Converter Manufacturing v. Tekni-Plex: Federal Circuit Affirms — US9908281B1 Unpatentable
Converter Manufacturing, LLC failed to defend US9908281B1 — a patent covering formed thermoplastic articles with smooth edges — against Tekni-Plex, Inc. The Federal Circuit affirmed the unpatentability finding per curiam after 502 days of appellate proceedings, ending Converter’s enforcement position at this level.
Federal Circuit closes the door on thermoplastic smooth-edge patent claim
Converter Manufacturing, LLC brought this appeal to the Court of Appeals for the Federal Circuit (Case No. 23-1803) challenging a prior determination that US9908281B1 — directed to a formed thermoplastic article having smooth edges — was unpatentable. The case was filed on April 26, 2023, with Tekni-Plex, Inc. as the appellee. The appeal arose from an infringement action context, with the underlying patentability question as the dispositive issue.
On September 9, 2024, a per curiam panel of Circuit Judges Dyk, Chen, and Cunningham issued a one-word disposition: AFFIRMED, under Federal Circuit Rule 36 — a summary affirmance signalling the panel found no legal error warranting written analysis. The basis of termination is recorded as ‘Unpatentable,’ confirming that the lower tribunal’s invalidity finding was upheld in its entirety. Converter’s concurrent motion for leave to file a supplemental appendix was denied as moot upon the affirmance.
The 502-day duration is consistent with a fully briefed Federal Circuit appeal. A Rule 36 affirmance — issued without an opinion — typically suggests the appellate panel viewed the lower decision as correct on its face and not warranting precedential guidance, which may limit Converter’s ability to distinguish or appeal further on substantive grounds. What remains unknown from the public record is the precise invalidity theory upheld below and whether inter partes review or ex parte reexamination was the originating proceeding.
Filing to Unpatentable in 502 days
502 days from filing to Federal Circuit decision — longer than median Fed. Cir. appeal
Federal Circuit affirms: what the unpatentability ruling means for both parties
Rule 36 affirmance: the court found no reversible error below
A Federal Circuit Rule 36 affirmance is a summary judgment on the appeal — the three-judge panel unanimously concluded that the lower tribunal’s unpatentability finding was correct and that no written opinion was necessary. This is not a procedural dismissal; it is a merits determination that the decision below contained no reversible legal error. The underlying unpatentability ruling therefore stands with full force.
Merits affirmance — Rule 36US9908281B1 is unpatentable — Converter’s enforcement position extinguished
With the Federal Circuit affirming unpatentability, Converter Manufacturing loses its ability to assert US9908281B1 in any infringement context. The patent’s claims are invalid as confirmed at the appellate level. Converter’s options are extremely limited: en banc rehearing at the Federal Circuit or certiorari to the Supreme Court, both of which face very high bars — particularly after a Rule 36 per curiam affirmance that signals judicial consensus.
Patent invalidated at appealTekni-Plex prevails — free to operate without US9908281B1 threat
Tekni-Plex, Inc. successfully defended the unpatentability finding through appellate review. The affirmance eliminates the risk of any future infringement suit by Converter based on this patent. Given that the invalidity is now confirmed at the Federal Circuit level, Tekni-Plex and any similarly situated thermoplastic article manufacturers can operate in this space without exposure to US9908281B1. Tekni-Plex’s opposition to Converter’s supplemental appendix motion was also sustained.
Appellee wins — patent threat removedSmooth-edge thermoplastic forming space opens — patent barrier eliminated
The affirmance of unpatentability strengthens freedom to operate for the broader thermoplastic article manufacturing sector. Competitors and new entrants developing formed thermoplastic articles with smooth edges no longer face a blocking patent from Converter Manufacturing. The Rule 36 disposition, while non-precedential, consistently signals the Federal Circuit’s agreement with the invalidity rationale — raising the bar for any future patent prosecution in this closely related technical space.
FTO improved for thermoplastic sectorFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Converter Manufacturing, LLC | Company | Thermoplastic article patent holder — asserting US9908281B1 for formed articles with smooth edgesSearch in Eureka ↗ |
| Defendant | Tekni-Plex, Inc. | Company | Tekni-Plex, Inc. — specialty materials and packaging manufacturer, prevailing appelleeSearch 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 per curiam disposition under Rule 36 affirms the lower tribunal’s unpatentability finding without elaboration — a mechanism reserved for cases where the panel unanimously finds no reversible error and no need for precedential guidance. Appellate review under Rule 36 applies a deferential standard to factual findings (clear error) and de novo review to legal conclusions on patentability. The absence of a written opinion limits its use as precedent but confirms the invalidity ruling is final at this appellate tier.
US9908281B1 — Formed thermoplastic article having smooth edges
US9908281B1 (application number US15/626013) covers a formed thermoplastic article characterised by smooth edges — likely addressing a manufacturing challenge in trimming or finishing thermoplastic sheet or film products. The patent’s claims were found unpatentable at the tribunal level and that finding has now been affirmed by the Federal Circuit. The thermoplastic forming space encompasses packaging, industrial liners, and consumer goods applications, making edge-quality innovations commercially relevant to multiple downstream sectors.
The invalidation of US9908281B1 removes a potential blocking right in a niche but commercially active segment of thermoplastic article manufacturing. For companies competing with Converter Manufacturing — or those designing products involving formed thermoplastic components with finished edges — the patent’s confirmed unpatentability reduces IP risk. However, the existence of this patent in prosecution history suggests the technical problem of smooth-edge forming attracted patenting interest, and related or continuation patents in the same family may still warrant monitoring.
Should you run an FTO against US9908281B1 and related Converter IP?
Product teams and R&D engineers working on formed thermoplastic articles — particularly those involving edge finishing, trimming, or smooth-edge geometry — should note that US9908281B1 has been confirmed unpatentable. However, Converter Manufacturing may hold related applications or continuations within the same patent family. Any product that reads on smooth-edge thermoplastic forming processes should still undergo a full FTO analysis to identify surviving related claims before commercialisation.
PatSnap Eureka’s FTO Search Agent can map the full patent family around US9908281B1, identify related applications, and surface any co-pending claims that may still be active. By running a targeted FTO query against the application number US15/626013 and assignee Converter Manufacturing, LLC, R&D and legal teams can assess residual IP risk in thermoplastic forming with confidence — and benchmark against the prior art landscape that drove this invalidation.
Run a freedom-to-operate analysis on US9908281B1 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit appeals involving thermoplastic and packaging patents
Federal Circuit cases affirming unpatentability of thermoplastic article and packaging manufacturing patents — relevant to teams tracking IP risk in this sector.
What this case signals for the thermoplastic packaging IP landscape
A Rule 36 affirmance of unpatentability is a strong signal for competitors and patent prosecutors working in thermoplastic article forming.
Rule 36 affirmances carry strategic weight despite no written opinion
Although a Rule 36 disposition creates no binding precedent, it consistently indicates unanimous appellate agreement with the lower ruling. For competitors monitoring this space, it suggests that the invalidity theory applied to US9908281B1 was robust enough to withstand full appellate scrutiny — a meaningful indicator for FTO and design-around strategy.
Patent prosecutors in thermoplastic forming should audit related claim portfolios
With US9908281B1 invalidated and affirmed, any continuation or related application in the same family faces heightened prior art scrutiny. Companies prosecuting patents on formed thermoplastic articles — particularly those emphasising edge geometry or finishing — should review claim scope in light of the invalidity basis applied in this proceeding.
Converter v Tekni-Plex — key questions answered
The Federal Circuit affirmed the lower tribunal’s finding that US9908281B1 — covering a formed thermoplastic article having smooth edges — is unpatentable. The per curiam decision was issued under Rule 36 on September 9, 2024, with no written opinion, indicating unanimous agreement that no reversible error was committed below.
A Rule 36 affirmance confirms the lower unpatentability ruling without a written opinion. It is a merits determination — not a procedural dismissal. The result is that US9908281B1’s claims are confirmed invalid at the appellate level, extinguishing Converter Manufacturing’s ability to assert this patent in infringement proceedings.
The recorded basis of termination is ‘Unpatentable,’ meaning the underlying tribunal found the asserted claims of US9908281B1 invalid on patentability grounds. The Federal Circuit affirmed this finding on appeal, making it final at the circuit level absent en banc rehearing or Supreme Court review.
After a Federal Circuit affirmance, Converter Manufacturing’s options are limited to petitioning for en banc rehearing before the full Federal Circuit or filing a petition for certiorari to the U.S. Supreme Court. Both are discretionary and face high thresholds. A Rule 36 per curiam affirmance, reflecting unanimous panel agreement, typically signals limited prospects for further review.
Yes. With US9908281B1 confirmed unpatentable at the Federal Circuit level, manufacturers of formed thermoplastic articles with smooth edges no longer face infringement risk from this specific patent. However, related family members or continuation applications by Converter Manufacturing should be checked, as those may still be active and could present residual IP risk in adjacent claim scopes.
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