PTAB

IPR2025-01176

American Fuji Seal Inc v. Brook & Whittle Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Recyclable Shrink Label with Light Blocking Layer
  • Brief Description: The ’422 patent discloses a multi-layer, recyclable heat shrink label for packaging. The label comprises a polyethylene terephthalate (PET) heat shrink film and a light blocking layer disposed adjacent to one surface of the film to protect container contents while being compatible with PET container recycling streams.

3. Grounds for Unpatentability

Ground 1: Obviousness over Schurr and POSITA Knowledge - Claims 1-19 are obvious over Schurr in view of the knowledge and skill of a POSITA.

  • Prior Art Relied Upon: Schurr (Patent 11,358,363).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Schurr taught nearly all limitations of the challenged claims. Schurr disclosed a heat-shrinkable, multi-layer polyester film for wrapping containers that it explicitly stated "can be recycled easily." The film comprised a first polymer ply (Ply A) with a dark pigment (e.g., carbon black, fine metal particles) and a second polymer ply (Ply B) with a white pigment (e.g., titanium dioxide). Petitioner contended Ply A constituted the claimed "light blocking layer" with its "light blocking component." Schurr further disclosed that the polyester can be PET, taught a film thickness (20-100µm) that rendered the claimed 15-100µm range obvious, and described high light blocking (≥88% over 360-750nm). For recyclability, Schurr taught that its film could be separated from transparent objects like PET containers via density-based processes, a standard method in PET recycling.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would have been motivated to apply ordinary skill to Schurr's teachings to arrive at the claimed invention. Motivations included routine optimization to meet specific quantitative metrics not explicitly stated in Schurr, such as achieving ≥80% light blocking over the broader 200-900nm range (a known need for protecting products from UV/NIR radiation) and confirming shrinkage values at 100°C (a standard industry test condition). The strong industry need for PET recycling compatibility would motivate a POSITA to confirm and optimize Schurr’s "easily recycled" film for use with PET containers.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because Schurr used well-understood materials (PET, carbon black, TiO2) and a layered structure. Modifying parameters like pigment concentration to adjust light absorption or testing shrinkage at standard temperatures involved predictable, well-established principles and routine experimentation.

Ground 2: Obviousness over Kitano and Lee - Claims 1-19 are obvious over Kitano in view of Lee and the knowledge and skill of a POSITA.

  • Prior Art Relied Upon: Kitano (JP 2017-114041 A) and Lee (U.S. Pat. Pub. No. 2022/0389214).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kitano and Lee combined taught or suggested all limitations. Kitano disclosed a multi-layer, light-shielding laminate for shrink labels, including a PET substrate, a white ink "shielding layer," and a "light shielding layer" containing aluminum particles or a mixture of TiO2 and carbon black. This provided the fundamental light-blocking structure. Lee addressed the specific problem of PET recycling compatibility by teaching a heat-shrinkable label made from a PET/copolyester blend with controlled crystallizability, designed to be recycled while still attached to a PET container, avoiding issues of label fusion during processing.
    • Motivation to Combine: The motivation was to address two well-known and concurrent industry demands: protecting light-sensitive products and ensuring full compatibility with PET recycling streams. A POSITA would be motivated to improve Kitano's effective light-blocking label by replacing its generic PET substrate with Lee's specialized, recycling-compatible PET film. This combination leveraged each reference for its stated purpose—Kitano for light-blocking and Lee for recyclability—to create a single, superior product that solved both problems.
    • Expectation of Success: A POSITA would have expected success in this combination. Both references utilized PET-based chemistry, suggesting good material compatibility. The process of applying printed ink and coating layers (as taught by Kitano) onto a polymer film substrate (as taught by Lee) is a fundamental and routine practice in the industry, minimizing the risk of unexpected technical hurdles.

4. Key Claim Construction Positions

  • "recyclable shrink label is recyclable with a PET container": Petitioner argued that while this phrase describes an intended use, to the extent it is given patentable weight, a POSITA would understand it to mean the label is capable of entering and undergoing the PET recycling process alongside a PET container without unduly contaminating the recycled PET. This was a key point of contention during prosecution, where the Patent Owner argued that prior art with embedded pigments was inherently not recyclable.
  • "Adjacent": Petitioner asserted that a POSITA would understand this term as defined in the ’422 patent’s specification, meaning the layer is closest to a given surface, but acknowledging that other optional layers could be disposed between them. This interpretation supported finding that multi-layer prior art films met the limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-19 of the ’422 patent as unpatentable.