DCT
2:24-cv-00735
Brook + Whittle Ltd v. Nestle USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Brook + Whittle LTD (Delaware)
- Defendant: Nestlé USA, Inc. (Delaware); Fuji Seal International, Inc. (Japan)
- Plaintiff’s Counsel: Kirkland & Ellis LLP; Ward, Smith & Hill, PLLC
- Case Identification: 2:24-cv-00735, E.D. Tex., 09/08/2024
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas based on Nestlé’s substantial business, sales of the accused products within the district, and the presence of a "Sales/Regional Office" in Plano, Texas, asserted to be a regular and established place of business. Venue for Fuji Seal, a foreign corporation, is alleged to be proper in any judicial district.
- Core Dispute: Plaintiff alleges that Defendants’ recyclable, light-blocking shrink sleeve labels, used on Nestlé’s Nesquik and other beverage products, infringe a patent related to sustainable packaging technology.
- Technical Context: The technology addresses the challenge of creating product packaging that is both protective (light-blocking) and environmentally sustainable (recyclable), particularly for products in clear polyethylene terephthalate (PET) containers.
- Key Procedural History: The patent-in-suit issued on April 16, 2024, four days after Defendant Nestlé publicly announced its adoption of the allegedly infringing technology on April 12, 2024. The complaint also alleges that Defendant Fuji Seal was aware of the patent at least as of June 13, 2024, due to direct communications with the Plaintiff.
Case Timeline
| Date | Event |
|---|---|
| 2021-05-14 | Earliest Priority Date for U.S. Patent No. 11,961,422 |
| 2024-04-12 | Nestlé announces use of new recyclable, light-blocking labels |
| 2024-04-16 | U.S. Patent No. 11,961,422 issues |
| 2024-06-13 | Alleged date of communications between Plaintiff and Fuji Seal regarding the patent |
| 2024-09-08 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 11,961,422, "Recyclable heat shrink film for recyclable container," issued April 16, 2024 (’422 Patent).
U.S. Patent No. 11,961,422 - "Recyclable heat shrink film for recyclable container"
The Invention Explained
- Problem Addressed: The patent’s background section identifies a market need for packaging that protects light-sensitive products (e.g., dairy, nutraceuticals) without compromising recyclability. Traditional solutions, such as using colored PET bottles, contaminate the clear PET recycling stream, leading to valuable materials being sent to landfills. (Compl., Ex. A, ’422 Patent, col. 1:11-32).
- The Patented Solution: The invention is a multi-layer shrink label designed to be applied to a standard clear (and thus highly recyclable) PET container. The label itself is made from a recyclable PET film and includes a specialized light-blocking layer that prevents light from degrading the container's contents. Crucially, the patent describes that the inks and coatings of the label are formulated to wash off during the caustic wash stage of the PET recycling process, allowing both the clear bottle and the clear label film to be recovered and reused as pure PET resin. (Compl., Ex. A, ’422 Patent, Abstract; col. 7:14-34).
- Technical Importance: This technology aims to resolve a core tension in the consumer-packaged-goods industry between extending product shelf life and meeting sustainability goals for a circular economy. (Compl., Ex. A, ’422 Patent, col. 1:11-21).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 19. (Compl. ¶40).
- Independent Claim 1 requires:
- A recyclable shrink label;
- A heat shrink film made of polyethylene terephthalate (PET) with a specified thickness (15-100 µm) and having a first and second surface;
- A light blocking layer adjacent to the first surface, constructed to block at least 80% of light in a specified wavelength range (200-900 nm);
- The light blocking component must comprise a particulate (0.1-100 µm) made of metal, metal oxide, reflective pigment, carbon black, mica, or a combination; and
- The entire label must be recyclable with a PET container.
- Independent Claim 19 requires:
- A recyclable shrink label;
- A heat shrink film made of PET with specified thickness and surfaces (identical to claim 1);
- A light blocking layer adjacent to the first surface, constructed to block at least 80% of light in a specified wavelength range (identical to claim 1);
- A high opacity layer comprising a white pigment; and
- The entire label must be recyclable with a PET container.
- The complaint reserves the right to assert additional claims. (Compl. ¶42).
III. The Accused Instrumentality
Product Identification
- The accused products are Nestlé's "recyclable shrink sleeve label" used on its ready-to-drink Nesquik flavored milk products, and potentially similar labels on other Nestlé product lines such as Coffee mate and Nestlé Sensations. (Compl. ¶36).
Functionality and Market Context
- The complaint alleges the accused labels are shrink sleeves made from "crystallized PET" and feature a "light-blocking print technology." (Compl. ¶¶ 45, 48). According to Nestlé's public statements cited in the complaint, the labels are designed to protect light-sensitive contents like vitamins while enabling the "entire package, including cap, bottle and shrink sleeve" to be recycled together in the U.S. recycling stream, thereby creating a "circular economy for packaging." (Compl. ¶¶ 49, 52). A promotional video screenshot shows the label being applied to a bottle, identifying its "inner surface" and "outer surface." (Compl. ¶46, Ex. J at 0:36).
IV. Analysis of Infringement Allegations
U.S. Patent No. 11,961,422 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a heat shrink film comprising polyethylene terephthalate (PET) and having a first surface and a second surface opposite of the first surface, the heat shrink film having a thickness from 15 µm to 100 µm | The accused products are described as a "recyclable shrink sleeve label" made from "crystallized PET" with an "inner surface" and "outer surface." The complaint alleges on information and belief that the thickness is within the claimed range. | ¶¶45, 46 | col. 6:50-54 |
| a light blocking layer disposed adjacent the first surface and comprising a light blocking component, the light blocking layer being constructed for the recyclable shrink label to block at least 80% of incident light having wavelengths in a range of 200 nm to 900 nm | The accused labels are made with "light-blocking print technology" to protect product quality. A screenshot identifies a "light-blocking layer." The complaint alleges on information and belief that it blocks at least 80% of light in the specified range. | ¶¶47-49 | col. 13:24-31 |
| wherein the light blocking component comprises a particulate having a particle size of 0.1 µm to 100 µm, wherein the particulate comprises metal, metal oxide, a reflective pigment, carbon black, mica, or a combination thereof | The accused labels are alleged to achieve light blocking via "light blocking inks." The complaint alleges on information and belief that these inks contain metals and/or reflective pigments of the claimed particle size. | ¶50 | col. 13:48-53 |
| wherein the recyclable shrink label is recyclable with a PET container | Nestlé is quoted as stating the innovation allows "the bottle and sleeve to be recycled together," enabling consumers to "toss the entire packaging into the recycle bin." | ¶¶51, 52 | col. 14:18-19 |
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [Elements common with Claim 1] | [Allegations as described above] | ¶55 | col. 19:20-47 |
| a high opacity layer comprising a white pigment | A screenshot from a promotional video is alleged to depict this component on the accused label, which appears to have a distinct white layer. | ¶56 | col. 19:43-45 |
- Identified Points of Contention:
- Technical Question: The complaint alleges that the accused label meets the quantitative limitation of blocking "at least 80% of incident light" across a wide spectrum (200 nm to 900 nm) based on Nestlé's general marketing claims about "light-blocking" properties and on "information and belief." (Compl. ¶49). A central factual dispute will likely be whether the accused product actually meets this specific performance threshold, which would require technical testing and discovery.
- Technical Question: Similarly, the allegation that the accused label's "light blocking inks" contain the specific particulate materials (metal, metal oxide, etc.) recited in Claim 1 rests on "information and belief." (Compl. ¶50). The actual chemical composition of the inks will be a key factual question.
- Scope Question: Claims 1 and 19 require the "light blocking layer" to be "disposed adjacent the first surface" (the surface facing the container). The patent's figures and text describe various layering configurations. (Compl., Ex. A, ’422 Patent, FIGS. 1A-1E, col. 8:50-57). The interpretation of "adjacent" and whether it permits intervening layers (such as printed graphics or opacity layers) may become a critical claim construction issue. A screenshot from a promotional video identifies a "light-blocking layer" on the label. (Compl. ¶47, Ex. J at 0:42).
V. Key Claim Terms for Construction
The Term: "recyclable with a PET container"
Context and Importance: This limitation defines the primary functional benefit of the invention but may be susceptible to an indefiniteness challenge. The parties will dispute what objective standard governs whether a product is "recyclable." Practitioners may focus on this term because its construction could determine whether the claim is valid and infringed, as "recyclability" can depend on external factors like the capabilities of municipal recycling facilities.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests that the standard is compatibility with established industry protocols, stating the labels can meet the "Association for Plastic Recyclers (APR) Critical Guidance Protocol for Clear PET Articles with Labels and Closures." (Compl., Ex. A, ’422 Patent, col. 11:33-41). This could support an argument that the term has a clear, ascertainable meaning within the relevant industry.
- Evidence for a Narrower Interpretation: A defendant might argue that because the patent does not explicitly define a specific test or metric for "recyclable," the term is fatally ambiguous and depends on the subjective and variable capabilities of third-party recyclers. The claims themselves do not incorporate the APR standard by reference, which could support an argument that the term should be given its plain meaning, which may be considered indefinite.
The Term: "disposed adjacent the first surface"
Context and Importance: The physical arrangement of the label's layers is central to the claims. Whether the light-blocking layer must be in direct contact with the shrink film's inner surface or can be separated by other layers (e.g., graphics) will be a key infringement question. A screenshot shows the inner and outer surfaces of the label being handled. (Compl. ¶46, Ex. J at 0:36).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly distinguishes between "adjacent" and "immediately adjacent," suggesting "adjacent" does not require direct contact. ('422 Patent, col. 8:50-57). Furthermore, several figures depict embodiments where an indicia or opacity layer is positioned between the shrink film and the light-blocking layer, yet the patent describes these configurations as falling within the invention. ('422 Patent, FIGS. 1B, 1C).
- Evidence for a Narrower Interpretation: A defendant could argue that the plain language of the claim, which recites only the shrink film and the light-blocking layer, implies a direct or at least very close relationship. They might argue the embodiments with intervening layers are directed to unclaimed subject matter or dependent claims not asserted here.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement by Nestlé’s customers and Fuji Seal. The basis for inducement includes Nestlé's marketing materials and advertisements that instruct consumers to recycle the entire package, allegedly causing end-users to infringe. (Compl. ¶¶ 62-63). It also alleges Nestlé instructs Fuji Seal to manufacture the infringing labels. (Compl. ¶64). Contributory infringement is also alleged, asserting the labels are a material part of the invention and not a staple article of commerce suitable for substantial non-infringing use. (Compl. ¶¶67-68).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the ’422 Patent. The complaint pleads that Nestlé became aware of the patent around its issuance date of April 16, 2024, and that Fuji Seal was made aware through direct communications with Plaintiff on or about June 13, 2024. (Compl. ¶57). The allegation is that Defendants continued to infringe despite this knowledge. (Compl. ¶71).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can the Plaintiff, through discovery, demonstrate that the accused Nesquik labels meet the specific, quantitative performance metrics of the claims—namely, blocking "at least 80% of incident light" in the 200-900 nm range and containing the specific particulate materials required by Claim 1? The complaint currently relies on marketing statements and "information and belief" for these crucial technical elements.
- The case may also turn on a question of claim construction and scope: Will the court interpret the term "recyclable with a PET container" as having a clear, objective meaning based on industry standards like the APR protocols mentioned in the specification, or will it be found indefinite? The viability of the patent itself could hinge on this definition.
- A third key question will relate to willfulness and damages: Given the allegation that Nestlé launched its product just days before the patent issued and that both defendants were allegedly aware of the patent shortly thereafter, the court will have to examine the timeline of events and the nature of the defendants' conduct to determine if any infringement was willful, which could lead to enhanced damages.