Converter Manufacturing v. Tekni-Plex: Federal Circuit Affirms Unpatentability
Converter Manufacturing, LLC appealed a patentability ruling against US10189624B2 — a patent covering smooth-edged, multi-method film-sealable tray articles — but the Federal Circuit affirmed the finding of unpatentability in a Rule 36 judgment. The appeal ran 502 days before closing with no new merits analysis from the court.
Federal Circuit seals Converter Manufacturing’s patent challenge with Rule 36 affirmance
Converter Manufacturing, LLC brought Case No. 23-1802 before the United States Court of Appeals for the Federal Circuit on 26 April 2023, appealing an adverse patentability determination concerning US10189624B2. That patent — filed under application number US15/674787 — covers a tray-shaped article engineered with smooth edges and designed to accommodate multiple film sealing methods, a feature relevant to food packaging and industrial tray-sealing applications.
On 9 September 2024, the Federal Circuit issued a one-line Rule 36 judgment affirming the prior ruling. A Rule 36 affirmance carries full precedential weight for the parties but issues without a written opinion, meaning the appellate panel found no reversible error sufficient to warrant an explanatory decision. The underlying determination of unpatentability therefore stands as the final disposition of US10189624B2.
The 502-day duration from filing to close is consistent with contested Federal Circuit appeals involving patentability questions, though the Rule 36 outcome suggests the panel did not view the legal issues as genuinely close. What remains unknown from the public record is the precise invalidity ground — whether anticipation, obviousness, or another basis — that drove the original unpatentability finding and was silently adopted on appeal.
Filing to Unpatentable in 502 days
502 days — above the median Federal Circuit appeal duration of ~12 months
Federal Circuit affirms: what the Rule 36 ruling means for both parties
Rule 36 affirmance: no reversible error found
A Federal Circuit Rule 36 judgment affirms the decision below without a written opinion. It signals that the appellate panel — after full briefing and argument — identified no reversible error in the lower tribunal’s unpatentability ruling. The affirmance carries the same legal force as a reasoned opinion but provides no new guidance on the substantive legal standards applied. For Converter Manufacturing, all appellate remedies at this level are exhausted.
Appellate affirmance — no written opinionUS10189624B2 confirmed unpatentable — enforcement ends
The affirmance confirms that US10189624B2 is unpatentable, meaning Converter Manufacturing cannot enforce the patent against Tekni-Plex or any other party. The patent’s claims are effectively nullified. Converter Manufacturing’s only remaining avenue would be a petition for certiorari to the Supreme Court, which is granted in a small fraction of Federal Circuit IP cases and typically requires a circuit split or constitutional question.
Patent unenforceable — enforcement path closedTekni-Plex prevails — freedom to operate confirmed
Tekni-Plex, represented by Dechert LLP, successfully defended the unpatentability ruling on appeal. With the patent confirmed unpatentable, Tekni-Plex — and indeed any other party in the tray-sealing space — faces no infringement exposure from US10189624B2. The Rule 36 outcome also means no new claim construction or validity guidance that could complicate related product lines or future IP disputes.
Defendant wins — full appellate victoryTray-sealing sector: one fewer patent barrier in the landscape
The invalidation of US10189624B2 removes a potentially blocking patent from the smooth-edge, multi-method film-sealing tray market. Competitors and new entrants designing tray-shaped articles with smooth edges need not design around this patent’s claims. However, the absence of a written opinion means the industry receives no court-articulated guidance on where the line of patentability sits for this class of packaging innovations.
Patent landscape — one blocking claim removedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Converter Manufacturing, LLC | Company | Packaging technology company — holder of US10189624B2 covering smooth-edged sealable tray articlesSearch in Eureka ↗ |
| Defendant | Tekni-Plex, Inc. | Company | Tekni-Plex, Inc. — specialty packaging and materials manufacturer defending against patent assertionSearch in Eureka ↗ |
| Plaintiff counsel | Benjamin D. Schwartz | Attorney | Counsel for Converter Manufacturing, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Joseph Anthony Farco | Attorney | Counsel for Converter Manufacturing, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Norris McLaughlin, PA | Law Firm | Representing Converter Manufacturing, LLCSearch in Eureka ↗ |
| Defendant counsel | Michael A. Fisher | Attorney | Counsel for Tekni-Plex, Inc.Search in Eureka ↗ |
| Defendant law firm | Dechert LLP | Law Firm | Representing Tekni-Plex, Inc.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Court of Appeals for the Federal CircuitSearch in Eureka ↗ |
Official order — verbatim text
The Federal Circuit’s order — ‘AFFIRMED. See Fed. Cir. R. 36.’ — is the appellate court’s most compressed form of disposition. Issued without a written opinion, it confirms the panel applied the applicable standard of review (typically de novo for legal questions of patentability) and found no error warranting reversal. For Converter Manufacturing, the practical effect is identical to a detailed opinion: US10189624B2 is unpatentable and unenforceable. The absence of reasoning, however, leaves the industry without appellate guidance on the specific invalidity grounds.
US10189624B2 — Smooth-edged tray article with multi-method film sealing
US10189624B2, filed under application number US15/674787, protects a tray-shaped article engineered with smooth edges and designed to be amenable to multiple film sealing methods. The patent sits within the specialty rigid and semi-rigid packaging domain, addressing a manufacturing and usability challenge: producing trays that eliminate sharp-edge hazards while remaining compatible with a variety of industrial film-sealing processes — including heat-seal, peel-seal, and adhesive-based techniques common in food and medical packaging lines.
From a competitive standpoint, the patent’s claim to multi-method sealing compatibility gave it potential blocking power across a wide range of packaging lines. Had it survived, it could have required competitors to either design around smooth-edge tray geometries or license the technology. The Federal Circuit’s affirmance of unpatentability removes that leverage entirely, suggesting the claimed innovations lacked sufficient novelty or non-obviousness over the prior art — though the exact basis remains undisclosed in the public record.
Should you run an FTO against US10189624B2?
Manufacturers, converters, and material suppliers producing smooth-edged trays or multi-method film-sealable packaging should note that US10189624B2 has been confirmed unpatentable. If this patent appeared in prior FTO clearance searches as a risk flag, your analysis can now be updated to reflect its invalidation. However, any related family members — continuations, divisionals, or foreign equivalents filed under the same priority — warrant independent review before relying on this outcome for complete clearance.
PatSnap Eureka’s FTO Search Agent can map the full patent family around US15/674787, identify any surviving related applications, and surface prior art that informed the unpatentability finding. R&D and product teams designing tray-sealed packaging can use Eureka to confirm their design space is clear and to monitor Converter Manufacturing’s remaining portfolio for new assertion risks.
Run a freedom-to-operate analysis on US10189624B2 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit appeals: packaging and tray-article patent invalidity
Cases before the Federal Circuit involving packaging patent unpatentability and Rule 36 affirmances in the tray-sealing and film packaging technology space.
What this case signals for the packaging patent IP landscape
A Rule 36 affirmance at the Federal Circuit carries real consequences for patent strategy in the tray-sealing and film packaging space.
Rule 36 outcomes signal weak appellate positions — file stronger prosecution records
When the Federal Circuit issues a Rule 36 affirmance, it typically signals that the appeal lacked a meritorious legal argument distinguishing the lower ruling. For patent applicants in the packaging space, this underscores the importance of building a robust prosecution history that anticipates invalidity challenges before litigation arises.
Unpatentability at the Federal Circuit level creates clean FTO for competitors
With US10189624B2 confirmed unpatentable and no further appeal likely to succeed, manufacturers of smooth-edged film-sealable tray products can treat this patent as a cleared obstacle. IP teams should update their FTO analyses and freedom-to-design assessments to reflect this outcome and document it for product clearance files.
Converter v Tekni-Plex — key questions answered
The Federal Circuit affirmed the lower tribunal’s finding that US10189624B2 is unpatentable, issuing a one-line Rule 36 judgment on 9 September 2024. The patent covers smooth-edged tray articles amenable to multiple film sealing methods. The affirmance means the patent is confirmed invalid and unenforceable against Tekni-Plex and any other party.
A Rule 36 affirmance confirms the lower decision — here, unpatentability — without issuing a written opinion. It carries the same legal effect as a full opinion for the parties involved. The patent is unpatentable, Converter Manufacturing cannot enforce it, and no new legal reasoning is published. The panel found no reversible error in the record.
No. With the unpatentability ruling affirmed by the Federal Circuit, US10189624B2 is not enforceable. Converter Manufacturing’s appellate options at the Federal Circuit are exhausted. A Supreme Court certiorari petition remains theoretically available but is granted in only a fraction of IP appeals and typically requires broader legal questions than unpatentability fact disputes.
US10189624B2 covers a tray-shaped article with smooth edges that is compatible with multiple film sealing methods — including heat-seal and peel-seal techniques widely used in food and medical packaging. Its commercial significance lay in its potential to block or license a broad class of packaging tray designs across multiple industrial sealing platforms.
Converter Manufacturing, LLC was represented by Benjamin D. Schwartz and Joseph Anthony Farco of Norris McLaughlin, PA. Tekni-Plex, Inc. was represented by Michael A. Fisher of Dechert LLP. Tekni-Plex prevailed, with the Federal Circuit affirming the unpatentability of US10189624B2 via a Rule 36 judgment.
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