DCT
1:18-cv-00969
Coldkeepers LLC v. TemperPack Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coldkeepers, LLC (Georgia)
- Defendant: Temperpack Technologies, Inc. (Delaware)
- Plaintiff’s Counsel: Arnall Golden Gregory LLP
- Case Identification: 1:18-cv-00969, E.D. Va., 09/26/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the district and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s "One-Piece Liner" products infringe two patents related to multi-layer insulated shipping liners and bags.
- Technical Context: The technology addresses the need for effective and cost-efficient insulated packaging for shipping temperature-sensitive goods, a market that has expanded with the growth of meal-kit and grocery delivery services.
- Key Procedural History: The operative pleading is a First Amended Complaint. Plaintiff alleges it provided Defendant with written, actual notice of infringement on two separate dates prior to filing the amended complaint.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-23 | Priority Date for '830 and '609 Patents |
| 2018-04-24 | U.S. Patent No. 9,950,830 Issues |
| 2018-05-09 | Plaintiff Provides First Written Notice of Infringement |
| 2018-05-29 | U.S. Patent No. 9,980,609 Issues |
| 2018-06-25 | Plaintiff Provides Second Written Notice of Infringement |
| 2018-09-26 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,950,830 - "Insulated Liners and Containers," issued April 24, 2018
The Invention Explained
- Problem Addressed: The patent identifies the need for insulated shipping liners that provide superior thermal properties compared to conventional options while also being compactly configurable to reduce shipping and transportation costs (’830 Patent, col. 2:1-12; Compl. ¶¶ 8-9).
- The Patented Solution: The invention is a liner system comprising a flexible, pliable sealed sack that houses a separate, movable insulating layer, typically made of foam (’830 Patent, col. 8:32-34). This insulating layer is cut from a single sheet of material with specific cutouts that allow it to be folded from a flat state into a three-dimensional, self-supporting rectangular box form, which can then be inserted into an outer shipping container like a cardboard box (’830 Patent, Fig. 10-11; col. 9:12-28).
- Technical Importance: This design allows the liner to be shipped and stored flat to save space and cost, while providing a precisely shaped, multi-sided insulating structure when deployed. (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 6 (Compl. ¶17).
- Independent Claim 1 recites an insulated shipping and storage liner with these essential elements:
- Pliable first and second layers sealed together to form a bag-like housing with an opening.
- An insulating layer positioned within the housing, smaller than the housing, and movable relative to the pliable layers.
- The insulating layer consists of at least one sheet of material with "rectilinear cut outs at opposite corners."
- A liner closure capable of at least partially closing the opening.
- The liner is configured to be convertible into a "substantially rectangular box form" that conforms to the interior of an outer shipping container.
- Independent Claim 6 recites an insulated shipping and storage container comprising an outer box and an insulated liner, where the liner's insulating layer has both corner cutouts and "opposing cut outs generally centrally along opposite side edges" to facilitate folding into a bottom and walls.
- The complaint also asserts multiple dependent claims and reserves the right to assert others (Compl. ¶17).
U.S. Patent No. 9,980,609 - "Insulated Shipping Bags," issued May 29, 2018
The Invention Explained
- Problem Addressed: The patent addresses the same need for improved, compactable insulated containers for shipping temperature-sensitive goods over extended periods (’609 Patent, col. 2:3-12).
- The Patented Solution: The invention is a multi-layer insulated bag constructed from at least three layers: an outer layer (e.g., reflective foil), an intermediate insulating layer (e.g., open-cell foam), and an inner plastic pouch layer (’609 Patent, col. 2:21-25). The intermediate foam layer is a sheet with specific corner and central cutouts enabling it to be folded into a self-supporting structure. In certain embodiments, the inner plastic layer is directly "secured or welded to said outer layer," enclosing the insulating material (’609 Patent, Claim 1; col. 6:35-39).
- Technical Importance: The claimed construction creates a collapsible yet structured insulated bag, aiming to provide thermal performance and physical protection for its contents. (Compl. ¶8).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 5 (Compl. ¶20).
- Independent Claim 1 recites an insulated shipping and/or storage bag with these essential elements:
- An outer layer.
- An intermediate insulating layer made from a sheet with specific cutouts at the corners and centrally on the sides, enabling a "free standing configuration" when folded.
- An inner plastic layer that is "secured or welded to said outer layer of said bag."
- A bag closure selected from a specified list of closure types.
- Independent Claim 5 recites an insulated bag with a similar three-layer structure, focusing on the configuration of an outer layer and an inner plastic layer (secured to the outer layer) to form an article-receiving pouch, with an intermediate insulating layer positioned between them.
- The complaint also asserts multiple dependent claims and reserves the right to assert others (Compl. ¶20).
III. The Accused Instrumentality
Product Identification
- Defendant’s "One-Piece Liner" products (Compl. ¶14).
Functionality and Market Context
- The complaint describes the accused product as a "foam insulated shipping container" (Compl. ¶14). Marketing material included in the complaint depicts the "One-Piece Liner" as a foldable liner inserted into a cardboard box to provide thermal insulation (Compl. p. 19). This material highlights features like "double gusseted at top and bottom provides extra protection" and promotes the product as a compostable and renewable alternative to traditional petroleum-derived foam coolers, suggesting a target market of environmentally conscious shippers and meal-kit delivery services (Compl. p. 19).
IV. Analysis of Infringement Allegations
’830 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An insulated shipping and storage liner comprising: pliable first and second layers that are sealed together so as to form a bag configuration having (i) a bottom, (ii) walls, (iii) an opening generally opposite the bottom... | The One-Piece Liner Product is an insulated shipping and/or storage liner that comprises pliable first and second layers sealed together to form a bag configuration. | ¶18 | col. 8:37-40 |
| an insulating layer positioned within the housing volume and being of a size smaller than the first size and being movable relative to the pliable first and second layers... | The One-Piece Liner Product comprises an insulating layer that is identical to the insulating layer recited in claim 1. | ¶18 | col. 8:32-34 |
| ...the insulating layer consisting of at least one sheet of insulating material having...rectilinear cut outs at opposite corners thereof along said opening... | The One-Piece Liner Product comprises an insulating layer that is identical to the insulating layer recited in claim 1. | ¶18 | col. 6:12-14 |
| a liner closure capable of at least partially closing said opening of said liner | The One-Piece Liner Product comprises a liner closure that is identical to the liner closure recited in claim 1. | ¶18 | col. 7:22-26 |
| wherein the liner is configured to be convertible into a substantially rectangular box form...whereby, when the liner is inserted into an open box outer shipping or storage container, the liner conforms to an interior configuration of the outer box... | The One-Piece Liner Product is configured to be convertible into a substantially rectangular box form and conforms to the interior configuration of an outer box. | ¶18 | col. 9:22-28 |
- Identified Points of Contention:
- Structural Questions: A primary question is whether the "One-Piece Liner" has the specific multi-component structure required by claim 1. The claim recites a "movable" insulating layer positioned within a separate "housing" formed by "pliable first and second layers." The complaint’s conclusory allegations raise the factual question of whether the accused product is an integrated unit or a system of distinct components as claimed.
- Scope Questions: The analysis may focus on the scope of "movable relative to the pliable first and second layers." The degree of attachment or integration between the insulating core and the outer layers of the accused product will be compared against the meaning of this term as defined by the patent's specification.
’609 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An insulated shipping and/or storage bag having a bottom, walls, and an opening generally opposite the bottom, the bag consisting of: an outer layer; | The One-Piece Liner Product is an insulated shipping and/or storage bag consisting of an outer layer of polymeric film material. | ¶21 | col. 2:22-24 |
| an intermediate insulating layer...consisting of at least one sheet of insulating material having a generally rectangular shape with cut outs at each of four corners...and opposing cut outs generally centrally along opposite side edges...enabling a free standing configuration... | The One-Piece Liner Product consists of an intermediate insulating layer with the same specified shape, cut outs, and folding configuration. | ¶21 | col. 5:48-61 |
| an inner plastic layer, said inner plastic layer being secured or welded to said outer layer of said bag with said end portions of said intermediate insulating layer extending along opposing edges of said opening; and | The One-Piece Liner Product consists of an inner plastic layer secured or welded to the outer layer with the end portions of the intermediate insulating layer extending along the opening. | ¶21 | col. 6:35-37 |
| a bag closure capable of at least partially closing said opening, said bag closure being selected from the group consisting of a mechanical zip-like closure, a double sided tape, a pressure closure, a taping closure, a flap with re-sealable taping means, and a flap with peel-off taping means. | The bag closure of the One-Piece Liner Product is a flap with peel-off taping means. | ¶21 | col. 6:52-56 |
- Identified Points of Contention:
- Technical Questions: The infringement analysis will likely scrutinize the physical construction of the "One-Piece Liner." Specifically, what evidence does the complaint provide that the product has a distinct "inner plastic layer" that is "secured or welded to said outer layer"? The method of attachment between the layers will be a critical factual issue.
- Scope Questions: Does the accused product's closure mechanism meet the definition of "a flap with peel-off taping means" as recited in the Markush group of claim 1? The complaint alleges it does, but this could become a point of dispute requiring construction of the claimed closure types.
V. Key Claim Terms for Construction
The Term: "movable relative to the pliable first and second layers" (’830 Patent, Claim 1)
- Context and Importance: This term is critical for defining the relationship between the insulating core and the outer sack. Infringement may depend on whether the accused liner's insulating material is a separate, freely moving component or an integrated part of the liner's structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the insulating layer as being "housed within a flexible sealed sack" (’830 Patent, col. 8:32-34), language that may support an interpretation where the layer is separate and unattached. Furthermore, dependent claim 5 specifies the layer is "otherwise unattached," suggesting the independent claim's term "movable" could encompass a broader set of relationships, including some forms of loose attachment that still permit movement.
- Evidence for a Narrower Interpretation: The patent elsewhere describes embodiments where layers are "mechanically secured" (’830 Patent, col. 6:50-53), which a party could argue shows the patentee knew how to claim fixed structures. A court may be asked to determine if "movable" precludes any form of permanent connection between the insulating layer and the housing.
The Term: "an inner plastic layer... being secured or welded to said outer layer" (’609 Patent, Claim 1)
- Context and Importance: This limitation defines a specific method of constructing the bag. Whether the "One-Piece Liner" infringes will depend on whether its layers are attached in a manner that falls within the scope of "secured or welded." Practitioners may focus on this term because it appears to be a key structural distinction of the invention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "secured" is a broad term encompassing many forms of attachment, including adhesives, lamination, or other bonding methods beyond just welding.
- Evidence for a Narrower Interpretation: The specification provides a specific example where the "inner plastic pouch layer 32 is welded at 41 to an inner surface 42 of the outer layer" (’609 Patent, col. 6:35-37, Fig. 2). A party could argue that "secured or welded" should be construed in light of this specific embodiment to mean a direct, permanent bond at the layers' edges, rather than a general lamination across their surfaces.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, asserting that Defendant instructs its customers (e.g., Jet.com, Inc.) to use the "One-Piece Liner" in combination with an outer box, thereby causing them to infringe the container claims of the ’830 Patent (Compl. ¶¶ 26-29). The complaint provides a marketing image showing the liner inside a box as an example of such instructions (Compl. p. 19).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged continued infringement after receiving written, actual notice from Plaintiff on May 9, 2018, and June 25, 2018 (Compl. ¶¶ 35-38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of structural correspondence: Does the accused "One-Piece Liner" product, allegedly an integrated unit, possess the specific multi-component architecture required by the patent claims? This includes the '830 Patent’s requirement for a "movable" insulating layer housed within a distinct two-ply sack and the '609 Patent's requirement for a separate "inner plastic layer" that is "secured or welded" to an "outer layer."
- The case will likely involve a key question of claim scope: How will terms like "movable" (’830 Patent) be construed in light of the patent's specification and the physical characteristics of the accused product? The resolution will determine whether a product with potentially integrated layers can fall within the scope of claims describing an assembly of separate components.
- For the container claims, a critical evidentiary question will be one of intent for inducement: Do Defendant's marketing materials and customer instructions, such as the advertisement provided in the complaint, demonstrate the specific intent required to encourage customers to combine the accused liner with an outer box in an infringing manner?