Multi-Color Corporation v. Brook & Whittle Ltd.

Petition

Petition summary

Invalidity analysis

Prosecution analysis

Examiner search

## 1. Case Identification
- Case Number: Unassigned (Post-Grant Review)
- Patent #: [11,961,422](https://ai-lab.exparte.com/patent/11961422)
- Filed: January 16, 2025
- Petitioner(s): [Multi-Color Corporation](https://ai-lab.exparte.com/party/multi--color-corp)
- Patent Owner(s): [Brook & Whittle Limited](https://ai-lab.exparte.com/party/brook-and-whittle-ltd)
- Challenged Claims: 1-19

## 2. Patent Overview
- Title: RECYCLABLE HEAT SHRINK FILM FOR RECYCLABLE CONTAINER
- Brief Description: The [’422](https://ai-lab.exparte.com/patent/11961422) patent discloses a heat shrink label for containers, comprising a polyethylene terephthalate (PET) film designed to be recyclable with a PET container. The label includes a light-blocking layer to protect the container's contents from light degradation.

## 3. Grounds for Unpatentability

#### Ground 1: Anticipation of Claims 1-3 and 5-19 under 35 U.S.C. §102 by the Gatorade Label
  - **Prior Art Relied Upon:** Multi-Color's [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003) (a commercial product publicly sold since 2020).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that its [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003), a commercial product sold before the patent's priority date, meets every limitation of the challenged claims. The [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003) is a heat shrink sleeve made of PET film with a thickness of 40-60 µm, a light-blocking layer of aluminum particulates, and a high-opacity layer of titanium dioxide. Petitioner provided extensive technical evidence, including Fourier Transform Infrared Spectroscopy (FTIR) to confirm the PET composition, Scanning Electron Microscopy (SEM) to show layer thickness and composition, and transmission measurements to show it blocks over 80% of light from 220-900 nm. The label was also shown to be "recyclable with a PET container" based on tests demonstrating ink removal in a caustic wash, consistent with industry standards recognized by the Association of Plastic Recyclers (APR).

#### Ground 2: Obviousness of Claim 4 under 35 U.S.C. §103 over the Gatorade Label in view of POSITA Knowledge and Mitchell
  - **Prior Art Relied Upon:** [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003), general knowledge of a Person of Ordinary Skill in the Art (POSITA), and [Mitchell](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1020) (Application # [2017/0223879](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1020)).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Claim 4 requires the high opacity layer to be disposed between the indicia layer and the light-blocking layer. Petitioner contended that while the [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003) teaches all other elements, rearranging its layers would have been obvious. [Mitchell](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1020), previously cited by the patent examiner, teaches a similar layer arrangement for a shrink label.
    - **Motivation to Combine:** A POSITA would combine the known [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003) with the layer arrangement taught by [Mitchell](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1020) or general skill to achieve the predictable results of improved print visibility and a desired metallic aesthetic. This was presented as a simple and routine modification of the printing process.
    - **Expectation of Success:** Success would have been expected because it involved only a minor, well-understood adjustment of layer order in a standard label manufacturing process, with no new components or unpredictable interactions.

#### Ground 3: Obviousness of Claim 4 under 35 U.S.C. §103 over the Gatorade Label in view of the Febreze Label
  - **Prior Art Relied Upon:** [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003) and Multi-Color's [Febreze Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1004) (a commercial product publicly sold since 2018).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that its [Febreze Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1004), another of its own prior art products, already discloses the specific layer structure of claim 4 (high opacity layer between the indicia and light-blocking layers).
    - **Motivation to Combine:** A POSITA would be motivated to modify the [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003) by applying the known layer structure from the [Febreze Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1004). Both are similar shrink-sleeve products from the same manufacturer, and combining their respective features—the recyclability of the [Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003) with the layer structure of the [Febreze Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1004)—was a straightforward application of known techniques to a known product for a predictable improvement.
    - **Expectation of Success:** A POSITA would have had a high expectation of success, as the combination merely applies a proven layer configuration from one commercial label to another similar label, requiring no invention or undue experimentation.

#### Ground 4: Indefiniteness of Claims 1-19 under 35 U.S.C. §112
  - **Core Argument for this Ground:** Petitioner argued that claims 1-19 are indefinite because the central limitation "wherein the recyclable shrink label is recyclable" is ambiguous and lacks reasonable certainty. The patent specification was alleged to provide at least nine different, and potentially conflicting, definitions for what makes a label "recyclable." These definitions include complete ink removal in a caustic wash, compliance with APR industry protocols, meeting specific Near-Infrared (NIR) sorting standards, and being "fully recyclable." Petitioner asserted that a POSITA would be unable to determine which standard applies, rendering the scope of the claims unclear and therefore indefinite.

## 4. Key Claim Construction Positions
- The term "wherein the recyclable shrink label is recyclable" was central to the petition's indefiniteness challenge. Petitioner argued this term is not supported by a clear and consistent definition in the specification. Instead, the patent allegedly provides numerous, non-limiting, and potentially contradictory examples of what "recyclable" could mean, preventing a POSITA from ascertaining the claim scope with reasonable certainty.

## 5. Key Technical Contentions (Beyond Claim Construction)
- A core contention of the petition was that the prior art "[Gatorade Label](https://ai-lab.exparte.com/docs/ptab/PGR2025-00025/1003)" is not merely a paper reference but a physical, commercial product that embodies every element of the challenged claims. This was supported by extensive empirical data from laboratory testing, including FTIR, SEM-EDS, and optical transmission analysis, which Petitioner used to create a direct, element-by-element mapping of the physical product to the claim language.

## 6. Relief Requested
- Petitioner requested the institution of a Post-Grant Review (PGR) and the cancellation of claims 1-19 of Patent [11,961,422](https://ai-lab.exparte.com/patent/11961422) as unpatentable under §102 and §103, and as invalid for indefiniteness under §112.

Recyclable shrink label patent challenged on multiple grounds. A commercial Gatorade label cited for anticipation of all 19 claims, also argued as indefinite.