DCT
1:18-cv-01486
AgroFresh Inc v. Hazel Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: AgroFresh Inc. (Illinois)
- Defendant: Hazel Technologies, Inc. (Delaware) and Decco US Post-Harvest, Inc. (Delaware)
- Plaintiff’s Counsel: Barnes & Thornburg LLP
- Case Identification: 1:18-cv-01486-MN, D. Del., 07/08/2019
- Venue Allegations: Venue is asserted on the basis that both Defendants are Delaware corporations and therefore reside in the District of Delaware.
- Core Dispute: Plaintiff alleges that Defendants’ Hazel® CA product, a post-harvest treatment for fruit, infringes two patents related to methods for safely stabilizing and delivering 1-methylcyclopropene (1-MCP) gas to inhibit ripening.
- Technical Context: The technology addresses the challenge of safely handling 1-MCP, a highly volatile and reactive gas, by encapsulating it in a solid powder form that releases the gas upon contact with water, enabling its commercial use in preserving produce.
- Key Procedural History: The complaint alleges that the patents-in-suit were previously asserted by AgroFresh against Defendant Decco in separate litigation (the "Decco Litigation"). The current infringement claims against Hazel are alleged to have occurred in the months immediately preceding the patents' expiration on August 20, 2018, constituting an "accelerated entry" into the market.
Case Timeline
| Date | Event |
|---|---|
| 1998-08-20 | Priority Date for ’849 and ’068 Patents |
| 2000-01-25 | Issue Date for U.S. Patent No. 6,017,849 |
| 2001-11-06 | Issue Date for U.S. Patent No. 6,313,068 |
| 2016-01-01 | AgroFresh initiates "Decco Litigation" against Defendant Decco |
| 2018-06-25 | Hazel submits EPA registration application for Hazel® CA |
| 2018-08-07 | Hazel receives Washington State SLN Label for Hazel® CA |
| 2018-08-20 | ’849 and ’068 Patents expire |
| 2019-07-08 | Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,017,849 - "SYNTHESIS METHODS, COMPLEXES AND DELIVERY METHODS FOR THE SAFE AND CONVENIENT STORAGE, TRANSPORT AND APPLICATION OF COMPOUNDS FOR INHIBITING THE ETHYLENE RESPONSE IN PLANTS", issued January 25, 2000
The Invention Explained
- Problem Addressed: The patent describes that while compounds like 1-methylcyclopropene (1-MCP) are highly effective at irreversibly inhibiting the ethylene response that causes plant and fruit ripening, they are also relatively unstable and potentially explosive gases, posing significant challenges for safe storage, transport, and commercial application (Compl. ¶9; ’849 Patent, col. 3:20-38).
- The Patented Solution: The invention solves this problem by incorporating the gaseous 1-MCP into a "molecular encapsulation agent complex," such as cyclodextrin. This process traps the gas within a stable, solid "caged molecule," protecting it from degradation and rendering it safe to handle. The active gas is subsequently released for plant treatment when the solid complex is dissolved in a solvent, such as water (’849 Patent, Abstract; col. 3:39-53).
- Technical Importance: This encapsulation technology provided a practical and safe delivery vehicle for a potent but otherwise hazardous anti-ripening agent, enabling its broad commercial use in the post-harvest agricultural industry (Compl. ¶10-11).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 6, along with dependent claims 19, 23, and 25 (Compl. ¶27).
- Independent Claim 1: A complex formed from (1) a molecular encapsulation agent and (2) a cyclopropene-based compound with specific chemical structures.
- Independent Claim 6: A complex formed from (1) a molecular encapsulation agent and (2) methylcyclopropene.
U.S. Patent No. 6,313,068 - "SYNTHESIS METHODS, COMPLEXES AND DELIVERY METHODS FOR THE SAFE AND CONVENIENT STORAGE, TRANSPORT AND APPLICATION OF COMPOUNDS FOR INHIBITING THE ETHYLENE RESPONSE IN PLANTS", issued November 6, 2001
The Invention Explained
- Problem Addressed: As a continuation-in-part of the ’849 Patent, the ’068 Patent addresses the same core technical problem: the instability and handling hazards of reactive gases like 1-MCP, which limit their commercial utility for inhibiting plant ripening (’068 Patent, col. 3:28-40).
- The Patented Solution: The invention again discloses the formation of a stable, solid complex by trapping the 1-MCP gas within a molecular encapsulation agent (e.g., cyclodextrin). This complex provides a convenient method for storing and transporting the gas, which can then be released upon the addition of a solvent like water to treat plants (’068 Patent, Abstract; col. 4:1-13).
- Technical Importance: This invention, like its parent, was instrumental in allowing the widespread and safe commercialization of 1-MCP technology for post-harvest freshness preservation (Compl. ¶10-11).
Key Claims at a Glance
- The complaint asserts independent claim 1, along with dependent claims 6, 11, and 13 (Compl. ¶39).
- Independent Claim 1: A complex formed from (1) a molecular encapsulation agent and (2) a cyclopropene-based compound with specific chemical structures.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendants' Hazel® CA product (Compl. ¶2).
Functionality and Market Context
- Hazel® CA is a powder product containing 1-MCP that is used as a post-harvest treatment to delay the ripening of apples (Compl. ¶18; Compl. Ex. C, p. 42). The product is designed to be applied in an enclosed "controlled atmosphere" room, where the powder is mixed with water. This contact with water accelerates the release of 1-MCP gas, which then acts on the apples to inhibit the effects of ethylene (Compl. ¶11; Compl. Ex. C, p. 44).
- The complaint alleges that Hazel® CA was introduced to compete directly with AgroFresh’s market-leading SmartFresh™ products and that Defendants improperly accelerated its market entry by making and using the product for testing and regulatory approval before the patents-in-suit expired (Compl. ¶14, ¶17).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,017,849 Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A complex formed from a molecular encapsulation agent | The complaint alleges the Hazel® CA product is a complex comprised of a molecular encapsulation agent (Compl. ¶28). | ¶28 | col. 6:45-46 |
| and methylcyclopropene. | The Hazel® CA product is alleged to contain 1-MCP, which is methylcyclopropene (Compl. ¶28). The Hazel® CA product label, provided as Exhibit C, identifies "1-Methylcyclopropene" as the active ingredient (Compl. Ex. C, p. 42). | ¶28 | col. 6:45-46 |
U.S. Patent No. 6,313,068 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A complex formed from a molecular encapsulation agent | The complaint alleges the Hazel® CA product is a complex comprised of a molecular encapsulation agent (Compl. ¶40). | ¶40 | col. 6:22-26 |
| and a compound, 1-MCP, having the structure shown in claim 1. | The Hazel® CA product is alleged to contain 1-MCP (Compl. ¶40). The product label confirms that "1-Methylcyclopropene" is the active ingredient, which corresponds to the patented compound structure (Compl. Ex. C, p. 42). | ¶40 | col. 5:11-13 |
Identified Points of Contention
- Scope Questions: The infringement analysis will likely turn on the definition of "complex formed from a molecular encapsulation agent." A key question for the court will be whether the accused Hazel® CA product, which the complaint notes was submitted for approval based on data showing a "slower rate of release" (Compl. ¶18), achieves this stabilization through the claimed "encapsulation" or via a different, non-infringing mechanism.
- Technical Questions: What evidence does the complaint provide that the Hazel® CA product is a "complex" where 1-MCP is "trapped" in a "caged molecule" as described in the patents (’849 Patent, col. 3:65-4:1), rather than being merely adsorbed onto or mixed with other inactive ingredients? The factual determination of the accused product's physical and chemical structure will be central to the dispute.
V. Key Claim Terms for Construction
The Term: "molecular encapsulation agent"
- Context and Importance: This term is the technological core of the patents. Its construction will determine whether the claims cover only the specific "cage-like" structures emphasized in the specification or a broader class of stabilizing materials. Practitioners may focus on this term because the entire infringement case depends on whether the accused product's formulation falls within its scope.
- Intrinsic Evidence for a Broader Interpretation: The specification provides a list of potential agents, including "a cyclodextrin, a crown ether, a polyoxyalkylene, a prophorine, a polysiloxane, a phophazene and a zeolite," which may support an interpretation covering a class of chemical structures capable of forming a complex (’849 Patent, col. 6:31-37).
- Intrinsic Evidence for a Narrower Interpretation: The specification consistently describes the agent's function as forming a "molecular trap" or a "caged molecule" with a "lock and key structure," particularly highlighting alpha-cyclodextrin (’849 Patent, col. 10:59-62; col. 11:3-7). This could support a narrower construction limited to agents that create a specific host-guest inclusion complex.
The Term: "complex"
- Context and Importance: This term defines the required relationship between the "molecular encapsulation agent" and the 1-MCP. Its construction is critical because Defendants may argue their product is a simple mixture, not a "complex" as required by the claims.
- Intrinsic Evidence for a Broader Interpretation: The term is used throughout the patent to describe the resulting product of combining the agent and the gas, which could suggest it covers any stable association that achieves the goal of safe delivery (’849 Patent, col. 6:20-24).
- Intrinsic Evidence for a Narrower Interpretation: The patent describes the active compound as being "firmly locked into the cyclodextrin cage structure" and held by "weak atomic forces (van de Waals and hydrogen binding)," which may support a definition requiring a specific type of non-covalent, encapsulating bond rather than mere surface adsorption or physical mixture (’849 Patent, col. 3:66-4:1; col. 11:3-7).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants provide "training and detailed instructions on how to apply Hazel® CA," which allegedly causes third-party applicators to directly infringe the method claims of the patents by using the product to treat apples (Compl. ¶33, ¶45).
- Willful Infringement: The complaint alleges that the infringement was willful, asserting that Defendants had both constructive and actual knowledge of the patents (Compl. ¶19, ¶36). The allegation of actual knowledge is based on Hazel's "admitted familiarity with the Decco Litigation," a prior lawsuit where AgroFresh asserted the same patents against Defendant Decco, with whom Hazel later partnered (Compl. ¶20-21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "complex formed from a molecular encapsulation agent," which is described in the patents through the specific example of a cyclodextrin "cage" structure, be construed to cover the accused Hazel® CA powder? The case will likely hinge on whether the Defendants' method of stabilizing and delivering 1-MCP falls within the technical boundaries of the claims as construed by the court.
- A key evidentiary question will be one of technical and factual proof: assuming a claim construction, what evidence will demonstrate that the accused Hazel® CA product is, in fact, a "complex" as claimed? The resolution will depend on factual analysis of the accused product's chemical composition and physical structure to determine if it embodies the "encapsulation" and "trapping" mechanisms central to the patented technology.