive composition; and
- applying the adhesive composition to a web-form material.
- The complaint seeks a declaration of invalidity and unenforceability for "one or more claims" of the patent without specifying further (Compl. ¶¶ 39-44).
III. The Accused Instrumentality
Product Identification
- This is a declaratory judgment action, so there is no specific accused product manufactured by the plaintiff. The "instrumentality" giving rise to the dispute is Berry Plastics' own planned manufacture and sale of adhesive tapes, for which it has allegedly made substantial capital investments (Compl. ¶¶ 9, 10).
Functionality and Market Context
- The complaint alleges that Intertape's November 12, 2009 notice letter created an actual and immediate controversy by requiring Berry Plastics "to take actions to avoid infringing Intertape's patent rights" with respect to its planned commercial production (Compl. ¶8). Berry Plastics and Intertape are described as direct competitors in the business of manufacturing and selling adhesive tapes (Compl. ¶¶ 6, 7). The complaint seeks to clear the way for its planned commercial activities by having the '416 Patent declared invalid and unenforceable (Compl. ¶1).
IV. Analysis of Invalidity and Unenforceability Allegations
The complaint does not allege infringement. Instead, it alleges that the '416 Patent is invalid and unenforceable based on the patentee's conduct before the U.S. Patent and Trademark Office (USPTO). The central allegations are summarized below.
| Allegation Basis | Factual Allegations from Complaint | Complaint Citation | Patent Citation |
|---|---|---|---|
| Inequitable Conduct: Withholding Material Prior Art | At the June 2003 National Plastics Expo, Entex GmbH allegedly displayed and distributed brochures for a planetary extruder with "double transversal mixing spindles with back cut helical flights," the key technology of the patent. | ¶¶13, 27 | col. 4:50-52 |
| Inequitable Conduct: Withholding Material Information | Entex personnel allegedly explained to Intertape's named inventors how to use the extruder to process "non-thermoplastic materials to form an adhesive," the core purpose of the claimed process. | ¶¶16, 27 | col. 2:31-34 |
| Inequitable Conduct: Intent to Mislead | The complaint alleges that the inventors and their counsel knew this information from Entex was material to patentability but "intentionally withheld" it from the USPTO with the "intent to mislead," failing to disclose it in any of the five filed Information Disclosure Statements. | ¶¶28, 30-31 | N/A |
| Invalidity: Derivation & Incorrect Inventorship (35 U.S.C. § 102(f)) | The complaint alleges that the named inventors did not invent the subject matter but derived it from Entex, which had provided the information "prior to the filing date of the Provisional Application." | ¶¶32, 41 | N/A |
| Invalidity: Incorrect Inventorship (35 U.S.C. § 256) | Based on the alleged derivation, the complaint claims the patent is invalid for omitting Entex personnel as inventors "with deceptive intent." | ¶¶35, 43 | N/A |
| Visual Evidence Link | A figure in the Entex brochure allegedly provided to the inventors is described as being "identical to the image" of the spindle assembly that became Figure 1 of the patent's priority Provisional Application. | ¶¶15, 18 | N/A |
- Identified Points of Contention:
- Factual & Evidentiary Questions: A primary factual dispute will concern what exactly was disclosed in the Entex brochure and in conversations at the Expo 2003. The complaint's allegation that an image from the Entex brochure is identical to a figure in the patent's provisional application (Compl. ¶18) suggests this visual evidence will be a key point of contention.
- Intent Question: A central question for the inequitable conduct claim will be whether Berry Plastics can prove, by clear and convincing evidence, that Intertape and its counsel acted with a specific "intent to mislead the USPTO" when they failed to disclose the Entex materials (Compl. ¶31).
V. Key Claim Terms for Construction
- The Term: "double transversal mixing spindle comprising a plurality of back-cut helical flights"
- Context and Importance: This term describes the central technological component that distinguishes the claimed process from prior art methods. Practitioners may focus on this term because the complaint alleges that this exact component, and the process of using it to make adhesives from non-thermoplastic materials, was disclosed to the inventors by Entex prior to the invention date (Compl. ¶¶13, 16, 32). The interpretation of this term in light of the alleged Entex prior art will be critical to the invalidity analyses for anticipation (§ 102) and obviousness (§ 103).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves do not limit the spindle to a specific design beyond having "back-cut helical flights" ('416 Patent, col. 14:24-25). The specification describes the function of these spindles as increasing residence time and improving mixing, which could arguably cover a range of spindle designs that achieve this effect ('416 Patent, col. 4:36-38).
- Evidence for a Narrower Interpretation: The specification contains a statement that "Planetary roller extruders having double transversal-spindles 28 are commercially available from Rust-Mitschke-Entex" ('416 Patent, col. 4:50-52). This statement, cited in the complaint (Compl. ¶29), could be used to argue that the patent is directed to a process using a specific, known, off-the-shelf component, potentially narrowing the scope of novelty to the specific application of that component.
VI. Other Allegations
- Inequitable Conduct: The complaint alleges that the patent is unenforceable due to inequitable conduct (Compl., Count I). The basis is the alleged intentional withholding of material information from the USPTO, specifically the Entex brochure and the related technical discussions at the Expo 2003, which allegedly occurred before the patent's priority date (Compl. ¶¶ 27, 28, 31). The complaint alleges the inventors and their counsel knew this information was material but failed to disclose it in any of the five Information Disclosure Statements filed during prosecution (Compl. ¶¶ 26, 28).
- Incorrect Inventorship and Derivation: The complaint separately alleges the patent is invalid because the named inventors at Intertape derived the invention from personnel at Entex (Compl. ¶¶ 32, 41) and that the patent was obtained with "deceptive intent" by listing Intertape personnel as inventors while excluding Entex personnel (Compl. ¶¶ 35, 43). This forms the basis for invalidity claims under 35 U.S.C. §§ 102(f) and 256.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action appears to hinge on three central questions for the court:
A core question of derivation and inventorship: Can Berry Plastics prove with corroborating evidence that the named Intertape inventors derived the complete, claimed process—including the use of specific spindles for non-thermoplastic elastomers—from Entex personnel, thereby invalidating the patent under pre-AIA 35 U.S.C. § 102(f)?
A dispositive question of materiality and intent: Assuming the Entex disclosure is found to be material prior art, can Berry Plastics establish by clear and convincing evidence that Intertape's inventors and/or their counsel failed to disclose it to the USPTO with a specific intent to deceive, which would render the patent unenforceable for inequitable conduct?
A fallback question of patentability: Independent of intent, does the evidence of the Entex brochure and related discussions at the 2003 Expo constitute a "printed publication" or "public use" that anticipates the claimed invention under 35 U.S.C. § 102 or renders it obvious under § 103?