DCT
3:17-cv-03269
Junkosha Inc v. Heat Shrink Innovations LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Junkosha Inc. (Japan)
- Defendant: Heat Shrink Innovations, LLC (Texas)
- Plaintiff’s Counsel: Morgan, Lewis & Bockius LLP
- Case Identification: 3:17-cv-03269, N.D. Tex., 12/01/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the Northern District of Texas, committed acts of patent infringement in the district, and has a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s fluoropolymer heat-shrinkable tubing products infringe a patent related to heat-shrinkable tubes with specific, technically-defined tearability and shrinkage properties.
- Technical Context: The technology concerns fluoropolymer-based heat-shrinkable tubing, often used in the medical device field as a protective sheath that must be both tightly shrinkable and easily tearable for removal.
- Key Procedural History: The patent-in-suit is a continuation of an earlier application that issued as U.S. Patent No. 9,446,171. Plaintiff alleges it provided Defendant with a notice letter and infringement report on August 10, 2017, which forms the basis for its willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2011-11-21 | '154 Patent Priority Date |
| 2017-04-18 | '154 Patent Issue Date |
| 2017-08-10 | Plaintiff Notifies Defendant of Infringement |
| 2017-12-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,623,154 - "Heat-shrinkable tube having tearability"
- Patent Identification: U.S. Patent No. 9,623,154, "Heat-shrinkable tube having tearability," issued April 18, 2017.
The Invention Explained
- Problem Addressed: The patent addresses a deficiency in prior art heat-shrinkable fluorine resin tubes, which were often difficult to tear and had insufficient heat-shrinkage properties for applications like medical device sheathing, where easy removal and a tight fit are critical (ʼ154 Patent, col. 1:36-59). Conventional solutions that improved tearability could compromise other desirable properties or workability (ʼ154 Patent, col. 1:53-59).
- The Patented Solution: The invention is a heat-shrinkable tube made from a fluorine resin composition defined by a specific physical property rather than solely by its chemical makeup. The core of the invention is that when the material is subjected to a specific "sine vibration stress" test protocol, it exhibits a positive change in "loss energy" (ΔE loss) over a temperature range of 175° C. to 185° C. (ʼ154 Patent, Abstract; col. 2:1-8). This positive value is said to indicate that the material's molecular chains can move freely to allow for high shrinkage while maintaining a degree of entanglement that aids tearability (ʼ154 Patent, col. 3:24-34).
- Technical Importance: This approach provides a method to create a tube that achieves both good heat-shrinkability at relatively low temperatures and excellent tearability, improving its utility and "handlability" in fields like medical device manufacturing (ʼ154 Patent, col. 2:48-53).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶11).
- The essential elements of Claim 1 are:
- A heat-shrinkable tube having tearability,
- comprising at least a fluorine resin,
- wherein when a sine vibration stress with a cycle of 30 sec and an amplitude of 10 g is applied and a temperature is raised at rate of 5° C./min, an amount of change in loss energy, ΔE loss, with change in temperature from 175° C. to 185° C. is a positive value.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant HSI’s "EZ-Peel products," specifically identified as "EZ-Peel: Fluoropolymer Peelable Heat Shrink" tubing (Compl. ¶¶11, 13).
Functionality and Market Context
- The complaint describes the EZ-Peel product as a "fluoropolymer peelable heat shrink tube" that is marketed as having "Low Peel Force For Easy Removal" and being a "Direct Replacement For FEP Heat Shrink" (Compl. ¶13). A product data sheet, included as a visual in the complaint, lists features such as its material composition, dimensions, and shrink ratios (Compl. ¶13). The core of the infringement allegation is that this product, when tested, exhibits the specific material properties claimed in the '154 patent (Compl. ¶14).
IV. Analysis of Infringement Allegations
'154 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A heat-shrinkable tube having tearability, comprising at least a fluorine resin | The accused EZ-Peel product is a "fluoropolymer peelable heat shrink tube product" that is marketed as having tearable properties for easy removal. The complaint includes a visual of the product's marketing data sheet to support this. | ¶13 | col. 16:32-33 |
| wherein when a sine vibration stress with a cycle of 30 sec and an amplitude of 10 g is applied and a temperature is raised at rate of 5° C./min, an amount of change in loss energy, ΔE loss, with change in temperature from 175° C. to 185° C. is a positive value. | Plaintiff alleges that testing of the EZ-Peel product under the claimed conditions using a thermomechanical analyzer resulted in a ΔE loss of 0.03 µJ, which is a positive value. The complaint provides a graph, labeled "FIG. 1 TMA," to visually represent this test data. | ¶14 | col. 16:34-39 |
- Identified Points of Contention:
- Technical Question: The central dispute appears to be factual and will likely involve a "battle of the experts." The key question is whether the accused EZ-Peel product actually exhibits a positive ΔE loss when subjected to the precise test protocol recited in Claim 1. The complaint’s allegation rests on its own testing, and the validity of that testing methodology and its results will be a primary focus (Compl. ¶14).
- Scope Questions: The term "tearability" is a required feature but is not quantitatively defined in the claim itself. While the specification describes methods for testing tear strength, the claim's requirement is qualitative (ʼ154 Patent, col. 11:1-13). This raises the question of what level of performance is needed to meet the "tearability" limitation.
V. Key Claim Terms for Construction
- The Term: "is a positive value"
- Context and Importance: This term is the central, objective criterion for infringement. The entire dispute hinges on whether the accused product's measured "change in loss energy" is greater than zero under the specified test conditions. The construction of this term will define the boundary for infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim suggests a purely mathematical definition: any value greater than zero meets the limitation. The complaint's allegation that a measured value of 0.03 µJ satisfies the claim is consistent with this interpretation (Compl. ¶14).
- Evidence for a Narrower Interpretation: A defendant may argue that the term should be read in light of the specification's teachings. The patent states that "better tearability and heat-shrinkability can be obtained by a tube... having a ΔΕ loss of 0.05 µJ or more" (ʼ154 Patent, col. 2:9-11). This could support an argument that "a positive value" should be construed to mean a technically or commercially meaningful positive value, such as one meeting or approaching the 0.05 µJ threshold, rather than any number infinitesimally greater than zero. The complaint's own test result of 0.03 µJ for the accused product is positive but falls short of this preferred embodiment, potentially making this a critical point of dispute.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful. This allegation is based on alleged pre-suit knowledge of the '154 patent and its infringement, stemming from a notice letter and infringement report sent by Plaintiff to Defendant on August 10, 2017 (Compl. ¶¶17-18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: does the accused EZ-Peel product, when correctly measured according to the protocol in Claim 1, demonstrate a "positive value" for the change in loss energy? The case will likely depend heavily on competing expert testimony and the factual verification of the plaintiff's testing data.
- The case may also turn on a question of claim scope: can the limitation "is a positive value" be satisfied by any number greater than zero, as the plain language suggests, or does the specification's disclosure of a preferred embodiment having a ΔE loss of "0.05 µJ or more" require a higher, more-than-nominal threshold for infringement? The plaintiff's own measurement of the accused product at 0.03 µJ makes this a potentially dispositive legal and factual question.