PTAB

PGR2025-00025

Multi Color Corp v. Brook & Whittle Ltd

Key Events

Petition

Title: Recyclable Heat Shrink Film for Recyclable Container
Brief Description: The ’422 patent discloses a recyclable heat shrink label for use on recyclable containers, such as those made of polyethylene terephthalate (PET). The invention centers on a label comprising a heat shrink PET film and a light-blocking layer designed to be recyclable along with the container while protecting its contents from light degradation.

Prior Art Relied Upon: Petitioner's Gatorade Label, a commercial product publicly sold in substantial quantities since 2020.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that its commercially available Gatorade Label, a shrink sleeve label for PET bottles, embodies every limitation of the challenged claims. Through technical declarations and extensive analysis (including Fourier Transform Infrared Spectroscopy and Scanning Electron Microscopy with Energy Dispersive X-ray Spectroscopy), Petitioner asserted the Gatorade Label comprises a PET heat shrink film of approximately 40-60 microns thickness, a light-blocking layer with aluminum particulates that blocks over 80% of incident light, and a high-opacity layer with titanium dioxide. The label is constructed as a seamed sleeve and is recognized by the Association of Plastic Recyclers (APR) as meeting critical guidance protocols for recyclability with PET containers.

Prior Art Relied Upon: Gatorade Label (commercial product sold since 2020) and Febreze Label (commercial product sold since 2018).
Core Argument for this Ground:
- Prior Art Mapping: Claim 4 adds the limitation that the "high opacity layer is disposed between the indicia layer and the light blocking layer." Petitioner contended that while the Gatorade Label teaches all other elements, the Febreze Label—another shrink sleeve label manufactured and sold by Petitioner—explicitly discloses this specific layer arrangement.
- Motivation to Combine: A POSITA would combine the features of these two products because both were well-known, commercially successful shrink labels from the same entity, addressing the same goals of light blocking and recyclability. The Febreze Label’s layer structure represents a known, simple design choice. A POSITA would have been motivated to arrange the layers of the Gatorade Label in the same manner as the Febreze Label to achieve a predictable result, such as improving the visibility of printed graphics or achieving a particular aesthetic look.
- Expectation of Success: A POSITA would have had a high expectation of success, as the modification involves a simple, routine adjustment to the layer printing order during manufacturing, not the creation of new materials or overcoming any technical hurdles. It is a mere rearrangement of known elements from existing products to achieve a predictable outcome.

Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the claim limitation "wherein the recyclable shrink label is recyclable," present in all independent claims, is fatally indefinite. The patent specification allegedly provides numerous different and potentially conflicting definitions for what makes a label "recyclable." These include conditions such as: (1) no inks remaining after a caustic wash, (2) inks being designed to wash off, (3) meeting APR industry standards, (4) meeting Near Infrared (NIR) sorting standards, or (5) being "fully recyclable."
- Key Aspects: Because the patent fails to provide a single, clear standard, a POSITA would be unable to determine the scope of the claims with reasonable certainty. It is unclear which of the many disclosed standards must be met, making it impossible to ascertain the boundary between what is and is not an infringing product.
Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 4 based on the Gatorade Label combined with general POSITA knowledge and Mitchell (Application # 2017/0223879), relying on a similar layer rearrangement theory.

"Recyclable" Lacks Clear Technical Meaning: A central contention is that the term "recyclable" is not a term of art with a single, established meaning in the context of the patent. Petitioner argued the patent itself creates ambiguity by listing at least nine distinct criteria, ranging from performance in a wash cycle to compliance with various third-party protocols, without clarifying which one defines the claimed invention. This ambiguity makes the claim scope scientifically and technically indeterminable.
Physical Prior Art Analysis: Petitioner’s arguments rely heavily on detailed forensic analysis of its own commercial products (the Gatorade and Febreze labels). The petition presented empirical data to demonstrate that these products, sold years before the patent's priority date, physically meet the specific material composition, thickness, layer structure, and performance characteristics recited in the claims.

Petitioner requests institution of post-grant review and cancellation of claims 1-19 of the ’422 patent as unpatentable under 35 U.S.C. §§ 102 and 103, and as indefinite under 35 U.S.C. § 112.