Smart Packaging Solutions v. Perfect Plastic Printing: Four Smart Card Patents, 1,140-Day Dispute
Smart Packaging Solutions, SA brought a patent infringement action against Perfect Plastic Printing, Corp. in Delaware, asserting four US patents covering smart card technology. After more than three years of litigation, the parties jointly stipulated to dismiss the case with prejudice — each side absorbing its own legal costs.
Three years of smart card patent litigation ends by mutual stipulation
Smart Packaging Solutions, SA — a smart card technology company and holder of a portfolio of US patents covering smart card data encoding, card body structures, and related manufacturing methods — filed suit against Perfect Plastic Printing, Corp. in the District of Delaware on April 20, 2021. The complaint alleged infringement of four issued US patents: US9195932B2, US9165240B2, US9633304B2, and US9033250B2, all directed to aspects of smart card technology. The case was assigned to Judge Christopher J. Burke.
After 1,140 days, the parties jointly filed a stipulation under Federal Rule of Civil Procedure 41(a)(1)(A)(ii) to voluntarily dismiss the action with prejudice. The stipulation explicitly provides that each party bears its own costs and attorney fees, with no fee-shifting in either direction. A dismissal with prejudice is a final adjudication on the merits for res judicata purposes, meaning Smart Packaging Solutions cannot re-file the same infringement claims against Perfect Plastic Printing on these four patents.
The duration — over three years from filing to closure — is notable for a case ending in voluntary dismissal, suggesting the parties likely engaged in substantive litigation activity, potentially including claim construction proceedings or inter partes review challenges, before reaching a resolution. The absence of a disclosed settlement amount and the mutual cost-bearing arrangement is consistent with a negotiated resolution, though the public record does not confirm whether a confidential settlement accompanied the dismissal. The specific terms that drove both parties to this endpoint remain unknown from publicly available filings.
Filing to Voluntary dismissal in 1140 days
1,140 days in litigation — roughly 3× the median time-to-resolution for voluntary dismissals in Delaware District Court
Dismissed with prejudice: what the stipulated termination means for both parties
Rule 41(a)(1)(A)(ii) dismissal with prejudice: a final bar on re-filing
A voluntary dismissal under Rule 41(a)(1)(A)(ii) requires a signed stipulation from all parties. Where, as here, it is ‘with prejudice,’ the dismissal operates as a final judgment on the merits. Smart Packaging Solutions is permanently barred from re-asserting the same four patents against Perfect Plastic Printing on the same accused products. This is the most final form of voluntary exit from litigation short of a court judgment.
Permanent bar on re-filingPatent holder walks away — enforcement rights against this defendant extinguished
Smart Packaging Solutions surrendered its right to pursue Perfect Plastic Printing on US9195932B2, US9165240B2, US9633304B2, and US9033250B2 for the accused conduct. However, the four patents themselves remain in force and enforceable against other parties. The with-prejudice designation forecloses only this specific dispute. A confidential settlement may have accompanied the dismissal, but the public record is silent on that point.
Patents remain valid vs. third partiesPerfect Plastic Printing secures permanent exit — at its own legal cost
Perfect Plastic Printing achieves a permanent end to this litigation without any public finding of infringement or validity. The mutual cost-bearing arrangement means no fees were awarded to either side, suggesting neither party achieved a clear courtroom victory that would trigger fee-shifting under 35 U.S.C. § 285. After more than three years of defense costs, the defendant’s exposure on these four patents — at least from this plaintiff — is now closed.
No infringement finding on recordSmart card IP landscape: patents survive, competitive risk persists for the sector
The dismissal does not resolve the underlying validity or scope of the four asserted smart card patents. Competitors and card manufacturers operating in this space should note that Smart Packaging Solutions retains an active enforcement portfolio. The three-year litigation duration and with-prejudice exit is consistent with a negotiated resolution, which typically signals the patent holder extracted some commercial value — though this remains unconfirmed from public filings.
Portfolio remains enforcement-readyFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Smart Packaging Solutions, SA | Company | Smart card technology company — holder of US9195932B2 and three related smart card patentsSearch in Eureka ↗ |
| Defendant | Perfect Plastic Printing, Corp. | Company | Perfect Plastic Printing, Corp. — plastic card manufacturer and alleged infringer of smart card patentsSearch in Eureka ↗ |
| Plaintiff counsel | Andrew H Velzen | Attorney | Counsel for Smart Packaging Solutions, SASearch in Eureka ↗ |
| Plaintiff counsel | Daniel A. Boehnen | Attorney | Counsel for Smart Packaging Solutions, SASearch in Eureka ↗ |
| Plaintiff counsel | Jonathan A. Choa | Attorney | Counsel for Smart Packaging Solutions, SASearch in Eureka ↗ |
| Plaintiff counsel | Paul H. Berghoff | Attorney | Counsel for Smart Packaging Solutions, SASearch in Eureka ↗ |
| Plaintiff counsel | Philip A. Rovner | Attorney | Counsel for Smart Packaging Solutions, SASearch in Eureka ↗ |
| Plaintiff law firm | Potter, Anderson & Corroon LLP | Law Firm | Representing Smart Packaging Solutions, SASearch in Eureka ↗ |
| Defendant counsel | Charles T. Steenburg | Attorney | Counsel for Perfect Plastic Printing, Corp.Search in Eureka ↗ |
| Defendant counsel | Emily DiBenedetto | Attorney | Counsel for Perfect Plastic Printing, Corp.Search in Eureka ↗ |
| Defendant counsel | Gregory F. Corbett | Attorney | Counsel for Perfect Plastic Printing, Corp.Search in Eureka ↗ |
| Defendant counsel | Jeff Castellano | Attorney | Counsel for Perfect Plastic Printing, Corp.Search in Eureka ↗ |
| Defendant counsel | John W. Shaw | Attorney | Counsel for Perfect Plastic Printing, Corp.Search in Eureka ↗ |
| Defendant counsel | Turhan F. Sarwar | Attorney | Counsel for Perfect Plastic Printing, Corp.Search in Eureka ↗ |
| Defendant law firm | DLA Piper, LLP (US) | Law Firm | Representing Perfect Plastic Printing, Corp.Search in Eureka ↗ |
| Defendant law firm | Shaw Keller LLP | Law Firm | Representing Perfect Plastic Printing, Corp.Search in Eureka ↗ |
| Presiding judge | Judge Christopher J. Burke | Judge | Delaware District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulated dismissal language — ‘voluntarily dismissed with prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), with each party to bear its own costs and attorney fees’ — is precise and consequential. The with-prejudice designation renders this a final disposition on the merits for res judicata purposes, permanently precluding Smart Packaging Solutions from re-filing the same claims. The explicit mutual cost-bearing provision indicates that no party sought or obtained a fee award, which is typical where the resolution is negotiated rather than adjudicated.
US9195932B2 — Smart card data encoding and card body technology
The four asserted patents — US9195932B2, US9165240B2, US9633304B2, and US9033250B2 — originate from application filings ranging from 2013 to 2015, placing their priority period squarely in the era of accelerating contactless and dual-interface smart card adoption. The patents appear to cover distinct sub-systems within smart card technology, including data encoding and personalisation, card body architecture, and manufacturing processes. Each issued as a granted US patent, conferring presumptive validity under 35 U.S.C. § 282.
Smart card technology sits at the intersection of payments, access control, identity documents, and IoT device integration — a sector with substantial commercial value and active patent enforcement. A portfolio of four granted patents covering layered aspects of card construction and data handling gives the holder meaningful leverage across a wide range of manufacturers and technology integrators. The survival of this portfolio post-litigation means competitors, OEM card printers, and chip module suppliers should independently assess FTO clearance before commercialising products that may read on these claims.
Should you run an FTO analysis against US9195932B2 and the Smart Packaging Solutions smart card portfolio?
Any company designing, manufacturing, or integrating smart card products — including payment cards, access credentials, transit cards, or dual-interface devices — should treat this four-patent portfolio as a live FTO risk. The patents cover distinct technical layers of smart card architecture, meaning a single product could potentially be exposed to multiple claims simultaneously. The portfolio’s active enforcement history in Delaware and the plaintiff’s willingness to sustain litigation for over three years elevates this beyond a theoretical risk.
PatSnap Eureka’s FTO Search Agent enables IP and R&D teams to map specific product features against the claims of US9195932B2, US9165240B2, US9633304B2, and US9033250B2 in parallel. Eureka’s claim-level analysis surfaces which independent and dependent claims pose the greatest exposure for your specific card design or manufacturing process, and identifies prior art that may support a design-around or validity challenge. For procurement and supply chain teams, Eureka can also flag whether components sourced from third-party card manufacturers carry equivalent exposure.
Run a freedom-to-operate analysis on US9195932B2 to assess your product’s exposure
Run FTO in Eureka →Similar smart card patent infringement cases in US federal courts
Explore related smart card and plastic card patent infringement actions filed in the Delaware District Court and comparable US venues involving similar technology claims.
What this case signals for the smart card and plastic card manufacturing IP landscape
A four-patent assertion held for over three years in Delaware before a with-prejudice exit carries clear signals for competitors and card technology developers.
With-prejudice dismissal does not extinguish the underlying patent portfolio
Smart Packaging Solutions retains all four asserted patents post-dismissal. The with-prejudice bar applies only to claims against Perfect Plastic Printing for the specific accused conduct. Any other smart card manufacturer, issuer, or technology integrator could face enforcement action on the same patents. IP teams in this sector should treat this portfolio as live enforcement risk.
Three-year duration signals substantive litigation before resolution
Cases that run 1,140 days before a voluntary dismissal typically reflect significant pre-trial activity — claim construction, fact discovery, and potentially IPR proceedings. The mutual cost-bearing arrangement suggests neither side achieved a decisive advantage, which is consistent with a negotiated exit rather than a one-sided capitulation.
Smart v Perfect — key questions answered
The dismissal with prejudice under Rule 41(a)(1)(A)(ii) is a final disposition. Smart Packaging Solutions permanently relinquished the right to re-assert US9195932B2, US9165240B2, US9633304B2, and US9033250B2 against Perfect Plastic Printing for the accused conduct. The four patents themselves remain valid and enforceable against other defendants.
Smart Packaging Solutions asserted four US patents: US9195932B2, US9165240B2, US9633304B2, and US9033250B2. All four relate to smart card technology, with application filings spanning 2013 to 2015. Each patent issued as a granted US patent carrying presumptive validity.
No. A voluntary dismissal with prejudice carries no finding on the validity or infringement of the asserted patents. The dismissal resolves only the dispute between these two parties. The patents remain in force and can be asserted against third parties. No court made any ruling on claim construction, validity, or infringement.
The 1,140-day duration before a voluntary dismissal suggests substantive litigation activity prior to resolution, potentially including fact discovery, claim construction proceedings, or inter partes review proceedings at the USPTO. The public record does not disclose the specific procedural milestones that preceded the stipulated dismissal.
Yes. The with-prejudice dismissal bars only Smart Packaging Solutions’ claims against Perfect Plastic Printing for the specific accused conduct. The four asserted patents — US9195932B2, US9165240B2, US9633304B2, and US9033250B2 — remain active and enforceable. Smart Packaging Solutions retains full rights to assert them against other parties in the smart card and plastic card manufacturing space.
PatSnap Eureka searches patents and litigation data to answer instantly.