Unistar Plastics LLC v. New York Packaging II LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Unistar Plastics, LLC (Louisiana)
  • Defendant: New York Packaging, II, LLC (New York)
  • Plaintiff’s Counsel: Intellectual Property Consulting, L.L.C.
• Case Identification: 2:22-cv-04132, E.D. La., 10/25/2022
• Venue Allegations: Plaintiff Unistar asserts that venue is proper in the Eastern District of Louisiana based on Defendant NYP’s business activities directed at Louisiana and the fact that Unistar is a Louisiana company. The complaint also alleges that a prior lawsuit filed by NYP in the District of Columbia was brought in an improper venue.
• Core Dispute: Plaintiff seeks a declaratory judgment that its method of manufacturing plastic produce bags does not infringe Defendant's patent, and that the patent is invalid.
• Technical Context: The lawsuit concerns the manufacturing process for headerless plastic produce bags, specifically methods designed to increase adhesion between bags to cause them to self-open when dispensed from a rack in a retail environment.
• Key Procedural History: The dispute began when Defendant NYP sent a cease-and-desist letter to Plaintiff Unistar on June 28, 2022. Subsequently, on September 9, 2022, NYP filed an infringement lawsuit against Unistar in the U.S. District Court for the District of Columbia. Unistar filed this declaratory judgment action in Louisiana, alleging the D.C. lawsuit was filed in an improper venue and that NYP’s patent is not infringed and is invalid, due in part to Unistar’s own alleged prior public use of the manufacturing method.

Case Timeline

Date	Event
2015-10-01	Priority Date for ’078 Patent
2019-12-24	’078 Patent Issue Date
2022-06-28	NYP sends cease-and-desist letter to Unistar
2022-07-07	Unistar responds to NYP's letter, denying infringement
2022-09-09	NYP files infringement lawsuit against Unistar in D.C.
2022-10-25	Unistar files this Declaratory Judgment Complaint in E.D. La.

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,513,078 - "Method of Manufacturing Headerless Produce Bags with Increased Adhesion" (Issued Dec. 24, 2019)

The Invention Explained

• Problem Addressed: The patent addresses the difficulty and waste associated with dispensing conventional plastic produce bags in retail settings ('078 Patent, col. 1:49-57). Manually opening each bag can be difficult, leading customers to discard bags they cannot open easily or to moisten their fingers, creating unsanitary conditions ('078 Patent, col. 2:13-25).
• The Patented Solution: The invention is a method for manufacturing bags that automatically open the mouth of the succeeding bag when one is pulled from a dispenser rack ('078 Patent, col. 2:34-39). This is achieved by combining two features: first, treating the exterior surface of the plastic film with low-temperature corona discharge plasma to increase its surface energy and adhesion to a specific level (at least 43 Dyne); and second, creating mated recesses or "dimples" in the stacked bags, which further increases the adhesion force between them ('078 Patent, Abstract; col. 6:11-23).
• Technical Importance: This method aims to improve convenience, reduce product waste, and enhance sanitation in the common retail practice of dispensing single-use produce bags ('078 Patent, col. 2:56-65).

Key Claims at a Glance

• The complaint indicates that the two independent claims of the patent, Claims 1 and 9, are at issue (Compl. ¶14).
• Independent Claim 1 recites a method with the following essential steps:
  • Providing first and second continuous web sheets of plastic film.
  • Applying pressure and heat to form heat-sealed sides and a mouth of a headerless plastic bag.
  • Advancing the bag to a plasma treatment station.
  • Treating only the first sheet with plasma to increase its surface energy to at least 43 Dyne, sufficient to cause it to adhere to an adjacent bag.
  • Cutting the bag from the web.
  • Stacking the cut bag onto a second plastic bag.
  • Forming "concurrently" a first pair of "mated recesses" in the first and second sheets of a first bag and a second pair of "mated recesses" in a second plastic bag, where the recesses enhance the mechanical adherence between the bags.
• Independent Claim 9 recites a method with steps that are substantially similar to those of Claim 1, also requiring plasma treatment of a sheet to at least 43 Dyne and the concurrent formation of mated recesses in stacked bags to cause automatic opening upon separation.
• The complaint seeks a declaratory judgment of non-infringement and invalidity for "any valid and enforceable claim" of the patent (Compl. ¶23; Prayer for Relief A, B).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Plaintiff Unistar’s method for manufacturing its plastic produce bags, which are sold under the name "fruits & veggies more matters" (Compl. ¶11, ¶13).

Functionality and Market Context

• The complaint asserts that the ’078 Patent covers a method of manufacturing, not the bag itself (Compl. ¶13). It further alleges that Unistar’s manufacturing method is "vastly different from the manufacturing method claimed" and does not practice "several limitations included in the two independent claims" (Compl. ¶14). However, the complaint does not provide specific technical details about how Unistar's manufacturing process operates, as its purpose is to deny, rather than allege, infringement. The complaint also alleges that Unistar has been using its method since "well before the October 1, 2015 filing date" of the patent, positioning this prior activity as a basis for invalidity (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim-chart analysis. As a declaratory judgment action for non-infringement, the complaint makes broad assertions that Unistar's method does not practice the claimed invention but does not specify which claim limitations are allegedly not met (Compl. ¶14). The core narrative theory is that Unistar's method is fundamentally different from the one patented by NYP. No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Factual Questions: The central dispute appears to be factual: does Unistar's manufacturing process include the specific step of treating a plastic sheet with corona discharge plasma to raise its surface energy to "at least 43 Dyne"? Does its process involve "forming concurrently... mated recesses" in stacked bags in the manner required by the claims? The case will likely require expert testimony and discovery into the precise operations of Unistar's manufacturing line.
  • Scope Questions: A potential issue is the scope of the patent itself. The complaint emphasizes that the patent covers a method, not the resulting product (Compl. ¶13). This distinction is legally significant, as it means infringement can only occur by practicing the claimed manufacturing steps, not by merely selling or using the final bags. This raises the question of why NYP allegedly contacted Unistar's customers, who are end-users and not manufacturers.

V. Key Claim Terms for Construction

• The Term: "forming concurrently" (Claim 1)

• Context and Importance: This term appears in the final step of claim 1, which requires forming mated recesses in a first bag and a second bag "concurrently." The timing of this step relative to the stacking and cutting of the bags may be critical. Practitioners may focus on this term because the feasibility and definition of forming recesses in two separate, stacked bags at the exact same moment could be a point of technical and legal debate.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification does not appear to provide an explicit definition of "concurrently," which may support an argument for giving the term its plain and ordinary meaning, potentially allowing for actions that happen in very quick succession as part of a single operational step.
  • Evidence for a Narrower Interpretation: The claim language recites forming recesses in a "first plastic bag" and a "second plastic bag" using a "second platen" ('078 Patent, col. 8:26-34). This could be interpreted to require that two fully formed and distinct bags are already stacked when a single platen acts on them simultaneously, a potentially narrow and specific sequence of events.

• The Term: "mated recesses" (Claim 1)

• Context and Importance: The claims rely on these "mated recesses," in combination with plasma treatment, to create the adhesive force for the auto-opening feature. The physical characteristics of what constitutes a "recess" and when two such recesses are considered "mated" will be central to the infringement analysis.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent describes the recesses as "dimples" ('078 Patent, col. 6:12). An argument could be made that any corresponding indentations that increase adhesion between bags meet this limitation, regardless of their precise shape or depth.
  • Evidence for a Narrower Interpretation: The patent specifies that the recesses are formed by "blunt-tipped tools" that do not pierce the bag and are "aligned" ('078 Patent, col. 6:11-16, col. 6:64-66). Figure 1 shows distinct tools (34) for this purpose. This may support a narrower construction requiring specific, non-perforating, and physically aligned indentations.

VI. Other Allegations

• Indirect Infringement: The prayer for relief seeks a declaration of non-infringement for both direct and indirect infringement (Compl., Prayer for Relief A). The complaint argues that since Unistar's customers are not manufacturers, they could not be direct infringers of the method patent, thereby questioning any potential basis for an indirect infringement claim against Unistar for selling bags to them (Compl. ¶13).
• Willful Infringement: This being a declaratory judgment action by the accused infringer, there is no allegation of willfulness. Instead, Unistar alleges that NYP's actions constitute an "exceptional" case warranting an award of attorneys' fees under 35 U.S.C. § 285 (Compl. ¶25, ¶29). The basis for this claim is the allegation that NYP "knew, or should have known" that no valid and enforceable claim of the patent was infringed and that the patent claims were invalid prior to sending the cease-and-desist letter and filing its own lawsuit (Compl. ¶25, ¶29).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A central issue will be one of factual infringement: Can NYP demonstrate that Unistar’s manufacturing process incorporates every step of the asserted method claims, particularly the specific plasma treatment threshold of "at least 43 Dyne" and the "concurrent" formation of "mated recesses"? Discovery into the technical specifics of Unistar's process will be determinative.
2. A second core issue will be one of validity based on prior use: Can Unistar provide clear and convincing evidence that its own manufacturing method was in public use before the patent’s October 1, 2015 priority date, and does that prior method contain all the limitations of the asserted claims, sufficient to render the ’078 Patent invalid under 35 U.S.C. § 102?
3. Finally, the case presents a question of proper conduct and venue: Did NYP engage in improper litigation tactics by filing suit in the District of Columbia, as alleged by Unistar, and does its pursuit of infringement claims against Unistar and its customers rise to the level of an "exceptional case" that would justify an award of attorneys' fees?