Tekni Plex Inc v. Converter Mfg LLC

1. Case Identification

• Case #: IPR2021-00918
• Patent #: 10,189,624
• Filed: May 10, 2021
• Petitioner(s): Tekni-Plex, Inc.
• Patent Owner(s): Converter Manufacturing, LLC
• Challenged Claims: 1-20, 22-26, and 29

2. Patent Overview

• Title: Thermoplastic Food-Packaging Trays with Rolled Edges
• Brief Description: The ’624 patent relates to thermoplastic food-packaging trays with a smooth, rolled-over edge. The invention purports to solve the problem of sharp peripheral edges on prior art trays, which could cut plastic overwrap film or injure handlers, by turning the edge inward and away from the tray's periphery.

3. Grounds for Unpatentability

Ground 1: Anticipation by Long - Claims 1-9, 13-20, 22-26, and 29 are anticipated under 35 U.S.C. §102 by Long.

• Prior Art Relied Upon: Long (International Publication No. WO 2012/064203).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Long discloses every limitation of the challenged claims. Long teaches a thermoformed, rounded rectangular tray with a rolled-over extension that displaces the peripheral edge inward, away from the tray’s outer periphery. This structure, which includes a flat sealing surface, a smooth curved bend region, a spacer, and a bent portion, creates a smooth outer periphery suitable for overwrap (OW), vacuum-sealed packaging (VSP), and modified atmosphere packaging (MAP) technologies. Petitioner asserted this comprehensive disclosure meets all limitations of independent claim 1 and the dependent claims, including those related to specific gap widths and radius of curvature measurements.
  • Key Aspects: Petitioner contended that functional limitations, such as sufficient edge strength to resist deformation from overwrapping (claims 16 and 18) and the sealing of film to the tray's sealing surface (claim 17), are inherently disclosed in Long's design for a wrapped food tray intended for commercial use.

Ground 2: Obviousness over Long in view of Portelli - Claims 1-20, 22-26, and 29 are obvious over Long in view of Portelli.

• Prior Art Relied Upon: Long (WO 2012/064203) and Portelli (WO 96/01179).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Long and Portelli collectively teach all challenged claim limitations. While Long was presented as providing the foundational tray structure, Portelli was cited for its explicit disclosure of specific rolled-edge conformations, such as J-shaped, U-shaped, and spiral configurations (addressing claims 10-12). Petitioner argued that every element of the claims is taught by either Long, Portelli, or both.
  • Motivation to Combine: A POSITA would combine Long and Portelli because both references address the same known problems in the food packaging industry: preventing sharp tray edges from damaging overwrap film and increasing the rigidity of otherwise flimsy tray edges. Since both references identify the same problems and propose the same general solution of a rolled edge, a POSITA would have found it obvious to combine their respective features to optimize a tray design.
  • Expectation of Success: The combination was argued to be a predictable application of known elements. Incorporating the specific, well-understood rolled-edge profiles from Portelli into the tray design of Long would have yielded no unexpected results and would have been a straightforward design choice with a high expectation of success.

Ground 3: Obviousness over Portelli in view of Brown - Claims 10-12 are obvious over Portelli in view of Brown.

• Prior Art Relied Upon: Portelli (WO 96/01179) and Brown (Patent 6,960,316).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground focused specifically on dependent claims 10-12, which recite J-shaped, U-shaped, and spiral conformations for the rounded edge portion. Petitioner argued that while Portelli discloses these shapes in its Figure 8, Brown provides further, reinforcing teachings of similar turned-under rims with J-shaped and U-shaped profiles on rectangular plastic containers.
  • Motivation to Combine: A POSITA would combine Portelli and Brown as both disclose solutions for creating smooth, strong peripheral rims on plastic food containers. A designer, starting with the general rolled-edge concept taught in Portelli, would have been motivated to look to other known rim configurations in the field, such as those in Brown, to select a specific, advantageous profile for manufacturability and strength, leading directly to the claimed shapes.
  • Expectation of Success: The combination involved applying known edge profiles from one type of container (Brown) to a similar container (Portelli) to achieve the predictable benefits of strength and safety.

• Additional Grounds: Petitioner asserted additional challenges including anticipation of claims 1-20, 24, and 29 by Portelli (Ground 2); anticipation of claims 1, 6-14, 22, 23, and 29 by Meadors (Ground 3); obviousness of claims 1-20, 22-26, and 29 over Long in view of Meadors (Ground 5); and obviousness of claims 1-20, 24, and 29 based on combining different embodiments within Portelli itself (Ground 6).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on Fintiv factors. It asserted that co-pending district court and ITC matters do not justify denial because those cases are in very early stages with minimal discovery or investment by the parties. Petitioner further argued that no trial dates were set, the ITC investigation had terminated without addressing patent validity, and no invalidity contentions had yet been filed in the district court cases, meaning there was no significant overlap with the IPR proceeding.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20, 22-26, and 29 of Patent 10,189,624 as unpatentable.