New York Packaging II v. Unistar Plastics: Stacked Bag Patents Dismissed With Prejudice
New York Packaging II, LLC asserted two patents covering stacked plastic and headerless produce bag technology against Unistar Plastics, LLC in the Southern District of Texas. The parties reached a stipulated dismissal with prejudice after 374 days, with each side bearing its own legal costs — a resolution that permanently closes the door on these specific claims.
Stacked Plastic Bag Patent Dispute Ends in Stipulated Dismissal With Prejudice
On October 9, 2023, New York Packaging II, LLC filed an infringement action against Unistar Plastics, LLC in the U.S. District Court for the Southern District of Texas, before Judge Charles Eskridge. The complaint asserted two patents — US10513078B2 and US11440267B2 — directed at stacked plastic bag configurations, including stacks of headerless produce bags, against Unistar’s competing product line.
The case closed on October 17, 2024, via a stipulated dismissal with prejudice under FRCP 41(a)(1)(A)(ii). Both parties jointly agreed to terminate all claims and counterclaims permanently, with each side absorbing its own legal fees and costs. Dismissal with prejudice means neither party may refile the same claims arising from these patents against each other in the future.
At 374 days, the timeline suggests the parties engaged in meaningful negotiation before reaching resolution — likely after early discovery or claim construction exchanges. The equal cost-bearing arrangement is consistent with a negotiated settlement or cross-licensing outcome, though the precise commercial terms remain confidential and are not reflected in the public record.
Filing to Dismissed with Prejudice in 374 days
374 days to close — consistent with pre-trial settlement in district court packaging IP disputes
Dismissed with prejudice: what the stipulation means for both parties
FRCP 41(a)(1)(A)(ii) — stipulated dismissal with prejudice
A dismissal under Rule 41(a)(1)(A)(ii) requires both parties to sign the stipulation, making it a fully consensual exit. The ‘with prejudice’ designation is the critical element: it operates as a final judgment on the merits, permanently barring New York Packaging II from reasserting these patent claims against Unistar on the same grounds. No court order is required — the filing itself closes the case.
Permanent bar on re-filingClaims extinguished — but patents survive against third parties
For New York Packaging II, dismissal with prejudice ends enforcement of US10513078B2 and US11440267B2 against Unistar specifically. Critically, the patents themselves remain valid and enforceable — the dismissal is claim-specific, not a validity ruling. New York Packaging II retains the right to assert these patents against other producers of stacked or headerless plastic bag products.
Patents remain enforceable vs. othersUnistar clears this dispute — with finality but no invalidity finding
Unistar Plastics achieves certainty: it cannot be sued again by New York Packaging II on these specific patent claims. However, because no invalidity or non-infringement ruling was made on the merits, Unistar receives no formal finding it can use as precedent. The absence of a fee award suggests neither side was found to have litigated in bad faith under the exceptional case standard.
No merit ruling — no invalidity shieldPackaging sector remains on notice: patents still active in the market
The stipulated dismissal provides no signal about the technical validity or scope of the asserted claims. Other manufacturers of stacked plastic bags or headerless produce bags face an unchanged risk landscape — US10513078B2 and US11440267B2 remain in force. The cost-neutral resolution suggests this dispute may have been resolved commercially, potentially through a licensing arrangement not reflected in the court record.
Ongoing third-party infringement riskFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | New York Packaging II, LLC | Company | Plastic packaging IP licensor — holder of US10513078B2 and US11440267B2Search in Eureka ↗ |
| Defendant | Unistar Plastics, LLC | Company | Unistar Plastics, LLC — manufacturer of stacked and produce plastic bag productsSearch in Eureka ↗ |
| Plaintiff counsel | Joseph J. Zito | Attorney | Counsel for New York Packaging II, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Dnl Zito Castellano | Law Firm | Representing New York Packaging II, LLCSearch in Eureka ↗ |
| Defendant counsel | Stephen McKell Kepper | Attorney | Counsel for Unistar Plastics, LLCSearch in Eureka ↗ |
| Defendant law firm | Intelluctual Property Consulting, LLC | Law Firm | Representing Unistar Plastics, LLCSearch in Eureka ↗ |
| Presiding judge | Judge Charles Eskridge | Judge | Texas Southern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulation language — ‘all claims and counterclaims, with prejudice’ — is unambiguous in its finality. The inclusion of counterclaims in the dismissal confirms Unistar had asserted affirmative defenses or invalidity claims, all of which are equally extinguished. The FRCP 41(a)(1)(A)(ii) mechanism requires mutual consent, distinguishing this from a unilateral plaintiff withdrawal. No merits adjudication occurred; the court made no ruling on infringement, validity, or claim scope.
US10513078B2 & US11440267B2 — Stacked Plastic Bag Technology
US10513078B2 (App. No. 14/872871) and US11440267B2 (App. No. 16/695174) both protect innovations in the configuration and stacking of plastic bags, with the latter directed specifically at headerless produce bag formats used in retail and grocery environments. The sequential application numbers suggest a continuation or improvement relationship between the two patents, covering an evolving product family rather than independent inventions.
For the plastic packaging sector, this patent family represents a targeted effort to control a high-volume commodity product format. Headerless produce bags are ubiquitous in grocery retail, and any manufacturer, converter, or private-label supplier operating in that space faces potential exposure. The fact that New York Packaging II filed suit — rather than relying solely on licensing outreach — signals an enforcement posture that competitors should monitor closely.
Should you run an FTO against US10513078B2 and US11440267B2?
Any company manufacturing, importing, or distributing stacked plastic bags or headerless produce bags in the U.S. market should treat this litigation as a direct prompt to conduct a freedom-to-operate analysis. New York Packaging II’s willingness to litigate to the 12-month mark before settling is consistent with an active enforcement program. Distributors and grocery chains sourcing these formats from domestic converters may also carry downstream exposure depending on their supply agreements.
PatSnap Eureka’s FTO Search Agent can map the full claim scope of US10513078B2 and US11440267B2 against your product specifications, identify prior art that may bear on validity, and flag related continuation applications that could extend the patent family. R&D and procurement teams can run a targeted landscape analysis in minutes — before a licensing letter arrives.
Run a freedom-to-operate analysis on US10513078B2 to assess your product’s exposure
Run FTO in Eureka →Similar Plastic Packaging Patent Cases in U.S. District Courts
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What this case signals for the plastic packaging IP landscape
A with-prejudice stipulation in under 13 months suggests commercial resolution — but leaves the patent threat fully intact for the wider market.
These patents remain live enforcement tools against all other competitors
Dismissal with prejudice binds only Unistar. US10513078B2 and US11440267B2 are still active and fully enforceable. Any manufacturer or distributor of stacked plastic bags or headerless produce bags should treat this case as a signal of enforcement intent, not as a resolution of patent validity.
Cost neutrality is a hallmark of negotiated settlement, not litigation exhaustion
When both parties agree to bear their own costs, it typically reflects a bargained outcome — a license, royalty arrangement, or commercial agreement struck before trial. Practitioners should note that the public record reveals nothing about the underlying commercial terms, which may include ongoing royalty obligations for Unistar.
New v Unistar — key questions answered
New York Packaging II asserted two patents: US10513078B2 (App. No. 14/872871) and US11440267B2 (App. No. 16/695174). Both cover stacked plastic bag technology, with US11440267B2 directed specifically at headerless produce bag configurations commonly used in grocery retail environments.
The dismissal was entered by stipulation under FRCP 41(a)(1)(A)(ii), meaning both parties mutually agreed to terminate all claims and counterclaims permanently. ‘With prejudice’ means the same claims cannot be refiled. The court made no ruling on the merits — the outcome is consistent with a negotiated commercial resolution, though specific terms are not public.
No. A dismissal with prejudice under FRCP 41 does not constitute a ruling on patent validity, claim scope, or infringement. Both patents remain in force and fully enforceable against third parties. Only Unistar Plastics is protected from further suit on these specific claims by New York Packaging II.
New York Packaging II was represented by Joseph J. Zito of DNL Zito Castellano. Unistar Plastics was represented by Stephen McKell Kepper of Intellectual Property Consulting, LLC. The case was presided over by Judge Charles Eskridge in the U.S. District Court for the Southern District of Texas.
The accused products were described as ‘numerous stacks of plastic bags’ and ‘stacks of headerless produce bags’ manufactured or distributed by Unistar Plastics, LLC. These product categories align directly with the technical scope of the two asserted patents covering plastic bag stacking configurations and headerless produce bag formats.
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