DCT
1:23-cv-00519
Ecolab Inc v. Reckitt Benckiser LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ecolab Inc. and Ecolab USA Inc. (Delaware)
- Defendant: Reckitt Benckiser LLC (Delaware)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP; Farney PC
- Case Identification: 1:23-cv-00519, D. Del., 05/12/2023
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is incorporated in Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s Finish-brand dishwashing detergent tablets infringe patents related to a solidification matrix that uses a polycarboxylic acid polymer to create dimensionally stable, phosphorus-free solid detergents.
- Technical Context: The technology concerns chemical compositions for solid block detergents, aiming to solve problems of dimensional instability (swelling) while avoiding environmentally disfavored components like phosphates.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of infringement, including identification of the patents-in-suit and the accused products, on or about February 3, 2022, and offered a license, which was not accepted. This allegation of pre-suit notice forms the basis for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2008-01-04 | Earliest Priority Date ('138 and '464 Patents) |
| 2012-03-20 | U.S. Patent No. 8,138,138 Issues |
| 2013-03-05 | U.S. Patent No. 8,389,464 Issues |
| 2022-02-03 | Alleged Pre-Suit Notice of Infringement |
| 2023-05-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,138,138 - “Solidification Matrix Using A Polycarboxylic Acid Polymer”
The Invention Explained
- Problem Addressed: The patent describes issues with early solid detergents based on sodium carbonate (soda ash), which were prone to swelling and dimensional instability after solidification as their water content and hydrate forms shifted. This instability could interfere with packaging and dispensing. Additionally, the patent notes a need to replace phosphorus-containing compounds and nitrilotriacetic acid (NTA), common in prior detergents, due to ecological and health concerns. (Compl. Exhibit A, ’138 Patent, col. 1:28-63).
- The Patented Solution: The invention is a solidification matrix for detergents that combines a specific polycarboxylic acid polymer, sodium carbonate, and water. The polymer is described as controlling the kinetics and thermodynamics of the solidification process by managing water migration during the hydration of the soda ash. This interaction forms a stable "hydrate solid" that resists swelling. (’138 Patent, Abstract; col. 4:31-44).
- Technical Importance: This technology provided a formulation for creating solid detergents that were both dimensionally stable and free of phosphorus and NTA, addressing key manufacturing, usability, and environmental challenges in the field. (’138 Patent, col. 1:56-63).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert others. (Compl. ¶¶ 23-24).
- Independent Claim 1 is for a solid detergent composition "consisting essentially of":
- A polycarboxylic acid polymer selected from a group including polyacrylic acid polymer (molecular weight 1,000-100,000), modified polyacrylic acid polymer (molecular weight 1,000-100,000), and polymaleic acid polymer (molecular weight 500-5,000);
- sodium carbonate;
- water;
- less than 0.5% by weight phosphorous;
- at least one functional ingredient;
- wherein the composition is a hydrate solid, is dimensionally stable, and has a growth exponent of less than 2% when heated to 120°F.
U.S. Patent No. 8,389,464 - “Solidification Matrix Using A Polycarboxylic Acid Polymer”
The Invention Explained
- Problem Addressed: The ’464 Patent addresses the same technical problems as its parent ’138 Patent: the dimensional instability of sodium carbonate-based solid detergents and the need to formulate such detergents without phosphorus or NTA. (Compl. Exhibit B, ’464 Patent, col. 1:26-65).
- The Patented Solution: The solution is nearly identical to that of the ’138 Patent, describing a solidification matrix where a polycarboxylic acid polymer, sodium carbonate, and water interact to form a stable hydrate solid. The polymer's role is to control the ash hydration process to ensure the final product does not swell. (’464 Patent, Abstract; col. 4:39-49).
- Technical Importance: As with the ’138 Patent, this technology enabled the production of dimensionally stable, phosphorus-free, and NTA-free solid detergents. (’464 Patent, col. 1:55-65).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert others. (Compl. ¶¶ 35-36).
- Independent Claim 1 is for a solid detergent composition "consisting essentially of":
- A polycarboxylic acid polymer selected from a group consisting of: a polyacrylic acid polymer, a modified polyacrylic acid polymer, and a polymaleic acid polymer;
- sodium carbonate;
- water;
- less than 0.5% by weight phosphorous;
- at least one functional ingredient;
- wherein the composition is a hydrate solid, is dimensionally stable, and has a growth exponent of less than 2% when heated to 120°F.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the “Accused Products” as Finish Powerball Max in 1 Tablets, Finish Powerball Deep Clean Tablets, and Finish Powerball Classic Tablets. (Compl. ¶ 15).
Functionality and Market Context
- The complaint alleges that the Accused Products are stable, solid dishwashing detergent tablets. (Compl. ¶¶ 14-15). Their composition is alleged to contain polycarboxylic acid polymer, sodium carbonate (soda ash), water, and at least one functional ingredient. (Compl. ¶¶ 16-18).
- Functionally, the products are described as "hydrate solids" which, when heated to 120°F, are "dimensionally stable and have a growth exponent of less than 2%." (Compl. ¶¶ 16-18). The complaint further alleges the products contain less than 0.5% by weight phosphorous and are thus "substantially phosphorus free." (Compl. ¶¶ 16-18).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'138 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A solid detergent composition consisting essentially of: a polycarboxylic acid polymer selected from the group consisting of: a polyacrylic acid polymer having a molecular weight of between about 1,000 and about 100,000... | The Accused Products contain a polycarboxylic acid polymer that is a polyacrylic acid with a molecular weight between about 1,000 and 100,000. | ¶25 | col. 4:15-24 |
| sodium carbonate; | The Accused Products contain sodium carbonate. | ¶26 | col. 4:9-10 |
| water; | The Accused Products contain water. | ¶27 | col. 4:5-8 |
| less than 0.5% by weight phosphorous; | The Accused Products contain less than 0.5% by weight phosphorous and are considered substantially phosphorus free. | ¶28 | col. 5:26-34 |
| at least one functional ingredient; | The Accused Products contain at least one functional ingredient. | ¶29 | col. 5:41-43 |
| wherein the solid detergent composition is a hydrate solid, and if heated at a temperature of 120 degrees Fahrenheit, the solid detergent composition is dimensionally stable and has a growth exponent of less than 2%. | The Accused Products are hydrate solids. When heated to 120°F, they are dimensionally stable and have a growth exponent of less than 2%. | ¶30 | col. 4:50-65 |
'464 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A solid detergent composition consisting essentially of: a polycarboxylic acid polymer selected from the group consisting of: a polyacrylic acid polymer... | The Accused Products contain a polycarboxylic acid polymer that is a polyacrylic acid. | ¶37 | col. 4:19-21 |
| sodium carbonate; | The Accused Products contain sodium carbonate. | ¶38 | col. 4:10-11 |
| water; | The Accused Products contain water. | ¶39 | col. 4:5-8 |
| less than 0.5% by weight phosphorous; | The Accused Products contain less than 0.5% by weight phosphorous and are considered substantially phosphorus free. | ¶40 | col. 5:30-38 |
| at least one functional ingredient; | The Accused Products contain at least one functional ingredient. | ¶41 | col. 5:45-47 |
| wherein the solid detergent composition is a hydrate solid... | The Accused Products are a hydrate solid as required by the claims. | ¶42 | col. 4:4-8 |
| ...and if heated at a temperature of 120 degrees Fahrenheit, the solid detergent composition is dimensionally stable and has a growth exponent of less than 2%. | When heated to 120°F, the Accused Products are dimensionally stable and have a growth exponent of less than 2%. | ¶43 | col. 4:54-64 |
- Identified Points of Contention:
- Scope Questions: Both asserted claims use the transitional phrase "consisting essentially of." The complaint alleges the accused products contain the recited ingredients "among other ingredients" (Compl. ¶¶ 25, 26, 37, 38). This raises the question of whether any unlisted ingredients in the accused tablets materially alter the basic and novel properties of the claimed invention (i.e., the stable solidification), which could place them outside the claims' scope. A key difference between the patents is that claim 1 of the '138 Patent recites specific molecular weight ranges for the polymers, whereas claim 1 of the '464 Patent does not, suggesting a potential difference in scope that may be litigated.
- Technical Questions: The complaint's allegations regarding the functional properties—that the products are "hydrate solids," are "dimensionally stable," and have a "growth exponent of less than 2%"—are factual assertions made "upon information and belief." (Compl. ¶¶ 16, 30, 43). A central question will be whether empirical testing of the accused products confirms these properties as defined by the test protocols described in the patents' specifications.
V. Key Claim Terms for Construction
The Term: "consisting essentially of"
Context and Importance: This transitional phrase defines the boundary of the claimed composition. Its construction is critical because the complaint alleges the Accused Products contain the claimed components "among other ingredients." (Compl. ¶¶ 25, 37). The infringement analysis will depend on whether these unlisted ingredients materially alter the "basic and novel" characteristics of the patented solidification matrix.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications of both patents include a lengthy section titled "Additional Functional Materials," which lists numerous components like surfactants, builders, and bleaching agents that can be combined with the solidification matrix. (’138 Patent, col. 5:41-col. 16:47). This may support an interpretation that the claims permit the inclusion of many other common detergent ingredients without altering the fundamental invention.
- Evidence for a Narrower Interpretation: The patents describe the "actual solidification mechanism" as occurring "through ash hydration" and state that the polycarboxylic acid polymer "functions to control the kinetics and thermodynamics of the solidification process." (’138 Patent, col. 4:31-36). A defendant could argue that any unlisted ingredient that also contributes to or alters this specific solidification mechanism would be a material alteration, thereby taking the composition outside the scope of the claim.
The Term: "dimensionally stable"
Context and Importance: This is a key functional limitation at the heart of the invention's solution to the swelling problem. Infringement requires the Accused Products to meet this limitation. Practitioners may focus on this term because its definition is tied to a specific quantitative test result.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not left to a general dictionary definition. The specification provides a specific, quantitative definition that could be argued as controlling: "Generally, a solid product is considered to have dimensional stability if the solid product has a growth exponent of less than about 3% and particularly less than about 2%." (’138 Patent, col. 4:55-58). The claims explicitly require "a growth exponent of less than 2%."
- Evidence for a Narrower Interpretation: The same passage that defines the term also specifies the method for measuring it: "the growth exponent of a solid detergent product may be determined by measuring one or more dimensions of the product prior to and after heating at between 100° F. and 120° F." (’138 Patent, col. 4:60-64). The interpretation of "dimensionally stable" is thus inextricably linked to the protocol and results of this specific test, and any dispute will likely center on the application of this test method to the Accused Products.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement has been willful based on its "full knowledge of the Patents-In-Suit." (Compl. ¶¶ 31, 44). This allegation is supported by specific factual claims that Plaintiff provided Defendant with "actual notice of infringement" on or about February 3, 2022, identifying both the patents and the accused products, and offered a license. (Compl. ¶¶ 19-20). These allegations assert pre-suit knowledge of the alleged infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can a composition "consisting essentially of" the patented ingredients be read to cover the accused Finish tablets, which allegedly contain "other ingredients"? The outcome will depend on whether those unlisted components are found to materially alter the fundamental solidification properties claimed by the patents.
- A second key issue will be one of evidentiary proof: does the accused detergent, when subjected to the testing protocols described in the patents, actually perform as a "hydrate solid" that is "dimensionally stable" with a "growth exponent of less than 2%"? This presents a central factual dispute that will likely be resolved through competing expert analysis and testing.
- A final question pertains specifically to the ’138 Patent: does the polycarboxylic acid polymer used in the accused products fall within the specific molecular weight ranges recited in claim 1? This introduces a precise technical requirement for infringement of the ’138 Patent that is absent from the asserted claim of the related ’464 Patent.