DCT

1:20-cv-02440

Paragon Films, Inc. v

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-02440, W.D. Tenn., 08/14/2020
  • Venue Allegations: Venue is alleged to be proper based on Defendant maintaining an established place of business, a manufacturing facility, within the district and having committed alleged acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s FORTITUDE brand of stretch film, and the apparatus and methods used for its manufacture, infringe four patents related to the in-process creation of stretch film with folded, reinforced edges.
  • Technical Context: The technology operates in the industrial packaging sector, specifically for high-performance stretch films used to secure pallet loads, where film strength, tear resistance, and ease of use are key commercial drivers.
  • Key Procedural History: The complaint alleges that Defendant toured Plaintiff’s manufacturing facilities in August 2016 in connection with a potential acquisition. Plaintiff alleges it provided Defendant with actual notice of the patents-in-suit and the alleged infringement in July 2018. Subsequent to the filing of this complaint, ex parte reexamination proceedings at the USPTO resulted in the cancellation of all asserted claims for three of the four patents-in-suit ('356', '349', '829') and amendment of the claims for the '298' patent, a development that fundamentally alters the scope of the dispute.

Case Timeline

Date Event
2008-07-21 Priority Date for '356, '298, '349, and '829 Patents
2012-01-24 U.S. Patent No. 8,100,356 Issued
2012-07-17 U.S. Patent No. 8,221,298 Issued
2013-07-02 U.S. Patent No. 8,475,349 Issued
2014-07-15 U.S. Patent No. 8,777,829 Issued
2016-08-31 Defendant allegedly tours Plaintiff's facilities
2018-07-XX Plaintiff allegedly provides Defendant with notice of patents
2020-08-14 Complaint Filed
2024-03-18 Reexamination Certificate for '298 Patent Issued (Amended)
2024-04-18 Reexamination Certificate for '829 Patent Issued (Cancelled)
2024-04-22 Reexamination Certificate for '349 Patent Issued (Cancelled)
2024-04-29 Reexamination Certificate for '356 Patent Issued (Cancelled)

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

U.S. Patent No. 8,100,356 - Apparatus and Method for Winding Film onto a Film Roll, Issued January 24, 2012

  • The Invention Explained:
    • Problem Addressed: The patent addresses the difficulty of winding stretch film that has folded (and thus thickened) edges ('356 Patent, col. 1:59-64). Without a corrective mechanism, these thick edges stack on top of each other, creating hard, raised bands on the film roll that make it unusable and susceptible to damage ('356 Patent, col. 3:26-33). Prior art attempts to oscillate the film to distribute these edges often resulted in uneven, conical rolls ('356 Patent, col. 2:4-7).
    • The Patented Solution: The invention proposes an "in-process" apparatus that combines an oscillating mechanism with a unique winding mechanism to create uniform rolls of film with folded edges ('356 Patent, Abstract). The key component is a "retractable idler roll" that moves away from the main film roll as it increases in diameter, which is designed to maintain a constant "air gap" between the two rolls ('356 Patent, col. 3:49-55; Fig. 4). This controlled air gap helps entrap air between the film layers, making the final roll easier to unwind ('356 Patent, col. 3:1-4).
    • Technical Importance: This technology aimed to solve a known manufacturing challenge by enabling the production of robust, easy-to-use stretch film with reinforced edges in a single, integrated production line ('356 Patent, col. 1:13-18).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶58).
    • Essential elements of claim 1 include:
      • An apparatus for producing a film roll in-process.
      • The apparatus comprises a film with edge folds.
      • An oscillating mechanism that oscillates the film.
      • A winding mechanism with a retractable idler roll that moves away from the film roll as it grows, maintaining an air gap between them.
    • The complaint reserves the right to assert additional claims (Compl. ¶57).

U.S. Patent No. 8,221,298 - Apparatus and Method for Folding Film Edges, Issued July 17, 2012

  • The Invention Explained:
    • Problem Addressed: The patent identifies a need for an efficient, in-process method to fold the edges of stretch film to make it stronger and less prone to tearing ('298 Patent, col. 1:29-39). The patent notes that creating such folds as a secondary, post-production step increases time and cost, and there was a need for a system that could simultaneously fold the edges of multiple film streams slitted from a wider sheet ('298 Patent, col. 1:50-59).
    • The Patented Solution: The invention describes an apparatus positioned within the production line that uses a series of "folding guides" (e.g., rods) placed between two idler rolls ('298 Patent, col. 2:1-5). After a wide sheet of film is slit into narrower sections, these sections pass the folding guides, which separate the sections and cause the newly cut edges to turn under 180 degrees and "spontaneously cling" to the bottom surface of the film due to the film's tension and inherent cling properties ('298 Patent, col. 3:42-48; Fig. 2).
    • Technical Importance: The invention provided a purely mechanical apparatus for creating reinforced edges on multiple film rolls simultaneously as part of an integrated manufacturing process, improving production efficiency ('298 Patent, col. 2:50-62).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶76).
    • Essential elements of claim 1 include:
      • An apparatus for producing folded edges in a film in-process.
      • The apparatus comprises a first idler roll and a second idler roll.
      • A plurality of folding guides positioned between the idler rolls.
      • The folding guides separate adjacent film sections and induce two folds by causing an edge to turn under 180 degrees and spontaneously cling to the film's bottom surface.
    • The complaint reserves the right to assert additional claims (Compl. ¶75).

U.S. Patent No. 8,475,349 - Method for Folding Film Edges

  • Patent Identification: U.S. Patent No. 8,475,349, issued July 2, 2013 (Compl. ¶24-25).
  • Technology Synopsis: This patent claims the method of performing the invention described in the '298 Patent. It recites the in-process steps of providing a slitted film, moving it over a first idler roll, passing it by folding guides to induce 180-degree folds that spontaneously cling to the film, and then moving it over a second idler roll ('349 Patent, Abstract; col. 2:8-19).
  • Asserted Claims: Independent claim 1 (Compl. ¶93).
  • Accused Features: The complaint alleges that Defendant’s method of manufacturing its FORTITUDE film—which allegedly includes in-line slitting, folding using guides, and moving the film over rollers—infringes the claimed method (Compl. ¶94-100).

U.S. Patent No. 8,777,829 - Method for Folding Film Edges

  • Patent Identification: U.S. Patent No. 8,777,829, issued July 15, 2014 (Compl. ¶26-27).
  • Technology Synopsis: This patent claims a method very similar to the '349 Patent. It describes the in-process method of folding film edges by separating film sections with folding guides positioned between two idler rolls, thereby causing the edges to turn under and cling to the film surface ('829 Patent, Abstract; col. 2:4-14).
  • Asserted Claims: Independent claim 1 (Compl. ¶112).
  • Accused Features: The complaint alleges that Defendant’s manufacturing process for FORTITUDE film, specifically the steps of using folding guides between rollers to create in-line folded edges, infringes the claimed method (Compl. ¶113-118).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are Defendant's "FORTITUDE" brand of hand wrap stretch film and the apparatus and methods used in its manufacture (Compl. ¶29, ¶41).
  • Functionality and Market Context: The FORTITUDE product is marketed as an "ultra performance hybrid hand film" that directly competes with Plaintiff's TORQUE® product (Compl. ¶30-31). The complaint alleges that the product possesses features central to the patents-in-suit, including "reinforced edges, air entrapment and oscillating wind" (Compl. ¶33). Plaintiff alleges that its own testing of the FORTITUDE product revealed physical characteristics, such as folded edges of approximately 0.5" and manufacturing oscillation patterns of 0.5" to 0.75", that are indicative of infringement (Compl. ¶67, ¶103). The complaint further alleges that tested rolls show "jagged or sawtooth cuts," which it claims are evidence of an "in-line winder" and thus an in-process manufacturing method (Compl. ¶84).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'356 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An apparatus for producing a film roll in-process... The machines used to make FORTITUDE products are allegedly designed to produce the film roll "in-line." ¶60 col. 2:16-17
...the apparatus comprising a film with edge folds, each edge fold having a width; The FORTITUDE films are alleged to include edge folds that have a measurable width. ¶61 col. 2:18-19
...an oscillating mechanism that oscillates the film for an oscillation rate at an oscillation distance; The manufacturing machines allegedly include a mechanism that oscillates the film. Plaintiff claims testing showed an oscillation of 0.5" to 0.75". ¶62, ¶67 col. 2:19-20
...and a winding mechanism that receives the film from the oscillating mechanism, comprising a retractable idler roll that is parallel to a film roll and moves vertically away...at a separation rate that maintains an air gap between the retractable idler roll and the film roll... Based on information and belief, the machines allegedly include a winding mechanism with a retractable idler roll that moves away from the film roll to maintain an air gap as the roll is wound. ¶63, ¶64 col. 2:20-27

'298 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An apparatus for producing folded edges in a film in-process... The machines used to manufacture FORTITUDE products are allegedly designed to produce the film "in-line." ¶78 col. 2:50-53
...the apparatus comprising: a first idler roll; a second idler roll separated from the first idler roll by a first distance; The machines allegedly include a first idler roll and a second idler roll separated from each other by a distance. ¶79, ¶80 col. 2:1-3
...and a plurality of folding guides that are positioned between the first idler roll and the second idler roll... The machines allegedly use folding guides located between the two idler rolls. ¶81 col. 2:3-5
...wherein each folding guide separates adjacent sections of film and induces two folds by causing an edge of each section of film to turn under 180 degrees and spontaneously cling to a bottom surface of the film... The folding guides allegedly separate the film into sections and induce folds by causing the edges to turn under and cling to the bottom of the film. ¶81 col. 3:45-48
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint acknowledges that Plaintiff lacks direct access to Defendant's manufacturing equipment and relies on "reverse engineer[ing]" the final product to infer the process used (Compl. ¶44, ¶84). A primary point of contention will be whether Plaintiff can meet its burden of proof to show that Defendant’s unseen apparatus contains the specific structures (e.g., a "retractable idler roll," "folding guides") and performs the specific functions (e.g., "maintains an air gap," causes film to "spontaneously cling") required by the claims.
    • Scope Questions: The meaning of "in-process" is central to all asserted patents. The dispute may turn on whether Defendant's manufacturing line constitutes a single, integrated "in-process" system as contemplated by the patents, or if it involves distinct stages that could place it outside the scope of the claims.

V. Key Claim Terms for Construction

The Term: "in-process"

  • Context and Importance: This term appears in the preamble of the asserted independent claims of all four patents and is foundational to the infringement theory. Plaintiff alleges Defendant's manufacturing is an "in-line" process (Compl. ¶60, ¶78), but admits this is based on inference (Compl. ¶44). Practitioners may focus on this term because if Defendant's method involves distinct, non-integrated folding or winding steps, it may argue its process is not "in-process" as required by the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specifications state that all steps "may be performed along a single production line" ('356 Patent, col. 3:12-13; '298 Patent, col. 3:6-7), which could support a construction covering any sequence of operations that occurs on one continuous piece of equipment.
    • Evidence for a Narrower Interpretation: The background sections distinguish the invention from prior art where folding was "performed post-production in a separate and secondary process" ('298 Patent, col. 1:51-54). This language could support a narrower construction requiring a high degree of integration, where film creation and finishing are inextricably linked.

The Term: "spontaneously cling"

  • Context and Importance: This term in claim 1 of the '298, '349, and '829 patents describes the mechanism of adhesion for the folded edge. Its construction is critical because the infringement allegation is based on the belief that Defendant's process uses guides to induce this specific type of fold (Compl. ¶81, ¶99). If Defendant uses an active mechanism to secure the fold (e.g., pressure, heat, adhesive), it may not "spontaneously cling."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The '298 patent specification states that "the cling agent and the tension of the film... may cause the edge folds... to form spontaneously" ('298 Patent, col. 3:45-47). This suggests the term refers to self-adhesion arising from the film's inherent properties.
    • Evidence for a Narrower Interpretation: The specification also discloses an optional "nip roll assembly" that can "aid in pressing the folds... into the film" ('298 Patent, col. 4:32-35). An argument could be made that "spontaneously" must mean without such external pressing, and any process that uses a similar pressing step would not meet the limitation.

VI. Other Allegations

  • Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement. The factual allegations are centered on Defendant's own acts of making and using the accused apparatus and methods.
  • Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge. It states that Plaintiff provided Defendant with "actual notice" of the patents-in-suit and its belief of infringement in July 2018, over two years before filing suit (Compl. ¶53). The complaint alleges that Defendant's infringement continued after receiving this notice, making it willful and deliberate (Compl. ¶55, ¶72). The allegation that Defendant toured Plaintiff’s facilities in 2016 may also be used to support knowledge (Compl. ¶34).

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

  • A determinative issue is one of claim viability: Ex parte reexamination certificates issued in 2024, subsequent to the filing of the complaint, cancelled all asserted claims of the '356, '349, and '829 patents. The central question for the court will be what, if any, of this case survives with respect to those patents. For the '298 patent, where claims were amended, the dispute will likely involve the doctrine of intervening rights and whether the infringement allegations can be maintained against the amended claims.
  • A key evidentiary question will be one of process reconstruction: Can Plaintiff, through discovery and expert testimony, successfully prove that Defendant’s manufacturing process—which Plaintiff has not directly observed—performs the specific mechanical functions (e.g., maintaining a constant "air gap," causing a "spontaneously cling[ing]" fold) required by the surviving patent claims?
  • Should the case proceed on the amended '298 patent claims, a core issue will be one of definitional scope: How will the court construe the term "spontaneously cling"? The outcome may depend on whether the term is interpreted to mean adhesion from only the film's inherent properties, or if it can encompass processes that use mechanical aids like pressure rollers to secure the fold.