DCT

1:23-cv-01761

Vericool World LLC v. TemperPack Tech Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01761, E.D. Va., 12/21/2023
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Virginia because each Defendant resides in the District, has committed acts of infringement in the District, and maintains a regular and established place of business in the District.
  • Core Dispute: Plaintiff alleges that Defendant’s ClimaCell thermal shipping liners infringe three patents related to compostable, starch-based insulation panels enclosed within a protective film.
  • Technical Context: The technology addresses the market need for environmentally friendly, compostable, or recyclable alternatives to traditional polystyrene foam for use in the cold-chain shipping industry.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement of the ’818 patent on June 22, 2021. It further alleges that on August 3, 2022, Plaintiff provided notice regarding continued infringement of the ’818 patent and new infringement of the then-recently-issued ’780 patent.

Case Timeline

Date Event
2017-02-16 Priority Date for Asserted Patents
2021-06-22 U.S. Patent No. 11,040,818 Issued
2021-06-22 Plaintiff sends notice letter to Defendant regarding the ’818 patent
2022-06-14 U.S. Patent No. 11,358,780 Issued
2022-08-03 Plaintiff sends notice letter to Defendant regarding the ’818 and ’780 patents
2023-10-24 U.S. Patent No. 11,794,983 Issued
2023-12-21 Complaint Filed

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

U.S. Patent No. 11,040,818 - Compostable Insulation for Shipping Container

  • Patent Identification: U.S. Patent No. 11,040,818, "Compostable Insulation for Shipping Container," issued June 22, 2021.

The Invention Explained

  • Problem Addressed: The patent’s background section identifies the environmental problem associated with disposing of conventional expanded polystyrene (EPS), or Styrofoam, which is used for thermal insulation in shipping but is not compostable (ʼ818 Patent, col. 1:36-38).
  • The Patented Solution: The invention is a thermal insulation article made from a solid, compostable panel that is "formed primarily of starch and/or plant fiber pulp that holds together as a single unit" (ʼ818 Patent, col. 1:45-48). This core panel is enclosed within a water-proof or water-resistant film, such as paper, to protect the starch from moisture and to contain the panel, which can be folded to form a box-like liner inside a shipping container (ʼ818 Patent, Abstract; col. 1:49-54).
  • Technical Importance: This technology provided a "readily-manufacturable" and "cost-effective" solution that is environmentally friendly, addressing legislative and consumer pressure to move away from polystyrene in the cold-chain industry (Compl. ¶11, 13).

Key Claims at a Glance

  • The complaint asserts at least independent Claim 1 (Compl. ¶25).
  • Essential elements of Claim 1 include:
    • A thermal insulation article for placement in a shipping container.
    • A thermally insulating pad that includes a panel formed primarily of starch that holds together as a single unit.
    • The panel comprises one or more rectangular plates dimensioned to substantially span parts of the container (floor, walls, or cover).
    • A compostable or recyclable film formed of paper that "sandwiches the panel."
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,358,780 - Compostable Insulation for Shipping Container

  • Patent Identification: U.S. Patent No. 11,358,780, "Compostable Insulation for Shipping Container," issued June 14, 2022.

The Invention Explained

  • Problem Addressed: As with the related ’818 patent, this patent addresses the environmental and disposal problems of conventional EPS insulation (’780 Patent, col. 1:21-38).
  • The Patented Solution: The invention is a thermal insulation pad featuring a "porous non-corrugated panel formed primarily of starch" (’780 Patent, Claim 1). This panel is enclosed within a paper film that "sandwiches" it, providing a compostable and structurally sound alternative to polystyrene for lining shipping containers (’780 Patent, col. 1:43-50).
  • Technical Importance: The invention offers a high-performing thermal shipping solution using eco-friendly materials that can be easily disposed of in commercial or residential composting or recycling streams (Compl. ¶11; ’780 Patent, col. 1:55-62).

Key Claims at a Glance

  • The complaint asserts at least independent Claim 1 (Compl. ¶33).
  • Essential elements of Claim 1 include:
    • A thermal insulation article.
    • A thermally insulating pad with a thickness between about 1/4 and 4 inches.
    • A "porous non-corrugated panel formed primarily of starch" that holds together as a single unit.
    • The panel comprises one or more rectangular plates.
    • A paper film that "sandwiches the panel."
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,794,983 - Compostable Insulation for Shipping Container

  • Patent Identification: U.S. Patent No. 11,794,983, "Compostable Insulation for Shipping Container," issued October 24, 2023.

Technology Synopsis

This patent describes a thermal insulation article intended to replace non-compostable materials like polystyrene in cold-chain shipping (ʼ983 Patent, col. 1:21-38). The invention consists of a pad made from a porous starch-based layer, which is divided into multiple panel sections and surrounded by a protective paper film, with air captured in a pocket between the film and the panel sections (ʼ983 Patent, Abstract; Claim 17). The pad is scored to allow it to be folded into a container liner (ʼ983 Patent, Claim 17).

Asserted Claims

The complaint asserts at least independent Claim 17 (Compl. ¶41).

Accused Features

The complaint alleges that TemperPack's ClimaCell product, with its starch-based panel, paper film, and structure designed for insertion into a shipping container, infringes this patent (Compl. ¶15, 41).

III. The Accused Instrumentality

Product Identification

The accused product is Defendant's "ClimaCell" thermal liner (Compl. ¶15).

Functionality and Market Context

The complaint describes ClimaCell as TemperPack's "flagship product," which includes a "thermally insulating panel formed primarily of starch that holds together as a single unit" and a "recyclable film formed of paper" (Compl. ¶15). The complaint alleges the product is advertised as being water-repellent to protect the starch core from dissolving (Compl. ¶15). The complaint includes a marketing image depicting two of the accused ClimaCell liners being fitted inside a cardboard shipping box (Compl. p. 5).

The product is alleged to target the food delivery, pharmaceutical, and healthcare industries and is used by "leading meal kit brands such as HelloFresh" (Compl. ¶17). The complaint claims, on information and belief, that Defendant manufactures "millions of ClimaCell thermal liners per month" (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exs. D, E, and F) that were not included in the provided filings. The analysis below summarizes the infringement theory from the complaint’s narrative allegations and does not present a claim-by-claim chart.

’818 Patent Infringement Allegations

The complaint alleges direct infringement of at least Claim 1 of the ’818 patent, asserting that the ClimaCell product embodies each required element (Compl. ¶25). The infringement theory centers on the allegation that ClimaCell is a thermal insulation pad that includes a "panel formed primarily of starch that holds together as a single unit" (Compl. ¶6, 15). This starch panel is allegedly enclosed, or "sandwiched," within a "recyclable film formed of paper" to form the final product, mapping directly to the core components of Claim 1 (Compl. ¶6, 15).

Identified Points of Contention

  • Scope Questions: A central question of claim scope may be whether the term "sandwiches the panel" as used in Claim 1 reads on the specific manufacturing method and structure of the ClimaCell product's paper film. The complaint does not detail this method, but discovery will likely focus on whether the film is formed from one, two, or more pieces of paper and how they are joined.
  • Technical Questions: An evidentiary question will be whether the material composition of the ClimaCell product meets the "primarily of starch" limitation. This will likely be a factual dispute resolved through expert testing and analysis of Defendant's formulation documents.

’780 Patent Infringement Allegations

The complaint alleges direct infringement of at least Claim 1 of the ’780 patent (Compl. ¶33). The infringement theory is similar to that for the ’818 patent but must also satisfy the additional limitations of Claim 1 of the ’780 patent. This requires showing the accused ClimaCell product has a starch panel that is "porous," "non-corrugated," and has a thickness "between about 1/4 and 4 inches" (ʼ780 Patent, Claim 1). The complaint's general description of a "panel formed primarily of starch" is the basis for this allegation (Compl. ¶15).

Identified Points of Contention

  • Scope Questions: The definition of "porous" may become a key issue. The question will be whether the accused panel has pores "spread substantially uniformly through the panel" as described in the specification, or if any air pockets suffice ('780 Patent, col. 5:26-31).
  • Technical Questions: The infringement analysis will turn on several factual questions for which the complaint provides no detail. Does the ClimaCell panel have a "porous" structure as defined by the patent? Is it "non-corrugated"? Does its thickness fall within the claimed 1/4-to-4-inch range? These are all matters for discovery and expert evidence.

V. Key Claim Terms for Construction

Term: "sandwiches the panel" (’818 Patent, Claim 1; ’780 Patent, Claim 1)

Context and Importance

This term appears in the asserted claims of both lead patents and is fundamental to the claimed structure. Its construction will determine how the paper film must enclose the starch panel to infringe, which could be dispositive if Defendant's manufacturing process differs from the embodiments shown in the patents.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The plain language of the term does not specify how the sandwiching occurs. A party could argue it simply means the film covers opposing primary faces of the panel, regardless of whether it is a single folded sheet, a tube, or two separate sheets.
  • Evidence for a Narrower Interpretation: The specification repeatedly illustrates the concept using two separate sheets of film (60) placed on either side of the panel (50) and then sealed around the perimeter ('818 Patent, Figs. 2A-2B; col. 8:11-19). A party may argue the term should be limited to this disclosed two-sheet embodiment.

Term: "porous" (’780 Patent, Claim 1)

Context and Importance

This term is a key limitation added to Claim 1 of the ’780 patent. The infringement determination will depend on whether the accused ClimaCell product has the specific type and degree of porosity required by the claim, as informed by the specification.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification describes a wide potential range for porosity, stating "10-80% of the volume of the panel can be pores or voids" ('780 Patent, col. 5:27-29). This broad disclosure could support an interpretation that does not require a specific, uniform foam structure.
  • Evidence for a Narrower Interpretation: The specification describes the panel as a potential "foam material" and links the porosity to the extrusion process ('780 Patent, col. 4:46-47, col. 4:56-59). A party could argue "porous" is not a generic term but refers to the specific foam-like structure that results from the disclosed manufacturing method.

VI. Other Allegations

Indirect Infringement

The complaint alleges induced infringement for all three patents. The factual basis is the allegation that Defendant provides customers with "marketing material, operational instructions, manuals, technical specifications, demonstrations, training, and other forms of support" that direct and encourage customers to make and use the Accused Product in an infringing manner (e.g., by shaping and positioning it within a shipping container) (Compl. ¶27-28, 35-36, 43-44).

Willful Infringement

The complaint alleges willful infringement based on pre-suit knowledge for the ’818 and ’780 patents, citing notice letters sent on June 22, 2021 and August 3, 2022, respectively (Compl. ¶26, 34). For the ’983 patent, willfulness is alleged based on knowledge gained "since at least the filing of this Complaint" (Compl. ¶42).

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

  • A central issue will be one of claim scope and construction: can the term "sandwiches," which is illustrated in the specification with a two-sheet embodiment, be construed broadly enough to read on the specific method by which TemperPack’s ClimaCell product encloses its starch core? Similarly, what level of internal void space is required for a panel to be deemed "porous" under the '780 patent?
  • A key evidentiary question will be one of technical proof: does the accused ClimaCell product possess the specific physical and compositional properties required by the asserted claims? The case may turn on expert testing and discovery into Defendant's material science to determine if the panel is "primarily of starch," has a "porous" structure, and meets the claimed thickness ranges.
  • A third significant question will relate to willfulness and damages: given the allegation that Defendant had notice of the first two patents more than a year before the suit was filed, a court will have to determine whether its continued sales of ClimaCell constituted objectively reckless conduct sufficient to justify enhanced damages.