DCT
5:24-cv-00010
New York Packaging II LLC v. Merchants Distributors LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: New York Packaging, II, LLC (New York)
- Defendant: Merchants Distributors, LLC (North Carolina) and Lowes Foods, LLC (North Carolina)
- Plaintiff’s Counsel: Parker Poe Adams & Bernstein LLP
- Case Identification: 5:24-cv-10, W.D.N.C., 01/12/2024
- Venue Allegations: Venue is alleged to be proper as both defendants are North Carolina companies with regular and established places of business within the judicial district.
- Core Dispute: Plaintiff alleges that headerless produce bags sold and distributed by Defendants infringe a patent related to plastic bag construction featuring increased surface adhesion and mechanical recesses for automatic opening.
- Technical Context: The technology concerns disposable plastic bags, such as those used for produce in grocery stores, that are designed to be dispensed from a rack one at a time, with the removal of one bag causing the next to open automatically.
- Key Procedural History: The complaint alleges that Plaintiff provided notice of its patent rights to both Defendants in or around July 2022. It also notes that Plaintiff has filed a separate lawsuit against the manufacturer of the accused bags, Unistar Plastics, LLC, in the Southern District of Texas.
Case Timeline
| Date | Event |
|---|---|
| 2015-10-01 | Earliest Priority Date for Asserted Patent |
| 2016-01-01 | Plaintiff allegedly introduced patented bags to market |
| 2019-12-24 | U.S. Patent No. 10,513,078, a related patent, was issued |
| 2022-01-01 | Competitor Unistar Plastics allegedly introduced infringing bags |
| 2022-07-01 | Defendants allegedly received notice of infringement from Plaintiff |
| 2022-09-13 | U.S. Patent No. 11,440,267 ('267 Patent) was issued |
| 2024-01-12 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,440,267 - Method of Manufacturing Headerless Produce Bags with Increased Adhesion, issued September 13, 2022
The Invention Explained
- Problem Addressed: The patent describes issues with conventional produce bags, noting that they are often difficult to open manually, leading to waste, potential unsanitary conditions from consumers moistening their fingers, and safety hazards from discarded bags on the floor (’267 Patent, col. 2:20-33).
- The Patented Solution: The invention is a "headerless" plastic bag designed so that when one bag is pulled from a stack on a dispensing rack, the next bag in the stack is automatically opened. This is achieved through a combination of two features: (1) treating an exterior surface of the bag with low-temperature corona discharge plasma to increase its surface charge to at least 43 Dyne, creating an adhesive force; and (2) forming "mated recesses" or dimples in the bags, which provide a mechanical adherence between adjacent bags (’267 Patent, Abstract; col. 5:12-24; col. 6:11-24).
- Technical Importance: The claimed invention seeks to enhance consumer convenience and reduce product waste in retail settings by eliminating the need for users to manually pry open individual bags (’267 Patent, col. 2:36-44).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 1 and 4, and dependent claim 2 (Compl. ¶¶24, 33).
- Independent Claim 1 recites the essential elements of the bag itself, including:
- A headerless plastic bag formed from a first and second sheet
- The first sheet has an exterior surface with a surface charge magnitude of at least 43 Dyne
- A first pair of "mated recesses" configured to cause releasable mechanical adherence
- The adherence from the recesses and the plasma treatment together cause the bag to automatically open upon separation from a second bag
- The sheets define pairs of holes for a dispensing rack
- The mated recesses are disposed "only at positions interposing" the holes and a side edge of the bag
- Independent Claim 4 recites a system comprising a first headerless plastic bag (with features similar to claim 1) and a second headerless plastic bag with a "second pair of recesses configured to mate with" the first pair, which together cause the automatic opening function.
III. The Accused Instrumentality
Product Identification
The accused products are "headerless produce bags" manufactured by Unistar Plastics, LLC, and distributed and sold by MDI and Lowes Foods (Compl. ¶16). The complaint states one such product is identified with the phrase "fruits and veggies more matters" (Compl. ¶17).
Functionality and Market Context
The complaint alleges the accused products are sold in stacks, placed on racks in retail stores, and dispensed by customers one at a time (Compl. ¶16). The functionality is alleged to mirror the patented invention, including having an exterior surface charge of "at least 43 [Dyne]" and "pairs of mated recesses" that together cause a bag to automatically open upon separation from the stack (Compl. ¶21). The complaint further alleges that Defendant MDI was a former customer of the Plaintiff and that the accused products are "direct substitutes" that have displaced sales of Plaintiff's patented bags (Compl. ¶1, p. 2; Compl. ¶16).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'267 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A headerless plastic bag, comprising: a first sheet; a second sheet aligned in facing relation to the first sheet and heat sealed to the first sheet to form the plastic bag... | The accused products are "headerless bags" that have a "first sheet and a second sheet 'aligned in facing relation and heat sealed to form [a] plastic bag.'" | ¶21 | col. 5:1-6 |
| wherein the first sheet comprising an exterior surface with a surface charge magnitude of at least 43 [Dyne]; | The accused bags allegedly have an "exterior surface with a surface charge magnitude of at least 43 [Dyne]." | ¶21 | col. 5:15-18 |
| a first pair of mated recesses disposed in the first sheet and the second sheet, the first pair of mated recesses configured to cause the first sheet to releasably mechanically adhere to the second sheet... | The accused bags allegedly have "pairs of mated recesses which 'cause the first sheet to releasably mechanically adhere to the second sheet...'" | ¶21 | col. 6:11-16 |
| whereby an adherence between the first sheet and the second sheet caused by the pair of recesses, and the adherence caused by the plasma treatment together cause the plastic bag to automatically open upon separation of the plastic bag from a second plastic bag... | The combination of features in the accused bags allegedly "cause the plastic bag to automatically open upon separation." | ¶21 | col. 6:37-44 |
| ...the first pair of mated recesses disposed only at positions interposing the first or second pair of holes and a first side edge of the bag or a second side edge of the bag... | The complaint alleges generally that the accused bags have "pairs of mated recesses" but does not specifically address this positional limitation. | ¶21 | col. 8:19-24 |
- Identified Points of Contention:
- Technical Question: The complaint’s allegation that the accused bags meet the "at least 43 [Dyne]" surface charge threshold is a quantitative claim (Compl. ¶21). A central evidentiary question will be whether discovery and expert testing can substantiate that the accused products meet this specific numerical limitation.
- Scope & Factual Question: Claim 1 requires recesses "disposed only at positions interposing the... holes and a... side edge." The complaint’s allegations do not specify the location of the recesses on the accused bags. A key dispute may arise over both the factual location of the recesses on the accused products and the proper construction of the term "interposing."
V. Key Claim Terms for Construction
- The Term: "mated recesses"
- Context and Importance: This structural feature is identified as a direct contributor to the claimed automatic-opening function, distinct from the plasma treatment. The existence, structure, and function of these "recesses" on the accused product will be a critical point of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to the features as "recesses or 'dimples' 42" created by "blunt" tools that do not pierce the bag, suggesting the term could cover a range of non-perforating indentations (’267 Patent, col. 6:11-16).
- Evidence for a Narrower Interpretation: The claims require the recesses to be "configured to cause" adherence and contribute to the automatic opening function. A party could argue that an indentation only qualifies as a "mated recess" if it is shown to perform this specific function in combination with the plasma treatment, rather than being an incidental manufacturing artifact (’267 Patent, col. 8:12-19). The figures depict distinct, rounded, and deliberately placed features (e.g., ’267 Patent, Fig. 6, item 42).
- The Term: "interposing"
- Context and Importance: This term appears in Claim 1 and defines the specific location of the "mated recesses" relative to the dispenser holes and side edges of the bag. This limitation is highly specific, and whether the accused product meets it will be a focal point of the infringement case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that "interposing" should be given its plain meaning of "between," without requiring a strict geometric alignment on a direct line connecting the two points.
- Evidence for a Narrower Interpretation: The claim uses the restrictive phrase "disposed only at positions interposing..." A party could argue this requires the recess to be located specifically on a line between a hole and the corresponding side edge, as depicted in the patent's figures (e.g., ’267 Patent, Fig. 6). Such a construction would narrow the scope of the claim.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement against MDI for selling the accused bags and against Lowes Foods for providing them to customers on racks (Compl. ¶¶26, 35). The basis for the required knowledge and intent appears to be the pre-suit notice allegedly provided to the Defendants (Compl. ¶¶29, 38).
- Willful Infringement: Willfulness is alleged based on the Defendants' continued infringing conduct after receiving actual notice of Plaintiff's patent rights in or around July 2022. The complaint alleges that Defendants have "no good faith defense" and have "intentionally continued" their infringement (Compl. ¶¶29, 38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical proof: can Plaintiff produce evidence demonstrating that the accused bags not only meet the specific "at least 43 Dyne" surface charge limitation but also that this charge, in combination with the bag's physical recesses, performs the claimed function of causing the next bag to automatically open?
- A core issue will be one of locational scope: how will the court construe the term "disposed only at positions interposing the... holes and a... side edge" from Claim 1? The resolution of this construction, and the factual question of whether the accused bags meet this precise locational requirement, may be dispositive for infringement of that claim.
- A central question for damages will be the Defendants' state of mind: given the allegation of pre-suit notice, the case will likely examine what actions, if any, Defendants took to assess the infringement allegations, which will be central to determining whether their continued sales constitute willful infringement.