DCT

1:17-cv-00604

Doda v. Waste Ma

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00604, D. Del., 03/03/2020
  • Venue Allegations: Plaintiffs allege venue is proper in the District of Delaware pursuant to 28 U.S.C. §§ 1391 and 1400.
  • Core Dispute: Plaintiffs seek correction of inventorship and ownership for two patents, alleging Defendants misappropriated Plaintiffs' confidential information, provided under non-disclosure agreements, to file patents on an organic waste processing system while improperly naming a Defendant employee as the sole inventor.
  • Technical Context: The technology involves multi-stage systems for processing contaminated organic food waste into a consistent, high-quality slurry suitable for anaerobic digestion and the production of biogas.
  • Key Procedural History: The complaint alleges that after Plaintiffs disclosed proprietary technical information to Defendants between 2009 and 2012 under two non-disclosure agreements (NDAs), Defendants secretly filed a patent application in 2011 that matured into the patents-in-suit. Plaintiffs claim they were unaware of the patents until July 2016 and that a 2012 NDA explicitly reserved all patent rights for disclosed technology to the disclosing party, the Plaintiffs.

Case Timeline

Date Event
2009-11-17 Email from WMNS to DODA following facility tour in Italy
2010-02-11 DODA sends proprietary system diagrams to Defendant Denson
2010-05-27 DODA USA and a WMI subsidiary enter into an equipment purchase agreement
2010-12-09 First Mutual Non-Disclosure Agreement (2010 NDA) executed
2011-06-27 Priority Date: U.S. Patent Application 13/169,843 filed
2012-04-13 Second Non-Disclosure Agreement (2012 NDA) executed
2012-12-27 '843 Patent Application published
2015-01-06 U.S. Patent No. 8,926,841 issues
2016-07-XX Plaintiffs learn of the '841 Patent's issuance
2016-10-14 Plaintiffs send letter demanding correction of inventorship
2019-11-26 U.S. Patent No. 10,486,995 issues
2020-03-03 Second Amended Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,926,841 - "System and Method for Converting Organic Waste into Methane and Other Useful Products"

  • Patent Identification: U.S. Patent No. 8,926,841, "System and Method for Converting Organic Waste into Methane and Other Useful Products," issued January 6, 2015. (Compl. ¶80).

The Invention Explained

  • Problem Addressed: The patent's background describes that known techniques for using organic municipal waste in anaerobic digesters "have failed to achieve consistent, high levels of methane production," often due to the presence of contaminants and the inconsistent properties of the waste stream. ('841 Patent, col. 1:40-54).
  • The Patented Solution: The invention is a multi-tank system designed to receive contaminated organic waste and process it into a uniform, high-quality fuel slurry. The system uses components including a hopper, one or more centrifugal separators to remove physical contaminants, and a series of specialized tanks (e.g., wash water, make-up product, complimentary liquids) that allow for blending and adjustment of the slurry's properties, such as its chemical oxygen demand (COD), before it is fed into an anaerobic digester. ('841 Patent, Abstract; Fig. 2). This process is designed to create a consistent feedstock from a variable input. ('841 Patent, col. 4:36-41).
  • Technical Importance: The technology addresses a key challenge in the waste-to-energy sector by providing a method to upgrade inconsistent, low-grade organic waste into a reliable, standardized fuel for biogas production. ('841 Patent, col. 4:50-54).

Key Claims at a Glance

  • The complaint alleges contribution to multiple claims, including independent claim 16. (Compl. ¶106).
  • Independent Claim 16 recites a system comprising:
    • a hopper configured to receive sorted organic waste;
    • a separator system with a primary separator to remove contaminants;
    • a wash water liquid tank for periodic injection into the separator system;
    • a product tank to receive processed organic waste; and
    • a make-up product tank to receive low-COD waste for periodic injection into the product tank. (Compl. ¶81; '841 Patent, col. 16:11-38).
  • The complaint reserves the right to assert contribution to other claims. (Compl. ¶106).

U.S. Patent No. 10,486,995 - "System and Method for Converting Organic Waste into Methane and Other Useful Products"

  • Patent Identification: U.S. Patent No. 10,486,995, "System and Method for Converting Organic Waste into Methane and Other Useful Products," issued November 26, 2019. (Compl. ¶93).

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the '841 Patent, this patent addresses the same problem of creating a consistent fuel slurry from contaminated organic waste for anaerobic digestion. ('995 Patent, col. 1:31-57).
  • The Patented Solution: The '995 Patent describes the same multi-tank processing and blending system as the '841 Patent, utilizing separation and liquid-addition steps to produce a uniform fuel product. ('995 Patent, Abstract; col. 2:1-29).
  • Technical Importance: The technical importance is identical to that of the '841 Patent.

Key Claims at a Glance

  • The complaint alleges contribution to at least independent claim 1. (Compl. ¶109).
  • Independent Claim 1 recites a system comprising:
    • a hopper configured to receive organic waste;
    • a separator system with a primary separator;
    • a wash water liquid tank;
    • a product tank; and
    • a make-up product tank. ('995 Patent, col. 14:36-64).
  • The complaint reserves the right to assert contribution to other claims.

III. The Accused Instrumentality

Product Identification

  • The "instrumentality" at the center of this dispute is the organic waste processing system as claimed in the '841 and '995 patents. The core allegation is not infringement by a product, but that the patented invention itself was derived from Plaintiffs' confidential technology. (Compl. ¶¶ 62, 82, 96).

Functionality and Market Context

  • The complaint alleges that the functionality described and claimed in the patents—a system featuring a hopper, a separator, a wash water tank, a product tank, and a make-up product tank—was first conceived by Marco Doda and disclosed to Defendants in confidential communications and diagrams starting in early 2010. (Compl. ¶¶ 22-23, 62).
  • The complaint alleges that these claimed features directly correspond to "DODA's proprietary equipment and processes" that were shared with Defendants for the purpose of establishing a business relationship. (Compl. ¶23). Plaintiffs also allege they have sold and continue to sell organic waste processing systems in the U.S. that embody these same features. (Compl. ¶102).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The central theory of the case is not traditional patent infringement, but correction of inventorship under 35 U.S.C. § 256. The allegations contend that the invention defined by the patent claims was conceived by Marco Doda and improperly patented by Defendants. The following tables map the claim elements to the technology Plaintiffs allege they conceived and disclosed.

'841 Patent Inventorship Allegations

Claim Element (from Independent Claim 16) Alleged DODA-Conceived Technology Complaint Citation Patent Citation
a hopper configured to receive sorted organic waste having contaminants from one or more sources A system including a hopper to receive organic waste, as allegedly detailed in diagrams DODA sent to Defendants on February 11, 2010. ¶23, ¶82 col. 10:17-18
a separator system in communication with the hopper and configured to receive the sorted organic waste...and to remove at least a portion of the contaminants..., wherein the separator system comprises a primary separator A separator system in communication with the hopper, as allegedly detailed in DODA's proprietary diagrams. ¶23, ¶82 col. 10:18-24
a wash water liquid tank in communication with the separator system and containing wash water, wherein at least a portion of the wash water...is periodically injected into the separator system upon request A wash water liquid tank, as allegedly disclosed in DODA's diagrams and in communications where DODA explained the need to add liquid to aid the process. ¶22, ¶23, ¶82 col. 16:25-29
a product tank in communication with the separator system and configured to receive organic waste from the separator system, which has been processed by the separator system A product tank to receive processed waste from the separator, as allegedly detailed in DODA's proprietary diagrams. ¶23, ¶82 col. 16:30-32
a make-up product tank in communication with the separator system and configured to receive the sorted organic waste from the separator system having low COD... A make-up product tank configured to receive sorted organic waste, as allegedly detailed in DODA's proprietary diagrams. ¶23, ¶82 col. 16:33-38

'995 Patent Inventorship Allegations

Claim Element (from Independent Claim 1) Alleged DODA-Conceived Technology Complaint Citation Patent Citation
a hopper configured to receive organic waste having contaminants including COD from one or more sources A system including a hopper to receive organic waste, as allegedly detailed in diagrams DODA sent to Defendants on February 11, 2010. ¶23, ¶96 col. 10:17-18
a separator system in communication with the hopper and configured to receive the organic waste...and to remove at least a portion of the contaminants..., wherein the separator system comprises a primary separator A separator system in communication with the hopper, as allegedly detailed in DODA's proprietary diagrams. ¶23, ¶96 col. 10:18-24
a wash water liquid tank in communication with the separator system and containing wash water, wherein at least a portion of the wash water...is periodically injected into the separator system upon request A wash water liquid tank, as allegedly disclosed in DODA's diagrams and in communications where DODA explained the need to add liquid to aid the process. ¶22, ¶23, ¶96 col. 14:46-51
a product tank in communication with the separator system and configured to receive organic waste from the separator system, which has been processed by the separator system A product tank to receive processed waste from the separator, as allegedly detailed in DODA's proprietary diagrams. ¶23, ¶96 col. 14:52-56
a make-up product tank in communication with the separator system and configured to receive the organic waste from the separator system having low COD... A make-up product tank configured to receive sorted organic waste, as allegedly detailed in DODA's proprietary diagrams. ¶23, ¶96 col. 14:57-64
  • Identified Points of Contention:
    • Derivation vs. Independent Conception: The central dispute will be factual: what evidence exists to demonstrate that Marco Doda conceived of the specific combination of elements recited in the independent claims and communicated that conception to Defendants? The court will need to determine whether the claimed invention was derived from Doda's disclosures or was the result of independent development by the named inventor, James Denson.
    • Significance of Contribution: A related question is whether Marco Doda's alleged contributions, if proven, are significant enough to qualify him as a joint inventor of the claimed subject matter. This involves analyzing whether he contributed to the conception of the invention as a whole, not just to one component or feature.

V. Key Claim Terms for Construction

While claim construction is secondary to the factual question of derivation, the scope of key terms will define what must have been conceived to qualify as an inventor.

  • The Term: "separator system" (appearing in claims of both patents)

    • Context and Importance: This is a core component of the claimed invention. Its definition is critical because Plaintiffs' inventorship claim depends on showing they conceived of this specific element as part of the overall system. The claims require this system to include a "primary separator," which the '841 Patent further defines in some claims as a "primary centrifugal separator." ('841 Patent, col. 13:58-59).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term "separator system" itself is broad. The specification could be read to encompass various types of separation technologies beyond the specific embodiments.
      • Evidence for a Narrower Interpretation: The patent's summary of the invention and its preferred embodiments explicitly describe the use of a "primary centrifugal separator." ('995 Patent, col. 2:13-14, Fig. 2). Defendants may argue that to be an inventor, one must have conceived of using a centrifugal separator, not just any separator.

  • The Term: "complimentary liquid tank" (appearing in claims of both patents, e.g., '995 Patent, Claim 2)

    • Context and Importance: This term is part of the novel multi-tank blending system. Practitioners may focus on this term because its definition clarifies the specific types of fluid inputs the system is designed to handle, which is central to the invention's goal of creating a consistent feedstock from varied sources. Proving conception of this specific function and its integration into the system is important for Plaintiffs' case.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent provides a non-exhaustive list of "complimentary liquids," including "grease trap material, decased consumer products, off-spec consumer products, and beverage industry industrial process waste waters," suggesting the term covers a wide range of organic liquid inputs. ('995 Patent, col. 15:1-4).
      • Evidence for a Narrower Interpretation: The specification also ties these liquids to specific functions, such as being used as "wash water" or being "blended with materials to create a suitable anaerobic digestion feedstock." ('995 Patent, col. 5:9-12). An argument could be made that the term requires not just any liquid, but one used for these specific blending and processing purposes within the system.

VI. Other Allegations

  • Willful Infringement: While not a traditional infringement case, the complaint alleges conduct equivalent to willfulness by seeking a finding that the case is "exceptional" under 35 U.S.C. § 285. (Compl. ¶121). The basis for this allegation is that Defendants acted in "bad faith" by intentionally concealing the patent applications from Plaintiffs while continuing a business relationship, misrepresenting their intentions, and using Plaintiffs' confidential information in direct violation of the 2010 and 2012 NDAs. (Compl. ¶¶ 117-120).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of evidentiary proof: What specific evidence can Plaintiffs produce to corroborate their claim that Marco Doda conceived of the complete invention as claimed—the specific combination of a hopper, separator, and multi-tank blending system—and communicated that conception to Defendants prior to the patent application's filing date?
  • A key legal question will be one of contractual effect on inventorship: Did the non-disclosure agreements, particularly the 2012 NDA which allegedly states that all patent rights "shall belong exclusively to the disclosing Party," create a contractual obligation that supersedes patent law’s default inventorship rules, potentially making the inventorship question secondary to a breach of contract claim? (Compl. ¶73).
  • A central factual question will be one of derivation: Can Defendants demonstrate that the named inventor, James Denson, independently conceived of the key features of the claimed invention, or will the evidence show that the patented system was substantially derived from the proprietary diagrams and technical information provided by DODA?