PTAB

IPR2021-00916

Tekni Plex Inc v. Converter Mfg LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Thermoformable Article with a Smooth Periphery
  • Brief Description: The ’281 patent relates to thermoformable plastic food-packaging trays. The technology aims to solve the problem of sharp peripheral edges on prior art trays, which can cut plastic overwrap film or injure handlers, by creating a tray with a smooth, rolled-over edge where the sharp edge is displaced inwardly away from the tray’s outermost periphery.

3. Grounds for Unpatentability

Ground 1: Anticipation by Portelli - Claims 1-5, 9, 11-15, 17, and 20-22 are anticipated under 35 U.S.C. § 102 by Portelli.

  • Prior Art Relied Upon: Portelli (International Publication No. WO 96/01179).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Portelli discloses every limitation of the challenged claims. Portelli describes a rounded rectangular, thermoformed plastic tray for packaging food that has a peripheral extension bent or rolled inward to displace its sharp "terminal edge" from the tray's periphery. This structure, which creates a smooth outer periphery to prevent tearing overwrap film, allegedly meets the core limitations of independent claim 1, including a body with a concave compartment, an extension with a bent portion, a smooth periphery, and a peripheral edge displaced from that periphery. Petitioner further mapped specific features of Portelli to dependent claims, such as the offset angle between planes (claims 2-5), the presence of a "bend region" and "peripheral flange" (claim 9), and the stackable nature of the trays (claim 15).

Ground 2: Anticipation by Long - Claims 1-3, 6-8, 11, 13-15, 17, 20-22, 24, and 26-29 are anticipated under § 102 by Long.

  • Prior Art Relied Upon: Long (International Publication No. WO 2012/064203).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Long, like Portelli, independently anticipates the challenged claims. Long describes a rounded rectangular container formed from a "thermoformed precursor" with a rolled-over edge, or a "return of the edge in the under part of the profiled periphery," to displace the sharp edge away from the "wrap path." This was argued to teach all limitations of independent claims 1 and 24. For example, Long's tray has a body, an extension extending "outwardly of the mouth," a bent portion, and a smooth outer periphery. Petitioner also asserted that Long's disclosure of a straight, vertical portion of the rolled-over shape meets the "spacer" limitation of claim 6 and that the inherent geometry meets the angular offset limitations of claims 2, 3, and 7.

Ground 3: Obviousness over Portelli and Long - Claims 1-15, 17, 20-22, and 24-29 are obvious over Portelli in view of Long.

  • Prior Art Relied Upon: Portelli (WO 96/01179) and Long (WO 2012/064203).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that, to the extent any single element was not explicitly taught by one reference, it was clearly taught by the other, rendering the combination obvious. As both references disclose thermoformed food trays with rolled edges to solve the same problem, every element of the challenged claims was argued to be present in Portelli, Long, or both.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Portelli and Long for several reasons. Both references identify and solve the same known problems: preventing sharp tray edges from tearing overwrap film and reinforcing flimsy tray edges. The solution of rolling the edge is a simple, predictable design choice from a finite number of alternatives. The substantial similarities between the trays—both being rounded rectangular, thermoformable articles for food packaging—would have further prompted a POSITA to combine their features.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining the known, simple geometric features from such similar trays would yield nothing more than a predictable result.

  • Additional Grounds: Petitioner asserted additional anticipation challenges based on Meadors (Patent 4,228,121) and obviousness challenges based on combinations including Long in view of Meadors, Long alone, Portelli alone (for different claims), and Portelli in view of Brown (Patent 6,960,316).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv factors. It asserted that the parallel district court and ITC proceedings were in early stages with no trial dates set, no substantive rulings made, and minimal discovery or investment by the parties. Petitioner contended that because no invalidity contentions had been filed in the co-pending litigation, there was no overlap of issues to weigh against institution. Finally, Petitioner argued that the petition presented a strong case on the merits, which should favor institution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-15, 17, 20-22, and 24-29 of the ’281 patent as unpatentable.