DCT

1:25-cv-00155

ALM Holding Co v. Zydex Industries Pvt Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00155, D. Del., 02/07/2025
  • Venue Allegations: Venue is alleged to be proper as all parties have contractually consented to venue in the District of Delaware.
  • Core Dispute: Plaintiffs allege that Defendants’ ZycoTherm line of chemical additives, used for making asphalt, infringes six patents related to "warm mix" and "hot mix, warm laid" asphalt paving compositions and methods.
  • Technical Context: The technology involves chemical additives that allow asphalt to be mixed and compacted at lower temperatures than conventional "hot mix" asphalt, designed to reduce energy consumption and extend the paving season.
  • Key Procedural History: The complaint notes that two of the asserted patents (U.S. Patent Nos. 7,815,725 and 7,981,466) previously survived multiple ex parte reexaminations initiated by third parties. Plaintiffs also reference prior litigation against other competitors that resulted in licensing agreements. A prior lawsuit against Zydex was dismissed for lack of standing, which Plaintiffs allege was cured by a January 2025 license amendment that restored their right to sue for infringement. The complaint also alleges that Plaintiffs provided Zydex with notice of potential infringement of certain patents in September 2017.

Case Timeline

Date Event
2007-09-07 Earliest Priority Date for ’725, ’466, ’652, and ’646 Patents
2008-02-22 Earliest Priority Date for ’581 and ’446 Patents
2010-10-19 U.S. Patent No. 7,815,725 Issues
2011-07-19 U.S. Patent No. 7,981,466 Issues
2013-04-01 Reexamination Certificate US 7,815,725 C1 Issues
2014-05-27 U.S. Patent No. 8,734,581 Issues
2015-02-19 Reexamination Certificate US 7,981,466 C1 Issues
2015-03-03 Reexamination Certificate US 7,815,725 C2 Issues
2015-11-03 U.S. Patent No. 9,175,446 Issues
2016-07-19 U.S. Patent No. 9,394,652 Issues
2017-09-01 Plaintiffs send letter to Zydex regarding potential infringement (approx. date)
2019-02-26 U.S. Patent No. 10,214,646 Issues
2023-07-21 Prior E.D. Va. lawsuit filed by Plaintiffs against Zydex
2024-01-23 E.D. Va. lawsuit stipulated to dismissal without prejudice
2025-01-13 License agreement with Ingevity amended
2025-02-07 Complaint Filed

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

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

The Invention Explained

  • Problem Addressed: Prior art methods for creating "warm mix" asphalt compositions, which are paved at lower temperatures than traditional "hot mix," suffered from numerous deficiencies (Compl. ¶24). These included requiring the step of foaming asphalt with water, adding viscosity-reducing agents like wax at high concentrations, needing significant modifications to asphalt plants, and undesirably altering the temperature grade of the asphalt binder itself (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 chemical additive is described as providing a lubricating effect that allows the asphalt binder to adequately coat the aggregate at production temperatures of 280°F or lower, with subsequent compaction possible at temperatures of 260°F or lower, without the drawbacks of prior methods (Compl. ¶25; ’646 Patent, col. 2:50-55).
  • Technical Importance: This technology allows for reduced energy consumption, lower emissions, and cost savings in the asphalt paving industry by enabling work at lower temperatures (Compl. ¶25).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶87).
  • The essential elements of Claim 1 are:
    • An asphalt paving composition comprising a functionally dry, essentially water-free, non-foamed asphalt binder containing a lubricating antistrip additive.
    • The binder is mixed with uncompacted aggregate to provide an adequately coated warm mix paving composition.
    • The additive reduces the mixing and compaction temperature such that the composition is produced at or below 280°F and can be compacted at or below 260°F.
    • If the composition includes a lubricating wax, the wax is limited to 0.5 weight percent or less of the asphalt binder.
  • The complaint does not explicitly reserve the right to assert additional claims for this patent but makes general allegations of infringement of one or more claims (Compl. ¶181).

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

The Invention Explained

  • Problem Addressed: The patent addresses the need to reduce the high temperatures required for conventional hot mix asphalt production and compaction, which are energy-intensive and create emissions (Compl. ¶2). Prior attempts to lower these temperatures had drawbacks, as described in the complaint (Compl. ¶24).
  • The Patented Solution: The invention provides an asphalt binder composition containing a lubricating agent (such as a surfactant, non-surfactant, or acid) that is "functionally dry" and "non-foamed" (’725 Patent, Abstract). This additive imparts "visco-lubricity," a characteristic where the material exhibits a reduced normal force under high rotational shear, allowing it to lubricate the aggregate more effectively than a simple reduction in viscosity would suggest (’725 Patent, col. 5:32-44). This enables production and compaction of asphalt mixtures at temperatures at least 30°F lower than similar mixtures without the additive (Compl. ¶20).
  • Technical Importance: By enabling lower working temperatures, the invention offers benefits including reduced energy use, an extended paving season, and improved pavement life (Compl. ¶¶2, 25).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 25, and dependent claims 20 and 44 (Compl. ¶¶ 106, 108).
  • The essential elements of Claim 1 are:
    • A warm mix asphalt paving composition with 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 thereof).
    • The binder is mixed with uncompacted aggregate.
    • The composition is produced at a temperature at least 30°F lower than a comparison composition without the additive.
    • If a lubricating wax is present, it is limited to 0.5 weight percent or less.
  • Claim 25 is similar to claim 1 but recites a slightly different Markush group for the lubricating additive.

U.S. Patent No. 9,394,652 - "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives"

  • Patent Identification: U.S. Patent No. 9,394,652, "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives," issued July 19, 2016 (Compl. ¶17).
  • Technology Synopsis: This patent, which stems from the '725 patent family, claims paving processes and warm mix compositions that specifically include recycled asphalt pavement (RAP) along with the lubricating additive and aggregate (Compl. ¶22). The technology allows for the inclusion of recycled materials while still achieving the benefits of lower-temperature paving (Compl. ¶138).
  • Asserted Claims: Independent claim 1 and dependent claims 2 and 5 (Compl. ¶¶ 123-125).
  • Accused Features: The complaint alleges that Defendants' ZycoTherm products are intended for and have been used in paving processes where the asphalt binder composition is mixed with both aggregate and RAP (Compl. ¶138).

U.S. Patent No. 7,981,466 - "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives"

  • Patent Identification: U.S. Patent No. 7,981,466, "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives," issued July 19, 2011 (Compl. ¶16).
  • Technology Synopsis: As a divisional of the '725 patent, this patent claims methods of making and using the warm mix paving compositions (Compl. ¶21). The claims are directed to the process steps of mixing the binder, lubricating additive, and aggregate at reduced temperatures, and then applying and compacting the resulting material to form a paved surface (Compl. ¶¶ 142, 144).
  • Asserted Claims: Independent claims 1, 12, 17, and 20 (Compl. ¶¶ 142-145).
  • Accused Features: The complaint alleges that the use of ZycoTherm additives by Defendants' customers in making and applying warm mix asphalt constitutes infringement of these method claims (Compl. ¶147).

U.S. Patent No. 8,734,581 - "Processing Bituminous Mixtures for Paving at Reduced Temperatures"

  • Patent Identification: U.S. Patent No. 8,734,581, "Processing Bituminous Mixtures for Paving at Reduced Temperatures," issued May 27, 2014 (Compl. ¶36).
  • Technology Synopsis: This patent claims a "hot mix, warm laid" process, where a bituminous mix is formed at a high temperature (greater than 160°C) but is compacted at a significantly lower, warm-mix temperature (less than 130°C) (Compl. ¶38). This approach is designed to facilitate longer transit times or paving in colder climates where significant heat loss is expected between production and application (Compl. ¶42).
  • Asserted Claims: Independent claims 1 and 16 (Compl. ¶¶ 156-157).
  • Accused Features: The complaint alleges that Defendants' marketing encourages, and its customers practice, using ZycoTherm additives in scenarios where asphalt is prepared hot but laid warm to accommodate long hauls or cold weather paving (Compl. ¶161).

U.S. Patent No. 9,175,446 - "Processing Bituminous Mixtures for Paving at Reduced Temperatures"

  • Patent Identification: U.S. Patent No. 9,175,446, "Processing Bituminous Mixtures for Paving at Reduced Temperatures," issued November 3, 2015 (Compl. ¶39).
  • Technology Synopsis: Related to the '581 patent, this patent also claims a "hot mix, warm laid" process, but its independent claim explicitly recites the step of "hauling the bituminous mix to a paving site" between the hot mixing step and the warm compacting step (Compl. ¶41). This further focuses the invention on applications involving significant transport time.
  • Asserted Claims: Independent claim 1 (Compl. ¶167).
  • Accused Features: The complaint alleges infringement through the use of ZycoTherm additives in processes that involve preparing hot mix asphalt and transporting it over distances that result in it being laid and compacted at warm mix temperatures (Compl. ¶170).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendants' line of chemical additives sold under the "ZycoTherm" brand, including ZycoTherm, ZycoTherm SP, ZycoTherm SP2, Zycotherm EZ, and Zycotherm LS (Compl. ¶68).

Functionality and Market Context

  • The ZycoTherm products are marketed as "warm mix additives" that also function as "antistrip" agents (Compl. ¶¶ 74-75). According to Defendants' promotional materials cited in the complaint, the additives enable a reduction in asphalt mixing and compaction temperatures by up to 30-40°C (Compl. ¶70). This functionality is demonstrated in a promotional graph showing that asphalt with ZycoTherm achieves higher density with fewer compaction gyrations at lower temperatures compared to asphalt without the additive (Compl. p. 14). The products are liquid additives designed to be blended into asphalt mixtures using various methods, as depicted in a diagram provided by Zydex (Compl. p. 15).
  • The complaint alleges these additives are used to produce large quantities of asphalt and are sold through a network of distributors for use in state department of transportation projects and other commercial paving applications across the United States (Compl. ¶¶ 69, 80). The products have reportedly been approved as warm mix additives by numerous state transportation agencies, which require meeting specific temperature-reduction criteria (Compl. ¶¶ 83, 96-97).

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... When used as instructed, the ZycoTherm additives are added to a functionally dry, essentially water-free, non-foamed asphalt binder. ¶92 col. 2:45-50
...containing lubricating antistrip additive... Zydex marketing materials and personnel allegedly identify the ZycoTherm products as "lubricating antistrip additives" with "the additional benefit of warm mix asphalt." ¶89 col. 1:57-61
...wherein the lubricating antistrip additive reduces the mixing and compaction temperature... Zydex promotional materials allegedly state that the products enable a "temperature reduction up to 30°C (60°F), during mix production and field compaction." ¶71 col. 1:45-50
...such that the paving composition is produced at and is at a temperature of 280°F. or lower... State DOT approvals in Arizona and Illinois for ZycoTherm products allegedly define warm mix asphalt as that produced at temperatures no greater than 275°F. ¶¶96-97 col. 1:47-52
...and can be compacted at a temperature of 260°F. or lower... A Virginia DOT project using ZycoTherm allegedly recorded a field compaction temperature of 256°F, and Zydex materials allegedly advertise compaction at 210°F. ¶¶99, 103 col. 1:50-54
...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 complaint alleges, based on material safety data sheets and company statements, that the ZycoTherm products do not comprise a lubricating wax. ¶93 col. 1:54-57

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... When used as instructed, ZycoTherm additives are added to a functionally dry, essentially water-free, non-foamed asphalt binder. ¶113 col. 2:40-45
...containing ii) lubricating additive comprising lubricating surfactant... Zydex promotional materials allegedly state that ZycoTherm provides "better lubrication of the warm mix," and a technical paper allegedly identifies it as a "surfactant-based silane additive." ¶¶111, 112 col. 3:5-10
...wherein the warm mix asphalt paving composition is produced at...a warm mix temperature at least 30° F. lower than a comparison temperature... The complaint alleges that state DOT approvals require the use of ZycoTherm in asphalt produced at temperatures that are at least 30°F lower than corresponding hot-mix temperatures. ¶116 col. 2:47-55
...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 allegedly differentiates its technology from waxes. ¶114 col. 1:41-45

Identified Points of Contention

  • Scope Questions: A central question may be whether the chemical composition of the accused ZycoTherm products, described as being based on silane chemistry (Compl. ¶79), falls within the scope of the terms "lubricating antistrip additive" and "lubricating surfactant" as used in the patents. The analysis may depend on whether the primary function of the accused additives is found to be lubrication, as described in the patents, or another function such as adhesion promotion.
  • Technical Questions: The complaint relies on state DOT standards and marketing claims to establish that the temperature reduction limitations are met (Compl. ¶¶ 96-97, 116). A potential point of contention is what factual evidence demonstrates that asphalt mixtures containing the accused products are consistently produced and compacted at temperatures that are "at least 30° F. lower than a comparison temperature" in actual field use, as required by claims in patents like the ’725 patent.

V. Key Claim Terms for Construction

The Term: "lubricating additive" / "lubricating antistrip additive"

  • Context and Importance: The infringement case hinges on whether the accused ZycoTherm products meet this definition. Practitioners may focus on this term because the Defendants' products are based on silane chemistry, which is often characterized as an adhesion promoter or antistripping agent. The dispute will likely center on whether the functional properties of the accused products align with the specific "lubricating" function described and claimed in the patents.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The '725 patent specification discloses a wide range of chemical classes that can function as lubricating additives, including various surfactants (anionic, cationic, non-ionic), non-surfactant waxes, and acids (’725 Patent, col. 3:4-4:52). This broad disclosure could support an interpretation that is not limited to a specific mechanism of action.
    • Evidence for a Narrower Interpretation: The specifications distinguish the invention by its "visco-lubricity" properties, explaining that the additives reduce the "normal force" during shear, which is distinct from merely reducing viscosity (’725 Patent, col. 5:32-44). A party could argue that for an additive to be "lubricating" in the context of the patent, it must demonstrate this specific rheological property, not just a general reduction in friction.

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

  • Context and Importance: This term is critical for distinguishing the claimed invention from prior art warm-mix technologies that relied on the intentional introduction of water to foam the asphalt. To infringe, the accused additives must be used in a binder meeting this description.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification clarifies that "functionally dry" does not mean "completely free of water," acknowledging that ambient moisture will be present in the aggregate (’725 Patent, col. 2:53-62). It defines the term relative to conventional warm mixes, suggesting a functional rather than absolute standard (e.g., less than 5 wt.% water, and often less than 1 wt.%) (’725 Patent, col. 3:27-33).
    • Evidence for a Narrower Interpretation: The patents repeatedly emphasize the "non-foamed" nature of the binder in the claims and abstract (’646 Patent, Claim 1; ’725 Patent, Abstract). This consistent distinction could be used to argue for a strict interpretation where any process that creates foaming, even if minor or incidental, falls outside the claim scope.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement (Compl. ¶¶ 88, 105, 182-183). The inducement allegations are based on Defendants' promotional materials, including brochures, website content, and instructional diagrams, which allegedly instruct and encourage distributors and end-users to use the ZycoTherm products in an infringing manner (Compl. ¶¶ 81, 104). The diagram showing methods for blending the additive into asphalt is cited as evidence of such instruction (Compl. p. 15).

Willful Infringement

The willfulness allegation is based on alleged pre-suit knowledge of the patents (Compl. ¶¶ 175-178). The complaint states that Plaintiffs sent a letter to Zydex in September 2017 identifying the '466 and '725 patents and noting that a license might be needed for Zydex's products. The complaint alleges that Zydex continued to market its products and launched new ones (ZycoTherm SP and SP2) after receiving this notice (Compl. ¶178).

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

  • A core issue will be one of definitional scope: can the term "lubricating additive," as defined and supported by the patents' disclosure of "visco-lubricity," be construed to cover the accused ZycoTherm products, which are based on a silane chemistry primarily known for promoting adhesion?
  • A key evidentiary question will be one of quantified performance: will the factual record from real-world paving projects demonstrate that the accused additives consistently achieve the specific, quantified temperature reductions required by the claims (e.g., "at least 30° F. lower" or compaction "at 260°F. or lower"), or will the evidence be more aligned with general marketing claims of improved workability?
  • A central legal question for willfulness will be the reach of pre-suit notice: does a 2017 letter concerning two of the asserted patents and an earlier generation of products establish the requisite knowledge and intent for willful infringement across all six asserted patents, including those issued years after the letter, and for newer products launched subsequently?