by Dennis Crouch
Federal Circuit recently issued a Rule 36 summary affirmance in Converter Manufacturing, LLC v. Tekni-Plex, Inc. (Fed. Cir. Sept. 9, 2024). The case is now on petition for writ of certiorari to the US Supreme Court and raises significant questions about the burden of proving enablement of prior art references in patent cases. The case also raises a challenge to the Federal Circuit's aggressive approach to issuing judgments without opinion. [Read the petition in 24-866]
Converter Manufacturing holds a number of patents covering thermoformed plastic food trays with rolled edges. The dispute in the IPR centered primarily on whether the three prior art references were sufficiently enabling. While creating rolled edges on circular plastic items (like cups) was well-known, doing so on rectangular trays presented a pretty tricky challenge because the plastic would pucker and wrinkle at the corners where the material has to travel different distances compared to the straight edges. This technical difficulty explains why industry participants considered rolled edges on rectangular trays "impossible" before CM's invention, despite the seemingly simple concept.
Science fiction is fun to read, but it typically cannot invalidate real innovations because (typically) the SciFi author does not actually teach the details of how to make the futuristic technology -- i.e., the work does not enable the invention. Even in cases involving real prior invention, the public nature of patent law requires that the prior art evidence enable the invention. This requirement serves a crucial policy goal: ensuring that patents are only invalidated by prior art that genuinely placed the claimed technology within public possession, not by mere conceptual descriptions that fail to teach the public how to actually implement the invention.
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