DCT
1:23-cv-00984
Soluble Tech Group LLC v. Dyla LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Soluble Technologies Group, LLC (Delaware)
- Defendant: Dyla, LLC (Delaware)
- Plaintiff’s Counsel: Gellert Scali Busenkell & Brown LLC; Tucker Ellis LLP
- Case Identification: 1:23-cv-00984, D. Del., 02/16/2024
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant, Dyla, LLC, is a Delaware limited liability company.
- Core Dispute: Plaintiff alleges that Defendant’s "Stur" brand Liquid Water Enhancer (LWE) products infringe patents related to specific chemical compositions of flavoring concentrates designed for rapid dispersion in water.
- Technical Context: The technology concerns formulations for liquid water enhancers, a consumer product category where concentrated flavorings are added to water to improve taste and encourage hydration.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of its patent portfolio as early as September 2020 and sent specific notices of infringement for two of the patents-in-suit in May 2023. Plaintiff also notes that it has successfully enforced its patents against other competitors and entered into license agreements, which may be raised to suggest the patents' value and non-obviousness.
Case Timeline
| Date | Event |
|---|---|
| 2005-03-22 | Earliest Priority Date for ’659, ’462, and ’267 Patents |
| 2019-06-25 | U.S. Patent No. 10,327,462 Issues |
| 2019-10-22 | U.S. Patent No. 10,448,659 Issues |
| 2020-09-01 | Plaintiff allegedly begins communications with Defendant about patents |
| 2023-05-07 | Plaintiff notifies Defendant of alleged infringement of ’659 & ’462 Patents |
| 2023-07-13 | Plaintiff notifies Defendant of allowed claims of future ’267 Patent |
| 2023-09-05 | U.S. Patent No. 11,744,267 Issues |
| 2024-02-16 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,448,659 - "Flavoring Composition Concentrates", issued October 22, 2019
The Invention Explained
- Problem Addressed: The patent’s background section describes the difficulty of achieving rapid and complete dissolution of point-of-consumption flavoring compositions, particularly in cold water (ʼ659 Patent, col. 2:32-38). Prior art solutions using large amounts of surfactants could create off-tastes and were not amenable to typical manufacturing processes (ʼ659 Patent, col. 2:8-16).
- The Patented Solution: The invention is a liquid concentrate formulation that uses a "densifier"—specifically, an acid modifier present in a particular amount—to optimize the rate of dispersion when added to water (ʼ659 Patent, Abstract; col. 2:47-51). By controlling the composition's density through specific concentrations of acid and water, the concentrate is designed to mix quickly and completely without requiring vigorous shaking or stirring.
- Technical Importance: This approach sought to create a stable, clear, and rapidly dissolving water enhancer that avoided the negative taste and manufacturing impacts associated with high-surfactant formulas (ʼ659 Patent, col. 2:16-24).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9.
- Independent Claim 1: A liquid beverage concentrate composition comprising:
- a flavor;
- from about 12% to about 20% by weight of citric acid; and
- from about 20% to about 95% by weight of water solvent.
- Independent Claim 9: A liquid beverage concentrate composition comprising:
- a flavor;
- from about 12% to about 20% by weight of an acid;
- from about 20% to about 95% by weight of water solvent; and
- wherein the acid is selected from the group consisting of citric acid, malic acid, tartaric acid, phosphoric acid, and any combination thereof.
- The complaint also asserts dependent claims 7 and 16, which add a density limitation.
U.S. Patent No. 10,327,462 - "Flavoring Composition Concentrates", issued June 25, 2019
The Invention Explained
- Problem Addressed: Like its family member, the ’462 Patent addresses the challenge of creating a flavoring concentrate that dissolves quickly and completely in cold water, a limitation of many point-of-consumption products (ʼ462 Patent, col. 2:32-38).
- The Patented Solution: The patent describes a liquid concentrate whose composition is optimized for rapid dispersion through the use of an acid modifier as a "densifier" (ʼ462 Patent, Abstract). The key is achieving a target density via specific concentrations of an acid, water, and a sweetener, which allows the concentrate to mix efficiently into a beverage (ʼ462 Patent, col. 2:24-31).
- Technical Importance: The technology aimed to improve the consumer experience by providing a convenient flavoring that did not suffer from slow or incomplete mixing, while avoiding the formulation problems of prior art solutions (ʼ462 Patent, col. 2:16-24).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9.
- Independent Claim 1: A liquid beverage concentrate composition comprising:
- a flavor;
- from about 12% to about 20% by weight of citric acid;
- from about 20% to about 95% by weight of water solvent; and
- a sweetener.
- Independent Claim 9: A liquid beverage concentrate composition comprising:
- a flavor;
- from about 12% to about 20% by weight of an acid;
- from about 20% to about 95% by weight of water solvent;
- a sweetener; and
- wherein the acid is selected from a specified group including citric and malic acid.
- The complaint also asserts dependent claims 7 and 16, which add a density limitation.
Multi-Patent Capsule: U.S. Patent No. 11,744,267
- Patent Identification: U.S. Patent No. 11744267, "Flavoring Composition Concentrates", issued September 5, 2023.
- Technology Synopsis: The patent discloses point-of-consumption liquid flavoring concentrates designed for rapid dispersion in water (ʼ267 Patent, col. 2:39-44). The invention is a composition "consisting essentially of" specific components, including a flavor, at least 35% water, and a defined range of acid modifiers, which control the product's density and dispersion characteristics (ʼ267 Patent, Abstract; col. 10:21-32).
- Asserted Claims: The complaint asserts at least independent claim 15 (Compl. ¶ 53, 55).
- Accused Features: Various "Stur" brand LWE products are accused of infringing by being compositions that contain a flavor component, at least 35% water, and acid modifiers (e.g., citric acid) in a range of about 7% to 20% by weight (Compl. ¶¶ 53, 56-73).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Defendant Dyla’s "Stur" and "Stur Electrolytes" brand Liquid Water Enhancer (LWE) products in various flavors, including Strawberry Lemon, Black Raspberry, Peach, and others (Compl. ¶¶ 21, 37, 53).
- Functionality and Market Context: The products are concentrated liquid flavorings packaged in squeeze bottles for point-of-consumption use, allowing consumers to add flavor and other ingredients like electrolytes to plain water (Compl. ¶¶ 8-9). The complaint references product labels, provided as Exhibit D, which identify the product flavor and list ingredients such as citric acid and malic acid (Compl. ¶¶ 27, 43, Ex. D). The complaint alleges that these products compete directly with products sold by Plaintiff's licensee and are marketed as "direct substitutes" for products practicing the patents-in-suit (Compl. ¶¶ 10, 33).
IV. Analysis of Infringement Allegations
'659 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A liquid beverage concentrate composition | The "Stur Electrolytes" products are liquid beverage concentrate compositions. | ¶29 | col. 3:61-63 |
| comprising: a flavor; | The accused products have flavors such as "black raspberry." | ¶29 | col. 3:3-10 |
| from about 12% to about 20% by weight of an acid based on the weight of the liquid beverage concentrate composition; | Plaintiff’s testing allegedly revealed the Stur Electrolytes Black Raspberry product contains approximately 11.3% citric acid. Plaintiff alleges this infringes under the doctrine of equivalents. | ¶29, 31 | col. 4:4-10 |
| and from about 20% to about 95% by weight of water solvent based on the weight of the liquid beverage concentrate composition; | Plaintiff’s analysis allegedly revealed the product contains between 20% to 90% water. | ¶29 | col. 4:60-65 |
| wherein the acid is selected from the group consisting of citric acid, malic acid, tartaric acid, phosphoric acid, and any combination thereof. | The accused product contains citric acid, which is a member of the selected group. | ¶29 | col. 4:5-10 |
| From dependent claim 16: wherein the density...is in a range of from about 1.05 grams per mL to about 1.15 grams per mL. | Plaintiff’s testing allegedly revealed a density of approximately 1.16 grams per mL. Plaintiff alleges this infringes under the doctrine of equivalents, as it performs the same function of reducing dispersion time. | ¶29, 32 | col. 8:30-34 |
'462 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A liquid beverage concentrate composition | The "Stur Electrolytes" products are liquid beverage concentrate compositions. | ¶43 | col. 3:61-63 |
| comprising: a flavor; | The accused product has a "strawberry lemon" flavor. | ¶43 | col. 3:3-10 |
| from about 12% to about 20% by weight of an acid...; | Plaintiff’s testing allegedly revealed the Stur Electrolytes Strawberry Lemon product contains approximately 12.5% citric acid, which is within the claimed range. The product also contains malic acid. | ¶43 | col. 4:4-10 |
| from about 20% to about 95% by weight of water solvent...; | Plaintiff’s analysis allegedly revealed the product contains between 20% and 90% water. | ¶43 | col. 4:60-65 |
| and a sweetener | The accused product is alleged to contain "Stevia Leaf Extract" as a sweetener. | ¶43 | col. 4:11-14 |
| wherein the acid is selected from the group consisting of citric acid, malic acid, tartaric acid, phosphoric acid, and any combination thereof. | The product contains citric acid and malic acid, which are members of the selected group. | ¶43 | col. 4:5-10 |
- Identified Points of Contention:
- Scope Questions: The complaint explicitly raises infringement under the doctrine of equivalents for certain accused products where the tested acid concentration (11.3%) and density (1.16 g/mL) fall just outside the literal claim ranges (e.g., "about 12%" and "about 1.15 g/mL") (Compl. ¶¶ 31, 32, 47, 48). A central dispute will be whether the term "about" can be construed to cover these values, or alternatively, whether the compositions are legally equivalent.
- Technical Questions: The infringement allegations rely on Plaintiff's own "testing" (Compl. ¶¶ 27, 43). The methodology, accuracy, and reproducibility of this testing will likely be a point of discovery and evidentiary dispute. The question is what evidence Plaintiff can produce to prove the accused products' compositions meet the specific weight percentage and density limitations of the claims.
V. Key Claim Terms for Construction
The Term: "from about 12% to about 20% by weight"
- Context and Importance: This term is critical because Plaintiff's own allegations state that at least one accused product has an acid concentration of 11.3%, which is outside the "12% to 20%" range (Compl. ¶ 29). The entire infringement theory for that product may depend on the interpretation of "about" or a finding of equivalence. Practitioners may focus on this term because it directly implicates the boundary between literal infringement and the doctrine of equivalents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses "about" frequently when describing concentration ranges, suggesting an intent to not be limited to strict numerical precision as long as the functional purpose is met (e.g., ’659 Patent, col. 4:9-10; col. 5:20-22).
- Evidence for a Narrower Interpretation: The specification includes tables with specific data points linking concentration to density and dispersion time (e.g., ’659 Patent, Tables 1A & 2A). A party could argue that these examples define the operative scope and that "about" should not extend to values that fall outside the demonstrated functional relationship.
The Term: "consisting essentially of" (from ’267 Patent, Claim 15)
- Context and Importance: This transitional phrase limits the invention to the specified ingredients and any others that do not materially affect its "basic and novel properties." The accused products contain additional ingredients not listed in the claim, such as malic acid in some formulations and potentially vitamins or preservatives (Compl. ¶¶ 58, 60, 62). The case may turn on whether these unlisted ingredients are found to materially alter the claimed dispersion characteristics.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Plaintiff's likely view): The "basic and novel" characteristic is the rapid dispersion achieved by the specific water and acid modifier ratios (ʼ267 Patent, col. 2:39-44). Plaintiff may argue that other minor ingredients do not materially affect this core dispersion property.
- Evidence for a Narrower Interpretation (Defendant's likely view): A defendant could argue that additional components, especially other acids like malic acid, inherently alter the composition's overall acidity, density, or ionic strength, thereby materially affecting the dispersion properties that the patent claims to have optimized.
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement. The allegations focus on direct infringement through Dyla's own acts of making, using, and selling the accused products (Compl. ¶¶ 22, 38, 54).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge (Compl. ¶ 1). It provides specific dates for this knowledge, alleging Dyla was aware of Plaintiff's patent portfolio since September 2020 and received notice of infringement for the '659 and '462 patents, with testing results, on May 7, 2023 (Compl. ¶¶ 13-14). The complaint further alleges Dyla was notified of the allowed claims that issued as the '267 patent before it issued (Compl. ¶¶ 16-18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "about", as used in the claims' numerical ranges for acid concentration and density, be construed to literally encompass the values measured in Defendant’s products (e.g., 11.3% acid)? If not, the case will depend on a fact-intensive doctrine of equivalents analysis.
- A second key question will be one of claim construction: for the ’267 Patent, what are the "basic and novel properties" of the invention? The infringement analysis will turn on whether the additional ingredients found in the accused products, but not listed in the claim, "materially affect" those properties, thereby taking the products outside the scope of a claim using the phrase "consisting essentially of."
- Finally, a major question will be one of culpability: given the detailed allegations of repeated, specific pre-suit notices of infringement, a central issue will be whether Defendant’s continued sales of the accused products constitute objective recklessness, which could expose Defendant to a finding of willful infringement and enhanced damages.