1:24-cv-00613
Nouryon USA LLC v. Xene Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nouryon USA, LLC (Delaware)
- Defendant: Xene Corporation (New York)
- Plaintiff’s Counsel: Armstrong Teasdale LLP
- Case Identification: 1:24-cv-00613, D. Del., 05/22/2024
- Venue Allegations: Plaintiff Nouryon asserts that venue is proper in the District of Delaware based on a mandatory forum selection clause in a November 2021 Confidentiality Agreement executed by the parties.
- Core Dispute: Plaintiff seeks a declaratory judgment of non-infringement and invalidity concerning two patents owned by Defendant, which relate to methods of manufacturing fiber composite products, such as tennis rackets, using expandable microspheres.
- Technical Context: The technology involves manufacturing processes for lightweight, high-strength composite materials, where an internal foaming agent generates pressure during curing, a technique used in sports equipment and other demanding applications.
- Key Procedural History: This declaratory judgment action follows a prior lawsuit filed by the patentee, Xene, against Nouryon on May 16, 2022, in the Eastern District of New York, alleging infringement of the same patents. Nouryon's filing in Delaware appears to be a strategic response based on the forum selection clause in the parties' pre-existing confidentiality agreement, creating a jurisdictional dispute between the two venues.
Case Timeline
| Date | Event |
|---|---|
| 2009-06-18 | Earliest Priority Date for '447 and '666 Patents |
| 2012-12-11 | U.S. Patent No. 8,328,666 Issued |
| 2019-12-10 | U.S. Patent No. 10,500,447 Issued |
| 2021-11-01 | Parties entered into a Confidentiality Agreement |
| 2022-05-16 | Xene filed prior infringement suit in E.D.N.Y. |
| 2024-05-22 | Nouryon filed this Declaratory Judgment Complaint |
II. Technology and Patent(s)-in-Suit Analysis
Editor's Note: The complaint identifies U.S. Patent No. 8,238,666 in paragraph 4 but asserts claims for declaratory judgment of non-infringement and invalidity of U.S. Patent No. 8,328,666 in Counts III and IV. The '328 patent is technologically related to the other patent-in-suit, while the '238 patent is not. This report analyzes the '328 patent as intended by the infringement counts.
U.S. Patent No. 10,500,447 - “Fiber Composite and Process of Manufacture,” Issued December 10, 2019
The Invention Explained
- Problem Addressed: The patent describes conventional manufacturing of hollow graphite composite sports racquets as suffering from several drawbacks. The process relies on manual labor and injecting compressed air through a nozzle to press fiber layers against a mold, which can lead to quality control issues, production problems, and requires the racquet to have an open-ended shaft. The resulting hollow frames are also prone to vibrations that can cause player injury and are limited in how thin they can be made. (’447 Patent, col. 1:22-col. 2:55).
- The Patented Solution: The invention proposes a new manufacturing method that eliminates the need for external air injection. The process involves placing a “foam plastic forming material,” such as powdered microcapsules containing a foaming agent, inside a tubular layup of resin-impregnated fiber. The ends of this layup are substantially closed. When the entire assembly is heated in a mold, the microcapsules expand, generating internal pressure that forces the fiber layers against the mold walls to form a solid, foam-filled composite structure. (’447 Patent, Abstract; col. 3:26-col. 4:65). This allows for a completely enclosed product without an open shaft.
- Technical Importance: This method purports to create composite parts with a superior strength-to-weight ratio and improved shock absorption, while also enabling a more uniform, automated, and less labor-intensive manufacturing process than traditional air-pressure molding. (’447 Patent, col. 3:10-25; col. 4:30-36).
Key Claims at a Glance
- The complaint seeks a declaration regarding "any valid and enforceable claim" and does not identify specific asserted claims (Compl. ¶14). Independent claim 1 is representative:
- Essential Elements of Claim 1:
- A method of making a fiber composite member, comprising:
- (a) forming flat members of fiber permeated with resinous material;
- (b) wrapping said flat members to form a tubular member portion having first and second ends;
- (c) effecting placement of a foam plastic forming material, comprising capsules filled with heat expandable material, within the tubular member portion;
- (d) substantially closing the ends of the tubular member portion to define a substantially closed bladder;
- (e) introducing said closed bladder into a mold;
- (f) heating said tubular member portion to cause the foam plastic forming material to expand and apply pressure; and
- (g) hardening said resinous material to form the fiber composite member.
U.S. Patent No. 8,328,666 - “Fiber composite and process of manufacture,” Issued December 11, 2012
The Invention Explained
- Problem Addressed: As the parent patent to the '447 patent, the '666 patent addresses the same technical problems in composite manufacturing: the limitations of air-injection molding, including inconsistent quality, labor-intensive processes, and undesirable structural and performance characteristics (e.g., vibration) in the resulting hollow products. (’666 Patent, col. 1:25-col. 2:67).
- The Patented Solution: The '666 patent discloses a similar solution centered on using an expandable foaming agent inside a fiber layup to generate internal molding pressure. It describes filling a sleeve with microcapsules, wrapping it with resin-permeated fiber, sealing the ends, and heating it in a mold. The expansion of the foaming agent is timed to coincide with the curing of the resin, pressing the fiber layers against the mold and creating a solid, foam-filled structure. (’666 Patent, col. 11:25-col. 12:53).
- Technical Importance: The invention aimed to provide a more reliable and automatable method for producing stronger and better-dampened composite items, such as tennis racquets, by replacing external air pressure with a controlled, internal foaming process. (’666 Patent, col. 4:20-36).
Key Claims at a Glance
- The complaint does not identify specific asserted claims (Compl. ¶26). Independent claim 1 is representative:
- Essential Elements of Claim 1:
- A method for manufacturing a fiber composite member, comprising:
- providing a plurality of layers of fiber permeated with resinous material;
- wrapping said layers to form a closed bladder defining an internal cavity;
- disposing a quantity of a first resinous material between the fiber layers;
- disposing a second resinous material and a foaming agent inside the cavity;
- the foaming agent and second resinous material being adapted to interact during curing to create a structure with voids containing a gaseous material under pressure in excess of 5 kg/cm².
III. The Accused Instrumentality
Product Identification
- The complaint identifies Nouryon's product "Expancel®" as the material central to the dispute. (Compl. ¶6).
Functionality and Market Context
- Expancel® is described as "small thermoplastic microspheres encapsulating a gas that expand in size and increase in volume when heated." (Compl. ¶6). The complaint states the product was invented in the 1970s. (Compl. ¶6). The dispute centers on the use of Expancel® by Nouryon's customers in processes for making "tennis rackets and various other fiber composite items," which Xene has allegedly accused of infringement. (Compl. ¶6). The complaint does not provide further technical detail on how Expancel® is used by these customers.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint is for a declaratory judgment of non-infringement and therefore does not contain allegations mapping product features to claim elements. Instead, it makes broad denials of infringement. The following table outlines the elements of the representative claim from the '447 patent and notes the complaint's position.
’447 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality |
|---|---|
| (a) forming flat members of fiber permeated with resinous material | The complaint does not provide sufficient detail for analysis of this element. |
| (b) wrapping said flat members to form a tubular member portion... | The complaint does not provide sufficient detail for analysis of this element. |
| (c) effecting placement of a foam plastic forming material...comprising capsules filled with heat expandable material... | The complaint identifies Nouryon's Expancel® product as thermoplastic microspheres that expand when heated, but provides no specific allegations from Xene regarding how customers place this material inside a tubular member. |
| (d) substantially closing the ends of the tubular member portion...to define a substantially closed bladder | The complaint asserts non-infringement without addressing whether its customers' processes involve this specific step, which is a key departure from prior art methods described in the patent. |
| (e) introducing said closed bladder into a mold | The complaint does not provide sufficient detail for analysis of this element. |
| (f) heating said tubular member portion...to cause the foam plastic forming material to expand and apply pressure... | The complaint acknowledges that Expancel® expands when heated but provides no specific allegations from Xene regarding the pressures achieved in customer processes or how they relate to the claims. |
| (g) hardening said resinous material to form the fiber composite member | The complaint does not provide sufficient detail for analysis of this element. |
Identified Points of Contention
- Scope Questions: A central issue may be whether selling a raw material (Expancel®), which is a component used in a multi-step manufacturing process, can give rise to liability for infringing a method claim. This raises the question of whether Nouryon could be liable for inducing or contributing to the infringement allegedly committed by its customers.
- Technical Questions: A key technical question is whether the processes employed by Nouryon's customers meet every limitation of the asserted claims. For instance, what evidence demonstrates that customers' methods include the specific step of "substantially closing the ends of the tubular member portion... to define a substantially closed bladder" ('447 Patent, Claim 1(d)) before heating, as this is a critical distinction over the prior art cited in the patent.
V. Key Claim Terms for Construction
The Term: "substantially closed bladder" ('447 Patent, Claim 1(d))
Context and Importance: This term is critical because the patent distinguishes its invention from prior art air-injection methods that require an open-ended tube for a nozzle. The definition of how "closed" the bladder must be to meet this limitation will be central to the infringement analysis. Practitioners may focus on this term because if customers' manufacturing processes do not create a structure that is "substantially closed" before heating, a core element of the claim would not be met.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the word "substantially" suggests the closure does not need to be hermetically perfect, but merely sufficient to contain the pressure generated by the foaming agent and form the part.
- Evidence for a Narrower Interpretation: The specification emphasizes that this closure is a key point of novelty, contrasting with prior art that leaves an open end for an air nozzle. (’447 Patent, col. 7:4-10). Xene may argue that the term requires a specific, deliberate act of sealing both ends of the layup before it is placed in the mold, not just an incidental closure.
The Term: "foam plastic forming material" ('447 Patent, Claim 1(c))
Context and Importance: The identity and properties of this material are at the heart of the invention. Nouryon's product, Expancel®, must fall within the scope of this term for there to be any possibility of infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to the material in various ways, including as a "powdered material" and "polymeric beads," suggesting the term is not limited to a single form. (’447 Patent, col. 4:25-27).
- Evidence for a Narrower Interpretation: The patent repeatedly describes the preferred embodiment as using "microcapsules" or "microspheres" with a thermoplastic shell encapsulating a gas. (’447 Patent, col. 11:30-40). A party could argue that the term should be limited to materials with this specific encapsulated structure, potentially excluding other types of chemical foaming agents.
VI. Other Allegations
- Indirect Infringement: While this is a complaint for declaratory judgment of non-infringement, it explicitly refers to Nouryon's potential "indirect" infringement and the non-infringement of its "customers." (Compl. ¶¶ 14, 15, 27). This strongly suggests that the underlying dispute involves allegations by Xene that Nouryon induces infringement by selling Expancel® with the knowledge and intent that its customers will use it in a manner that practices the patented methods. The complaint, however, does not detail the specific facts Xene has alleged to support inducement.
- Willful Infringement: The complaint does not allege willfulness. However, it acknowledges a prior lawsuit filed by Xene in 2022 and a 2021 confidentiality agreement. (Compl. ¶¶ 5, 7). This history establishes that Nouryon has had pre-suit knowledge of the patents-in-suit for a significant period. Should Xene counterclaim for infringement in this action, it would have a basis to allege that any ongoing infringement by Nouryon is willful.
VII. Analyst’s Conclusion: Key Questions for the Case
Procedural Posture: The immediate and determinative question is jurisdictional: will the District of Delaware exercise jurisdiction over this declaratory judgment action based on the alleged forum selection clause, or will it defer to the first-filed infringement suit pending in the Eastern District of New York? The resolution of this procedural battle will dictate the venue and strategic landscape of the entire dispute.
Validity in View of Prior Art: Nouryon's primary substantive defense appears to be invalidity. The complaint cites prior art that allegedly predates the patents, and its own accused product was invented in the 1970s. (Compl. ¶6, ¶¶ 20, 32). A central question for the court will therefore be one of patentability: does the claimed method—specifically the combination of using an encapsulated foaming agent within a closed fiber bladder—represent a non-obvious advance over prior art techniques for manufacturing foam-core composites?
Indirect Infringement and Intent: Assuming the patents are valid, the core infringement question will likely be one of inducement: what evidence shows that Nouryon, by selling its Expancel® product, specifically intended for its customers to perform every step of the patented method, including the novel "substantially closed bladder" limitation? The case may turn on the content of Nouryon's technical literature, user manuals, and customer support communications.