DCT
1:17-cv-01810
NSX Operating Co LLC v. Anderson & Vreeland Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NSX Operating Co., LLC (Delaware)
- Defendant: Anderson & Vreeland, Inc. (New Jersey)
- Plaintiff’s Counsel: Alston & Bird LLP
- Case Identification: 1:17-cv-01810, N.D. Ga., 05/18/2017
- Venue Allegations: Venue is alleged based on Defendant’s corporate presence in Georgia, including a regional showroom and warehouse within the district, an active sales force, and substantial revenues derived from the state.
- Core Dispute: Plaintiff alleges that Defendant’s AVSolve II+ developing solvent infringes two patents related to diisopropylbenzene-based solvent compositions for creating flexographic printing plates.
- Technical Context: The technology involves chemical solvents used in the industrial process of developing flexographic printing plates, a key technology for commercial printing on various substrates.
- Key Procedural History: U.S. Patent No. 6,682,877 is a continuation of the application that led to U.S. Patent No. 6,162,593. The complaint alleges a long history between the parties, including that Plaintiff provided Defendant with written notice of the asserted patents in January 2009. It is also alleged that Defendant intentionally omitted a key ingredient from the accused product's safety data sheet to obscure its composition.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-26 | Priority Date for ’593 and ’877 Patents |
| 2000-12-19 | '593 Patent Issue Date |
| 2004-01-27 | '877 Patent Issue Date |
| c. 2005 | Defendant's alleged awareness of patents covering a related product |
| 2008-08 | Asserted Patents assigned to Plaintiff NSX |
| 2009-01-14 | Plaintiff provided written notice of the Asserted Patents to Defendant |
| c. 2011 | Defendant allegedly began selling the accused AVSolve II+ product |
| 2017-05-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,162,593, Diisopropylbenzene Containing Solvent and Method of Developing Flexographic Printing Plates, Issued Dec. 19, 2000
The Invention Explained
- Problem Addressed: The patent describes prior art solvents for developing flexographic printing plates as often being toxic, flammable, odorous, and prone to causing excessive swelling of the printing plate, which degrades image quality and increases drying times (Compl., Ex. A, ’593 Patent, col. 2:30-67). Many prior art solvents were also difficult to recycle efficiently (Compl., Ex. A, ’593 Patent, col. 3:45-54).
- The Patented Solution: The invention proposes a developing solvent comprising diisopropylbenzene (DIPB) and benzyl alcohol. This composition is described as having a higher flash point, lower toxicity, a milder odor, and "selective solvency" that dissolves the unexposed photopolymer while minimizing swelling of the desired, crosslinked polymer image areas (Compl., Ex. A, ’593 Patent, Abstract; col. 4:5-19).
- Technical Importance: The invention offered a safer and potentially more effective alternative to harsh prior art solvents, addressing both regulatory/safety concerns and technical performance issues like print quality (Compl., Ex. A, ’593 Patent, col. 4:5-19).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶56).
- Claim 1 recites:
- A photopolymer developing solution
- comprising diisopropylbenzene and benzyl alcohol
- for selectively removing non-crosslinked polymer from a substrate.
- The complaint does not explicitly reserve the right to assert dependent claims but states infringement of "one or more claims" (Compl. ¶55).
U.S. Patent No. 6,682,877, Diisopropylbenzene Containing Solvent and Method of Developing Flexographic Printing Plates, Issued Jan. 27, 2004
The Invention Explained
- Problem Addressed: The patent addresses the same technical problems as its parent, the ’593 Patent: the toxicity, flammability, strong odors, and performance drawbacks of prior art flexographic plate developing solvents (Compl., Ex. B, ’877 Patent, col. 2:32-67).
- The Patented Solution: The core invention remains a developing solvent based on diisopropylbenzene. This patent, however, claims a composition comprising DIPB and a "co-solvent" selected from a large Markush group that includes various alcohols, ethers, and hydrocarbons, thereby expanding the scope of the original invention beyond just benzyl alcohol (Compl., Ex. B, ’877 Patent, Abstract; col. 19:28-42).
- Technical Importance: This patent broadens the formulation possibilities for the core invention, extending protection to a wider range of solvent blends that leverage the benefits of diisopropylbenzene (Compl., Ex. B, ’877 Patent, col. 4:5-19).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶75).
- Claim 1 recites:
- A photopolymer developing solution comprising diisopropylbenzene and a co-solvent,
- characterized in that said solution selectively removes non-crosslinked polymer from a substrate without removing cross-linked polymer,
- wherein said co-solvent is selected from a group including tetrahydrofurfuryl alcohol, various hydrocarbons (napthenic, paraffinic, olefinic, isoparaffinic), terpenes, and mixtures thereof.
- The complaint does not explicitly reserve the right to assert dependent claims but states infringement of "one or more claims" (Compl. ¶74).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is a photopolymer printing plate developing solution marketed as "AVSolve II +" (“AVSolve II +”) (Compl. ¶38).
Functionality and Market Context
- The complaint alleges that AVSolve II+ is a solution used to selectively wash away unexposed, non-crosslinked areas of a photosensitive resin to form a relief pattern on a flexographic printing plate (Compl. ¶¶44, 45). The complaint alleges that the solution contains diisopropylbenzene, benzyl alcohol, and a "Shellsol D60 type aliphatic solvent mixture" (Compl. ¶38). It is allegedly manufactured, imported, marketed, and sold by the Defendant in the United States for use in the flexographic printing industry (Compl. ¶¶ 40, 41, 48).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’593 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A photopolymer developing solution | AVSolve II+ is a photopolymer developing solution. | ¶56 | col. 20:25 |
| comprising diisopropylbenzene and benzyl alcohol | AVSolve II+ is alleged to be a solution that comprises diisopropylbenzene and benzyl alcohol. | ¶38, ¶56 | col. 20:26-27 |
| for selectively removing non-crosslinked polymer from a substrate. | AVSolve II+ is used for selectively removing non-crosslinked polymer from a substrate to create flexographic printing plates. | ¶44, ¶56 | col. 20:27-28 |
’877 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A photopolymer developing solution comprising diisopropylbenzene and a co-solvent, | AVSolve II+ is alleged to be a photopolymer developing solution comprising diisopropylbenzene and a co-solvent, identified as a "Shellsol D60 type aliphatic solvent mixture." | ¶38, ¶47, ¶75 | col. 19:28-30 |
| characterized in that said solution selectively removes non-crosslinked polymer from a substrate without removing cross-linked polymer, | AVSolve II+ is alleged to be a solution for selectively removing non-crosslinked polymer from a substrate without removing cross-linked polymer. | ¶47, ¶75 | col. 19:30-33 |
| wherein said co-solvent is selected from the group consisting of tetrahydrofurfuryl alcohol, ... isoparaffinic hydrocarbons, ... and mixtures thereof. | The "Shellsol D60 type aliphatic solvent mixture" is alleged to be a co-solvent falling within the recited Markush group, which includes isoparaffinic hydrocarbons and mixtures thereof. | ¶38, ¶75 | col. 19:34-42 |
- Identified Points of Contention:
- Factual Questions: The primary dispute will likely be factual, centered on the precise chemical composition of AVSolve II+. The case may depend on evidence from discovery and expert testing to determine whether the product contains diisopropylbenzene and benzyl alcohol (for the '593 Patent) and/or a co-solvent that falls within the Markush group of the ’877 Patent. The complaint's allegation regarding the product's Material Safety Data Sheet suggests this will be a key area of contention (Compl. ¶¶ 42, 43).
- Scope Questions: A potential dispute for the ’877 Patent is whether the alleged "Shellsol D60 type aliphatic solvent mixture" falls within the scope of the claimed Markush group. This raises the question of how a "type" of commercial mixture is construed relative to the chemical categories listed in the claim, such as "isoparaffinic hydrocarbons."
V. Key Claim Terms for Construction
The Term: "co-solvent selected from the group consisting of..." ('877 Patent, Claim 1)
- Context and Importance: Infringement of the ’877 Patent hinges on whether the "Shellsol D60 type aliphatic solvent mixture" allegedly present in the accused product is encompassed by this Markush group. Practitioners may focus on this term because Shellsol D60 is a commercial product whose specific composition must be mapped to the generic chemical categories in the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, including categories like "napthenic hydrocarbons, parrafinic hydrocarbons, olefinic hydrocarbons, isoparrafinic hydrocarbons, terpenes, and mixtures thereof" (Compl., Ex. B, ’877 Patent, col. 19:39-42). This suggests an intent to cover a wide variety of commercial solvent mixtures.
- Evidence for a Narrower Interpretation: The specification provides specific examples of co-solvents, such as "EXXON Isopar® L" (Compl., Ex. B, ’877 Patent, col. 7:25-29). A party could argue that the term should be interpreted in light of these specific embodiments, potentially attempting to distinguish the accused mixture from the examples provided.
The Term: "selectively removing" (’593 Patent, Claim 1; ’877 Patent, Claim 1)
- Context and Importance: This functional language is central to what the invention does. Its definition could be disputed to argue that the accused product, even if compositionally similar, does not function in the specific manner claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification contrasts the invention with prior art solvents that cause "excessive plate swelling" and "erosion of the relief image" (Compl., Ex. A, ’593 Patent, col. 2:56-64). This could support a construction where "selectively" means a measurable improvement over the damaging effects of the prior art.
- Evidence for a Narrower Interpretation: The patent describes the ideal function as "not softening or swelling the crosslinked portions" (Compl., Ex. A, ’593 Patent, col. 2:66-67). Furthermore, Table 6 in the patent provides quantitative swelling data (e.g., 2.2% to 3.6% swell), which could be used to argue for a specific, narrow, quantitative limit to what "selectively" means (Compl., Ex. A, ’593 Patent, col. 19).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. It asserts that Defendant knows of and instructs its customers to use AVSolve II+ in a manner that directly infringes the patents (Compl. ¶¶ 60-62). It further alleges that AVSolve II+ is not a staple article of commerce and has no substantial non-infringing use when used as directed (Compl. ¶59).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the asserted patents dating back to at least January 2009 (Compl. ¶¶ 30, 70, 79). The claim is further supported by the allegation that Defendant "omitted diisopropylbenzene from the MSDS for AV Solve II + to obscure the true composition and infringing nature" of the product (Compl. ¶43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of chemical composition: What are the actual chemical constituents of the accused AVSolve II+ solution? The outcome may depend heavily on discovery and expert analysis to determine if the product contains diisopropylbenzene, benzyl alcohol, and/or a co-solvent from the asserted claim's Markush group.
- The case presents a significant question of intent: Do the allegations—particularly that the defendant received pre-suit notice of the patents and subsequently omitted a key ingredient from its Material Safety Data Sheet—provide a sufficient basis to support a finding of willful infringement?
- A key legal issue will be one of claim scope: Can the commercial product "Shellsol D60 type aliphatic solvent mixture" be properly construed to fall within the Markush group of "co-solvents" recited in claim 1 of the '877 patent, which includes broad chemical categories such as "isoparaffinic hydrocarbons" and "mixtures thereof"?