Possible Defects Won't Render Prior Art Inoperative

• Jurisdiction: United States,Federal
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Subject Matter: Intellectual Property, Patent
• Author: Colin Kreutzer, Emma N. Ng, Stacy Lewis, Thomas Irving and Amanda Murphy
• Published date: 17 January 2023

Holding

In Tekni-Plex, Inc. v. Converter Manufacturing, LLC, IPR2021-00916, Paper 70; IPR2021-00918, Paper 75; IPR2021-00919, Paper 77 (P.T.A.B. Oct. 20, 2022) the Patent Trial and Appeal Board ("the Board") invalidated all challenged claims of three patents: US 9,908,281; US 10,189,624; and 10,562,680. This post focuses on the earliest patent and its corresponding IPR to discuss the inoperability issue that appears in all the three IPRs/patents.

Background

The patents describe thermoformed plastic trays for use in food packaging, such as those wrapped in a plastic film. The trays are made from a plastic sheet that is heated, shaped and cut. The cut edges in such trays can be sharp enough to tear through the plastic wrapping film or cut the skin of workers handling them. The inventions overcame this problem by using a heated press to curl the cut edges inward, leaving a smooth, rounded border. Prior to curling, the cut edge has a flange profile (see element 160 in Fig. 1A) that is designed to be deflected inward by the heated press (see element 300 in Fig. 1C):

Claim 1 of the '281 patent reads:

1. An article formed from a thermoformable sheet having a peripheral edge and having sufficient rigidity to define the conformation of the article, the article comprising a body having the shape of a rounded rectangular tray with a concave compartment formed therein and having an extension extending peripherally away from the body, the extension including the peripheral edge of the thermoformable sheet and a bent portion interposed between the peripheral edge and the junction between the body and the extension, the bent portion having a smooth periphery and being sufficiently bent that the peripheral edge of the thermoformable sheet is displaced from the periphery of the article, whereby the article has a smooth periphery.

The '624 and '680 patents claim similar articles.

Tekni-Plex challenged most claims of all three patents over several references, including Portelli (WO 96/01179) and/or Portelli in view of Long (WO 2012/064203). IPR2021-00916, Paper 70 at *18. Converter did not dispute Tekni-Plex's assertion that Portelli discloses every limitation of claim 1. Id. at *38. However, Converter argued that plastic trays made according to the Portelli disclosure would be defective, citing expert testimony, statements from the prosecution history of Long, and Portelli's own drawings. Id. at *19-22. Converter used this "defective" rationale to argue that Portelli does...