DCT
4:23-cv-03810
New York Packaging II LLC v. Unistar Plastics LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: New York Packaging, II, LLC (New York)
- Defendant: UniStar Plastics, LLC (Texas/Louisiana)
- Plaintiff’s Counsel: DNL Zito Castellano
- Case Identification: 4:23-cv-03810, S.D. Tex., 10/09/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of Texas because the defendant has a regular and established place of business in the district and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s headerless produce bags infringe a patent related to methods for increasing adhesion between stacked bags to enable automatic opening.
- Technical Context: The technology concerns the manufacture of plastic produce bags, commonly found on racks in grocery stores, which are designed so that pulling one bag from the stack automatically opens the mouth of the next bag.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement for the asserted patent on or before June 28, 2022. The complaint also mentions U.S. Patent No. 10,513,078, which is a parent to the asserted patent and is directed to the method of manufacturing the bags, but it is not the subject of a formal count for relief in the provided complaint.
Case Timeline
| Date | Event |
|---|---|
| 2015-10-01 | ’267 Patent Priority Date |
| 2016-01-01 | Plaintiff allegedly introduced its patented produce bags to market |
| 2019-12-24 | U.S. Patent No. 10,513,078 (related patent) issued |
| 2022-01-01 | Defendant allegedly introduced infringing bags |
| 2022-06-28 | Plaintiff allegedly notified Defendant of infringement |
| 2022-09-13 | U.S. Patent No. 11,440,267 Issued |
| 2023-10-09 | 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: Conventional plastic produce bags dispensed from a roll or stack must be manually opened by the user, which is often difficult and can lead to wasted bags being discarded on the floor, creating a slip hazard (’267 Patent, col. 2:18-30). Customers may try to moisten their fingers to open bags, creating an unsanitary condition (’267 Patent, col. 2:26-33).
- The Patented Solution: The invention is a "headerless" plastic bag (one without a reinforced top strip) that uses a combination of two features to ensure the next bag on a rack automatically opens when the front bag is pulled off. First, the exterior surface of the plastic film is treated with low-temperature corona discharge plasma to increase its surface charge to at least 43 Dyne, creating adhesion between adjacent bags (’267 Patent, col. 4:10-14, 5:16-27). Second, "mated recesses" or "dimples" are formed in the bags to further increase the mechanical adhesion between them (’267 Patent, col. 6:13-18). This combined adhesion is sufficient to pull open the mouth of the subsequent bag as the first is removed (’267 Patent, col. 6:35-41).
- Technical Importance: The invention aims to improve consumer convenience and reduce waste and safety hazards in retail environments by eliminating the need for manual bag opening (’267 Patent, col. 2:36-42).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 4 (Compl. ¶23).
- Independent Claim 1 recites a "headerless plastic bag" comprising:
- a first sheet and a second sheet sealed to form the bag;
- the first sheet having an exterior surface with a "surface charge magnitude of at least 43";
- a "first pair of mated recesses" configured to cause the sheets to "releasably mechanically adhere";
- the combined adherence from the recesses and plasma treatment causing the bag to automatically open upon separation from a second bag;
- a pair of holes in each sheet at the top edge for mounting;
- a specific location for the recesses: "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."
- Independent Claim 4 recites a "system" comprising:
- a "first headerless plastic bag" with elements similar to claim 1 (three sealed sides, a mouth, surface charge of at least 43 Dyne, a first pair of mated recesses with a specific location); and
- a "second headerless plastic bag" comprising a "second pair of recesses configured to mate with at least one of the first pair of recesses."
- The complaint also asserts dependent claim 2 (Compl. ¶23).
III. The Accused Instrumentality
Product Identification
- The accused products are "headerless produce bags" sold by UniStar Plastics, LLC, including products identified by the mark "fruits and veggies more matters" (Compl. ¶15-16).
Functionality and Market Context
- The complaint alleges that Defendant sells boxes containing stacks of headerless plastic bags that are placed on racks in retail stores for dispensing (Compl. ¶15). Plaintiff alleges these bags are identifiable by characteristics protected by the patent claims and that it has conducted a "detailed analysis" confirming that the bags infringe (Compl. ¶16, ¶18). Plaintiff and Defendant are described as direct competitors in the same markets, with Defendant's sales allegedly displacing Plaintiff's sales and distribution contracts (Compl. ¶15). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges that the accused bags meet all limitations of the asserted claims based on Plaintiff's "investigation, testing, information and belief" (Compl. ¶16, ¶18). The core allegations are summarized in paragraph 20 of the complaint.
’267 Patent Infringement Allegations (Claim 1)
| 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... | Defendant "sells headerless bags that have a first sheet and a second sheet aligned in facing relation and heat sealed to form a plastic bag..." | ¶20 | col. 8:1-4 |
| ...wherein the first sheet comprising an exterior surface with a surface charge magnitude of at least 43[Dyne]; | The accused bags have "...an exterior surface with a surface charge magnitude of at least 43Dyne..." | ¶20 | col. 8:5-7 |
| 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 have "...a pairs of mated recesses which cause the first sheet to releasably mechanically adhere to the second sheet..." | ¶20 | col. 8:8-12 |
| ...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 accused bags are configured "...to cause the plastic bag to automatically open upon separation..." | ¶20 | col. 8:12-17 |
| ...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 does not provide sufficient detail for analysis of this specific positional element. | N/A | col. 8:21-24 |
’267 Patent Infringement Allegations (Claim 4)
The complaint alleges infringement of claim 4, which is directed to a system of two bags. The infringement theory relies on the same core features as claim 1, alleging that Defendant sells stacks of such bags, necessarily creating the claimed system (Compl. ¶15, ¶20).
- Identified Points of Contention:
- Factual/Technical Question: The complaint's infringement theory rests on factual assertions that will require technical evidence. A central question will be whether discovery and expert testing confirm that the accused bags possess an exterior surface with a "surface charge magnitude of at least 43 Dyne," as this is a precise, quantifiable limitation.
- Scope Question: A key dispute may arise over the highly specific locational requirement for the "mated recesses" in claims 1 and 4, which must be "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." The complaint does not specifically address how the accused products meet this "only at" limitation, which could be a focus of non-infringement arguments if the accused bags have recesses elsewhere.
- Functional Question: The analysis will question whether the features of the accused bags, in combination, actually "cause the plastic bag to automatically open upon separation" in the manner claimed, or if there is a different mechanism at work.
V. Key Claim Terms for Construction
The Term: "mated recesses"
Context and Importance: This term appears in both asserted independent claims and is central to the mechanical adhesion aspect of the invention. The definition will be critical to determining infringement, as the complaint alleges the accused bags possess these features (Compl. ¶20). Practitioners may focus on this term because its structure and function are distinct from the adhesion caused by the plasma treatment.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not specify a shape or depth for the recesses, suggesting any indentation that causes mechanical adherence could qualify. The specification refers to them as "dimples," which is a general term (’267 Patent, col. 6:15).
- Evidence for a Narrower Interpretation: The specification describes the recesses as being formed by "blunt-tipped tools" that do not pierce the bag, and states they are "aligned rounded recesses" (’267 Patent, col. 6:13-16, 6:65). This could support a narrower construction requiring a specific, non-piercing, rounded dimple structure.
The Term: "surface charge magnitude of at least 43" [Dyne]
Context and Importance: This is a precise numerical limitation in the independent claims that defines the required level of plasma treatment. Infringement hinges on whether the accused product meets this specific threshold.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "at least" sets a floor, not a ceiling, meaning any value of 43 Dyne or higher would literally infringe. The patent consistently uses "at least 43 Dyne" throughout the specification, indicating it is a critical threshold (’267 Patent, col. 4:13, 4:25, 4:38).
- Evidence for a Narrower Interpretation: While the term itself is clear, disputes may arise over the method of measurement. The patent does not specify a standard or protocol for measuring the Dyne level on the bag's surface. A defendant may argue for a measurement method that yields a result below the claimed threshold, creating a construction dispute over the implicit testing conditions.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on the assertion that Defendant received notice of the ’267 Patent from Plaintiff on or before June 28, 2022, and subsequently "intentionally continued its infringement" without a good faith defense (Compl. ¶27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: Can Plaintiff produce technical evidence, such as surface energy measurements and physical analysis, to demonstrate that the accused bags meet the patent’s precise quantitative limitation of a "surface charge magnitude of at least 43 Dyne"?
- A second key issue will be one of claim scope and structural mapping: Does the physical structure of the accused bags satisfy the strict locational limitation of claim 1, which requires the "mated recesses" to be disposed only in the specific areas between the mounting holes and the side edges of the bag?
- The willfulness claim will turn on the timing and content of the notice allegedly provided on June 28, 2022. The court will examine whether this notice was sufficiently specific to establish the knowledge and intent required for enhanced damages.