DCT

1:24-cv-00363

ALM Holding Co v. Zydex Industries Pvt Ltd

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-00363, D. Del., 08/30/2024
  • Venue Allegations: Venue is alleged to be proper based on the contractual consent of all parties.
  • Core Dispute: Plaintiffs allege that Defendants’ ZycoTherm line of asphalt additives infringes six patents related to "warm mix" and "hot mix/warm laid" asphalt paving compositions and methods.
  • Technical Context: Warm mix asphalt technology allows for the production and application of road paving materials at significantly lower temperatures than conventional hot mix asphalt, offering benefits such as reduced energy consumption, lower emissions, and an extended paving season.
  • Key Procedural History: The complaint notes that two of the asserted patents (’725 and ’466 Patents) were the subject of prior litigation against other parties (Akzo Nobel and ArrMaz), which resulted in those parties taking licenses. Both patents also survived multiple ex parte reexaminations at the USPTO, with their patentability being affirmed. Plaintiffs previously filed suit against Defendants on two of the same patents in the Eastern District of Virginia, which was dismissed after Defendants consented to jurisdiction and venue in Delaware.

Case Timeline

Date Event
2007-09-07 Earliest Priority Date (’725, ’466, ’652, ’646 Patents)
2008-01-01 Plaintiffs grant exclusive license to MeadWestvaco Corp.
2008-02-22 Priority Date (’581, ’446 Patents)
2010-10-19 U.S. Patent No. 7,815,725 Issued
2011-07-19 U.S. Patent No. 7,981,466 Issued
2013-04-01 U.S. Patent No. 7,815,725 Reexamination Certificate (C1) Issued
2014-05-27 U.S. Patent No. 8,734,581 Issued
2014-11-05 District Court issues claim construction order for ’725 and ’466 Patents in prior litigation
2015-02-19 U.S. Patent No. 7,981,466 Reexamination Certificate (C1) Issued
2015-03-03 U.S. Patent No. 7,815,725 Reexamination Certificate (C2) Issued
2015-11-03 U.S. Patent No. 9,175,446 Issued
2016-07-19 U.S. Patent No. 9,394,652 Issued
2017-09-XX Plaintiffs send letter to Zydex regarding potential infringement of the patent portfolio
2019-02-26 U.S. Patent No. 10,214,646 Issued
2023-07-21 Plaintiffs file lawsuit against Zydex in E.D. Va.
2024-08-30 Amended Complaint Filed in D. Del.

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

U.S. Patent No. 10,214,646 - "Warm Mix Paving Composition w/ Lubricating Antistrip Additive," Issued Feb. 26, 2019

The Invention Explained

  • Problem Addressed: The patent addresses the drawbacks of conventional "hot mix" asphalt, which requires high production and compaction temperatures, leading to significant energy consumption, emissions, and a limited paving season (Compl. ¶2). Prior attempts to create "warm mix" asphalt allegedly required foaming with water or adding viscosity-reducing waxes, which had their own deficiencies, such as requiring plant modifications or altering binder properties (Compl. ¶24).
  • The Patented Solution: The invention is an asphalt paving composition that uses a "lubricating antistrip additive" within a "functionally dry, essentially water-free, non-foamed asphalt binder" (’646 Patent, Abstract). This additive is designed to reduce the mixing and compaction temperatures needed to adequately coat aggregate, thereby creating a "warm mix" composition without the need for foaming or costly plant modifications (’646 Patent, col. 1:40-52; Compl. ¶25).
  • Technical Importance: This technology allows asphalt to be produced and paved at lower temperatures, which reduces energy costs and emissions, creates safer working conditions, and extends the paving season into colder weather (Compl. ¶25).

Key Claims at a Glance

  • The complaint asserts Independent Claim 1 (’646 Patent, col. 14:20-34; Compl. ¶82).
  • Claim 1 recites an asphalt paving composition with the following key elements:
    • A functionally dry, essentially water-free, non-foamed asphalt binder.
    • The binder contains a "lubricating antistrip additive."
    • The binder is mixed with uncompacted aggregate to form a warm mix paving composition.
    • The additive reduces the mixing and compaction temperature such that the composition is produced at 280°F or lower and can be compacted at 260°F or lower.
    • If the composition includes a lubricating wax, the wax is 0.5 weight percent or less of the asphalt binder weight.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 7,815,725 - "Warm Asphalt Binder Compositions Containing Lubricating Agents," Issued Oct. 19, 2010

The Invention Explained

  • Problem Addressed: As with the ’646 Patent, this patent addresses the high energy usage and operational limitations of conventional hot mix asphalt processes (Compl. ¶24).
  • The Patented Solution: The invention claims an asphalt paving composition that includes a "lubricating additive" (such as a surfactant, non-surfactant, or acid) in a "functionally dry, essentially water-free, non-foamed asphalt binder" (’725 Patent, Abstract). The key function of this additive is to provide sufficient lubrication to allow aggregate coating and compaction at a temperature at least 30°F lower than a comparable composition without the additive (’725 Patent, col. 1:29-45, Claim 1). This reduction in required temperature creates the "warm mix" asphalt.
  • Technical Importance: The solution provides the same industrial advantages of reduced energy, cost, and emissions, and an extended paving season, as described for the ’646 Patent (Compl. ¶25).

Key Claims at a Glance

  • The complaint asserts Independent Claims 1 and 25, and Dependent Claims 20 and 44 (’725 Patent, col. 13:55-col. 14:67; Compl. ¶¶101-104).
  • Claim 1 recites a warm mix asphalt paving composition with the following key elements:
    • A functionally dry, essentially water-free, non-foamed asphalt binder.
    • The binder contains a lubricating additive (comprising a lubricating surfactant, non-surfactant, acid, or combination).
    • The binder is mixed with uncompacted aggregate.
    • The composition is produced at a warm mix temperature at least 30°F lower than a comparison temperature needed without the additive.
    • If a lubricating wax is present, it is 0.5 weight percent or less.
  • Claim 25 is similar to Claim 1 but recites a specific group of lubricating additives, including "lubricating surfactant, lubricating non-surfactant other than non-surfactant additives based on wax chemistry, lubricating acid or combination thereof."
  • The complaint also asserts dependent claims specifying a warm mix temperature of 280°F or lower.

U.S. Patent No. 9,394,652

  • Patent Identification: U.S. Patent No. 9,394,652, "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives," Issued July 19, 2016.
  • Technology Synopsis: This patent, a continuation of the family leading to the ’725 Patent, claims a paving process using warm mix asphalt compositions that specifically include "recycled asphalt pavement" (RAP) (Compl. ¶22). The technology allows RAP to be combined with a binder containing a lubricating additive at a reduced "warm mix temperature" (Compl. ¶118).
  • Asserted Claims: Independent Claim 1 and Dependent Claims 2 and 5 (Compl. ¶¶118-120).
  • Accused Features: The complaint alleges that Defendants' ZycoTherm products are intended for use in paving processes that combine aggregate with recycled asphalt pavement, infringing the claimed method (Compl. ¶133).

U.S. Patent No. 7,981,466

  • Patent Identification: U.S. Patent No. 7,981,466, "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives," Issued July 19, 2011.
  • Technology Synopsis: As a divisional of the ’725 Patent, this patent claims methods of making and using warm mix paving compositions containing a lubricating additive (Compl. ¶21). The claims cover the process steps of mixing a non-foamed binder and additive with aggregate at 280°F or lower, applying the material, and compacting it at 260°F or lower (Compl. ¶137).
  • Asserted Claims: Independent Claims 1, 12, 17, and 20 (Compl. ¶¶137-140).
  • Accused Features: The complaint alleges that the use of ZycoTherm additives in state-approved warm mix paving projects follows the claimed method steps, including the specified mixing and compaction temperatures (Compl. ¶142).

U.S. Patent No. 8,734,581

  • Patent Identification: U.S. Patent No. 8,734,581, "Processing Bituminous Mixtures for Paving at Reduced Temperatures," Issued May 27, 2014.
  • Technology Synopsis: This patent claims a "hot mix, warm laid" paving process. It addresses situations where it is desirable to prepare asphalt at high "hot mix" temperatures (greater than 160°C) but then transport and compact it at lower "warm mix" temperatures (less than 130°C), which is useful for long transit times or paving in cold climates (Compl. ¶¶38, 42).
  • Asserted Claims: Independent Claims 1 and 16 (Compl. ¶¶151-152).
  • Accused Features: The complaint alleges that Zydex advertises its products for use in "longer hauls or ... cold conditions," which constitutes a "hot mixed but warm laid pavement" process that infringes the patent (Compl. ¶156, ¶157).

U.S. Patent No. 9,175,446

  • Patent Identification: U.S. Patent No. 9,175,446, "Processing Bituminous Mixtures for Paving at Reduced Temperatures," Issued Nov. 3, 2015.
  • Technology Synopsis: Similar to the ’581 Patent, this patent claims a "hot mix, warm laid" process. The claimed process comprises mixing binder, aggregate, and additive at a temperature greater than 160°C, then adds the explicit step of "hauling the bituminous mix to a paving site," before compacting at a temperature less than 130°C (Compl. ¶¶41, 162).
  • Asserted Claims: Independent Claim 1 (Compl. ¶162).
  • Accused Features: The complaint alleges infringement based on the use of ZycoTherm additives in applications that involve preparing asphalt at hot mix temperatures and then hauling it to a site for compaction at lower, warm mix temperatures (Compl. ¶165).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are Defendants' line of asphalt additives, including ZycoTherm, ZycoTherm SP, ZycoTherm SP2, Zycotherm EZ, and Zycotherm LS, collectively referred to as the "ZycoTherm additives" (Compl. ¶63).
  • Functionality and Market Context:
    • The ZycoTherm additives are marketed as chemical products that function as both "antistrip" agents and "warm mix additives" for asphalt paving (Compl. ¶¶65, 70). Their advertised function is to enable "lower production and compaction temperatures during paving" by creating a "permanent chemical bond with the aggregate and improved adhesion to bitumen" (Compl. ¶¶65-66). A chart in the complaint from Zydex's promotional materials shows that adding ZycoTherm improves "Compaction Efficiency" compared to asphalt without the additive (Compl. p. 13). The complaint also includes a diagram from Zydex materials instructing users on various "Blending Methods" for adding the additives to asphalt, such as at a terminal or in-line at the plant (Compl. p. 14). The products are composed of silane-based chemistry, including "hydroxyalkylalkylsilyl" and "alkoxyalkylsilyl" compounds (Compl. ¶¶74, 16).
    • The complaint alleges the ZycoTherm line has been used to produce over 50 million tons of asphalt and is approved for use as a warm mix additive by numerous state departments of transportation, making them key products in the road construction market (Compl. ¶¶64, 77-78).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,214,646 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An asphalt paving composition comprising functionally dry, essentially water-free, non-foamed asphalt binder... The ZycoTherm additives are added to a functionally dry, essentially water-free, non-foamed asphalt binder when used in accordance with Defendants' instructions. ¶87 col. 1:40-42
...containing lubricating antistrip additive... Defendants' marketing materials state that "ZycoTherm is a next generation antistrip additive with the additional benefit of warm mix asphalt." ¶84 col. 1:43-44
...wherein the lubricating antistrip additive reduces the mixing and compaction temperature of the warm mix paving composition... Zydex promotional materials advertise "temperature reduction up to 30°C (60°F), during mix production and field compaction." ¶66 col. 1:46-49
...such that the paving composition is produced at and is at a temperature of 280°F. or lower and can be compacted at a temperature of 260°F. or lower... State DOTs, such as Arizona and Illinois, have approved ZycoTherm products for use in "warm mix asphalt," which is defined by those states as asphalt produced at temperatures of 275°F or lower. A Virginia DOT project allegedly recorded a compaction temperature of 256°F. ¶¶91, 92, 98 col. 1:49-52
...and if the warm mix paving composition also comprises a lubricating wax, then the lubricating wax is 0.5 weight percent or less of the asphalt binder weight. The material safety data sheets for the ZycoTherm products do not indicate the presence of wax, and Zydex's website allegedly differentiates its chemical additives from "organic additives such as waxes." ¶88 col. 1:52-55

U.S. Patent No. 7,815,725 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A warm mix asphalt paving composition comprising i) functionally dry, essentially water-free, non-foamed asphalt binder... ZycoTherm additives are used by being added to a functionally dry, essentially water-free, non-foamed asphalt binder. ¶108 col. 1:29-31
...containing ii) lubricating additive comprising lubricating surfactant, lubricating non-surfactant, lubricating acid or combination thereof... A technical paper allegedly identifies ZycoTherm as a "surfactant-based silane additive." ¶107 col. 2:10-14
...wherein the warm mix asphalt paving composition is produced at and is at a warm mix temperature at least 30° F. lower than a comparison temperature needed to produce a comparison paving composition containing binder-coated aggregate without the lubricating additive... The use of ZycoTherm additives in state-approved warm mix projects in Arizona and Illinois allegedly involves production at temperatures (e.g., 215-275°F) that are at least 30°F lower than corresponding hot-mix temperatures. ¶¶111, 112 col. 1:37-42
...and if the lubricating additive comprises a lubricating wax, the wax is 0.5 weight percent or less of the asphalt binder weight. Material safety data sheets for the accused products allegedly do not indicate the presence of wax, and Zydex's website distinguishes its technology from waxes. ¶109 col. 1:42-45

Identified Points of Contention

  • Scope Questions: The complaint alleges that the terms "lubricating additive" and "lubricating antistrip additive" read on the ZycoTherm products, which are marketed as "antistrip" additives that enable warm mix benefits (Compl. ¶¶84, 106). A central dispute may be whether the primary function of the accused products—described as creating a "permanent chemical bond" for "improved adhesion" (Compl. ¶66)—falls within the scope of "lubricating" as used and defined in the patents, which discuss "visco-lubricity" and reducing physical forces during mixing ('646 Patent, col. 5:32-49).
  • Technical Questions: The claims require specific temperature reductions, either relative ("at least 30° F. lower") or absolute ("280°F. or lower"). The complaint provides evidence from state DOT approvals and one specific project record (Compl. ¶¶91, 98, 111). A key evidentiary question for the court will be whether Plaintiffs can demonstrate that the accused products are routinely and systematically used by customers in a manner that meets these specific temperature limitations in practice, as opposed to merely being approved for a general category of use.

V. Key Claim Terms for Construction

  • The Term: "lubricating antistrip additive" ('646 Patent) / "lubricating additive" ('725 Patent)

    • Context and Importance: This term is the core of the invention. Its construction will determine whether the accused ZycoTherm products, marketed primarily as "antistrip" additives that provide warm mix benefits, practice the claimed invention. Practitioners may focus on whether "lubricating" requires a specific physical mechanism (e.g., friction reduction) or can be interpreted more broadly to include any additive that facilitates lower-temperature mixing and compaction, including chemical adhesion promoters.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The '646 patent title is "Warm Mix Paving Composition w/ Lubricating Antistrip Additive," suggesting the two functions are linked. The specification notes that an observed "reduction in dry tensile strength" in asphalt mixes is due to the "lubricating effect of antistripping additive," directly connecting the two concepts ('646 Patent, col. 6:35-42).
      • Evidence for a Narrower Interpretation: The specification describes testing for "visco-lubricity," focusing on the "normal force" generated during rotational testing as a measure of lubrication ('646 Patent, col. 5:32-49). This suggests "lubricating" refers to a specific, measurable physical property of reducing shear forces, distinct from the chemical function of an antistrip agent.

  • The Term: "functionally dry, essentially water-free, non-foamed asphalt binder"

    • Context and Importance: This limitation distinguishes the invention from prior art warm mix technologies that relied on injecting water to create foam. The infringement theory depends on the accused additives being used in a binder that meets this definition. The dispute could center on how much incidental water is permissible before a binder is no longer "functionally dry" or "essentially water-free."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification explicitly states the term does not mean "completely free of water, moisture or added water" and that it is "acceptable that there is some moisture" from the aggregate ('646 Patent, col. 2:61-65). This supports a flexible definition that accommodates real-world paving conditions.
      • Evidence for a Narrower Interpretation: The patent background and abstract repeatedly frame the invention as an alternative to water-based foaming methods (Compl. ¶24; ’646 Patent, Abstract). This context suggests the term's primary purpose is to exclude any process that intentionally introduces water to create a foam, thereby limiting its scope to truly non-aqueous systems.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. It alleges inducement based on Defendants' promotional materials, technical documents, and website content, which allegedly instruct customers on how to use the ZycoTherm additives in an infringing manner to achieve warm mix asphalt benefits (Compl. ¶¶65-68, 178). Contributory infringement is alleged on the basis that the ZycoTherm additives are a material component of the claimed compositions, are not a staple article of commerce, and are known to be especially made for infringing uses (Compl. ¶177).
  • Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It specifically cites a September 2017 letter sent from Plaintiffs to Zydex identifying the ’466 and ’725 patents and Zydex's subsequent October 2017 reply (Compl. ¶¶170, 172). It further alleges that Defendants launched the ZycoTherm SP and SP2 products after receiving this notice (Compl. ¶173).

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

  • A core issue will be one of functional definition: will the term “lubricating,” as defined by the patent’s specification and prosecution history, be construed to cover the chemical adhesion and "antistripping" mechanism of action described for the accused ZycoTherm products, or will it be limited to a narrower physical friction-reduction function?
  • A key evidentiary question will be one of proof of practice: can Plaintiffs demonstrate through discovery that Defendants’ customers consistently and actually use the ZycoTherm additives in processes that meet the specific, quantitative temperature limitations of the asserted claims (e.g., producing below 280°F, compacting below 260°F), or will the evidence show only a general capability for temperature reduction without meeting the claimed thresholds?
  • A third question concerns willfulness and damages: given the allegation that Defendants received notice of the patent portfolio in 2017 before launching new versions of the accused products, the court will have to examine the extent of Defendants’ knowledge and intent, which could significantly impact potential damages if infringement is found.