July 11, 2016
Authored and Edited by Danielle C. Pfifferling; Susan Y. Tull
In Viva Healthcare Packaging USA Inc. v. CTL Packaging USA Inc., 197 F. Supp. 3d 837 (W.D.N.C. 2016), the U.S. District Court for the Western District of North Carolina denied Defendants’ motion for SJ for lack of enablement. This case involves two patents claiming methods of manufacturing flexible plastic tubes and other thin-walled tubular containers for use in the cosmetics industry. The manufacturing of these tubes involves heating up plastic and injecting it into a mold to cool and harden, called “injection molding.” The patents identify physical blends of polymers that can be used in the injection molding process to make flexible, thin-walled plastic objects with properties to protect the encased cosmetics, such as crack-resistance and an ability to withstand handling.
Defendants argued that the patents require undue experimentation, or perpetual research and development, to select the polymers and polymer blends used in the injection molding process. With respect to the first patent, Plaintiffs responded that the number of commercially available polymers that meet the combination of limitations—such as, injection-moldable under certain conditions, flexibility, and certain environmental stress cracking resistance—sufficiently narrowed the claims. Regarding the second patent, Plaintiffs argued that the claims require the polymer blend to be flexible, capable of flowing, have a high MFI, and be compatible with at least one other polymer. Since the number of commercially available polymers that meet these requirements in the cosmetic industry is low and because most polymers are not compatible with each other, the universe of polymers available is adequately limited. Additionally, based on these requirements, the choice of polymers are further limited by practical commercial considerations, which restrict the choice of polymers to only those that would produce tubes acceptable for use in the cosmetics industry.
The court determined that Plaintiffs raised genuine issues of material fact as to the amount and type of experimentation required. Although the court said that ultimately a trier-of-fact may find that experimentation is undue, Defendants did not prove by clear and convincing evidence that either patent is invalid for non-enablement such that SJ is inappropriate.
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