DCT

1:24-cv-01417

Solenis Tech LP v. Axchem USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01417, N.D. Ga., 04/02/2024
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Georgia because Defendant Axchem USA, Inc. maintains its U.S. headquarters and a regular place of business in Marietta, Georgia, and has allegedly committed acts of infringement in the district. Defendant SNF SA. is an alien corporation, making venue proper in any district.
  • Core Dispute: Plaintiff alleges that Defendants' technology for the on-site generation of glyoxalated polyacrylamide (GPAM), a chemical strengthening agent for paper products, infringes three patents covering methods for preparing these chemical adducts, the resulting compositions, and their use in papermaking.
  • Technical Context: The technology involves thermosetting resins used in the paper and paperboard industry to increase the wet and dry strength of the final product, a critical factor in applications like packaging materials.
  • Key Procedural History: The complaint alleges a history of correspondence, stating that Defendants were first notified of the asserted patents on December 11, 2017, with subsequent notices in 2019 and 2024. This history forms the basis for the allegations of willful infringement.

Case Timeline

Date Event
2006-09-07 Earliest Priority Date for all Asserted Patents
2011-01-25 U.S. Patent No. 7,875,676 Issued
2012-07-17 U.S. Patent No. 8,222,343 Issued
2014-04-22 U.S. Patent No. 8,703,847 Issued
2017-12-11 Defendant allegedly first notified of Asserted Patents
2019-06-19 Defendant allegedly received subsequent notice of patents
2024-01-18 Plaintiff sent letter regarding Defendants' planned use
2024-02-06 Defendant's counsel responded to Plaintiff's letter
2024-02-22 Plaintiff's counsel sent follow-up letter to Defendants
2024-04-02 Complaint Filed

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

U.S. Patent No. 8,703,847 - “Glyoxalation of Vinylamide Polymer,” issued April 22, 2014

The Invention Explained

  • Problem Addressed: The patent specification describes problems with prior art methods for producing glyoxalated-polyvinylamide (GPAM) strengthening agents for paper. These problems include a tendency for the reaction mixture to form an unusable, water-insoluble gel, poor storage stability of the final product, and inefficient chemical reactions where a significant portion of the key reactant (glyoxal) remains unconsumed and non-functional (’676 Patent, col. 2:25-44).
  • The Patented Solution: The invention proposes a method for creating a more stable and efficient GPAM adduct by carefully controlling the concentration of the vinylamide polymer in the reaction mixture. By keeping the polymer concentration below a specific threshold (in this patent, less than about 4 wt%), the process is said to avoid premature gelling and achieve higher consumption of the glyoxal reactant, resulting in a low-viscosity, thermosetting adduct that is more effective as a strengthening agent (’847 Patent, claim 1; ’676 Patent, col. 2:46-56).
  • Technical Importance: This method allows for the creation of more stable paper-strengthening agents, which could facilitate the use of higher molecular weight polymers that provide superior performance but were previously too difficult to process without gelling (’676 Patent, col. 10:48-54).

Key Claims at a Glance

  • The complaint asserts independent claims 1 (a method claim) and 8 (a composition claim) (Compl. ¶36).
  • Independent Claim 1 includes the following essential elements:
    • A method for preparing a cellulose reactive functionalized polyvinylamide adduct.
    • Reacting a substantially aqueous mixture of a vinylamide polymer and a cellulose reactive agent.
    • The vinylamide polymer has an average molecular weight from 70,000 to 500,000 Daltons.
    • The concentration of the polymer is less than about 4 weight percent of the reaction mixture.
    • The resulting adduct has a viscosity of no more than 30 centipoise.
  • Independent Claim 8 includes the following essential elements:
    • A substantially aqueous glyoxalated-polyvinylamide thermosetting polymer composition.
    • The composition is a reaction product of a vinylamide polymer and glyoxal, with substantially no organic liquid.
    • The vinylamide polymer has an average molecular weight from 70,000 to 500,000 Daltons.
    • The polymer has a concentration from about 0.1 to less than 4 wt. %.
    • The reaction product has a viscosity of no more than 30 centipoise.

U.S. Patent No. 8,222,343 - “Glyoxalation of Vinylamide Polymer,” issued July 17, 2012

The Invention Explained

  • Problem Addressed: As with the related ’847 Patent, this patent addresses the gelling, stability, and reactant inefficiency issues associated with conventional GPAM synthesis (’676 Patent, col. 2:25-44).
  • The Patented Solution: This patent also leverages controlled reactant concentration to solve the problem. The claims introduce and define a functional term, "Critical Concentration," which is the rheological inflection point above which reaction viscosity increases and below which it decreases. The invention claims a process run at or near this Critical Concentration to produce a stable, low-viscosity adduct, as well as the paper products made using it (’343 Patent, claim 1; ’676 Patent, col. 9:15-47).
  • Technical Importance: The approach enables the production of improved strengthening agents, particularly for on-site generation at paper mills where stability and efficiency are critical (’676 Patent, col. 12:35-38).

Key Claims at a Glance

  • The complaint asserts independent claims 1 (a product-by-process claim) and 12 (a method-of-use claim) (Compl. ¶89, ¶102).
  • Independent Claim 1 includes the following essential elements:
    • A paper or board comprising a specific adduct.
    • The adduct is prepared by a process of reacting a substantially aqueous mixture of a vinylamide polymer and a cellulose reactive agent.
    • The polymer concentration is "below, equal to or no more than 1% above a Critical Concentration."
    • "Critical Concentration" is functionally defined as the concentration where viscosity behavior inverts during the reaction.
    • The resulting adduct has a viscosity no more than 30 centipoise.
  • Independent Claim 12 includes the following essential elements:
    • A method for increasing paper strength.
    • By either adding an adduct to a slurry of cellulosic fibers or spraying/coating the adduct onto a wet web or paper.
    • The adduct is prepared by the same process recited in claim 1 (i.e., reacting near the "Critical Concentration" to produce a low-viscosity adduct).

U.S. Patent No. 7,875,676 - “Glyoxalation of Vinylamide Polymer,” issued January 25, 2011

  • Technology Synopsis: This patent, the parent of the other two asserted patents, addresses the instability and inefficiency of conventional paper-strengthening agents. It discloses a method for preparing glyoxalated-polyvinylamide adducts by controlling the reaction concentration to be near a functionally-defined "Critical Concentration," which is claimed to minimize gelling, maximize reactant consumption, and improve the final product's performance.
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶117).
  • Accused Features: The complaint alleges that Defendants' on-site generation of GPAM via their BONDSTAR® technology constitutes performance of the patented method (Compl. ¶117, ¶119).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the "BONDSTAR® Onsite GPAM" technology and the GPAM products generated by this technology (Compl. ¶19, ¶24). This includes the provision of technology, equipment, reagents, and services for generating the chemical strengthening agent at customer facilities (Compl. ¶25).

Functionality and Market Context

  • The complaint alleges that Defendants provide customers, such as paper mills, with a complete system to generate GPAM on-site for immediate use in their paper and paperboard production processes (Compl. ¶19, ¶23). An advertisement for Axchem's AXSTRENGTH® additives lists "BONDSTAR® Onsite GPAM" as a product offering (Compl. p. 7). The complaint alleges that this offering competes directly with Plaintiff's own "Hercobond®" brand of on-site GPAM technology (Compl. ¶18). The technology is allegedly licensed from a third party, Applied Chemicals International Group (“ACAT”) (Compl. ¶20).

IV. Analysis of Infringement Allegations

The complaint’s infringement allegations are made on "information and belief," supported by analysis of a GPAM sample allegedly produced using the accused technology (Compl. ¶33, ¶40).

’847 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for preparing a cellulose reactive functionalized polyvinylamide adduct comprising reacting a substantially aqueous reaction mixture... The BONDSTAR® technology allegedly performs a method of generating GPAM on-site using a substantially aqueous process. ¶39, ¶40 col. 3:58-65
wherein the vinylamide polymer has an average molecular weight ranging from 70,000 to 500,000 Daltons... Based on information and belief and sample analysis, the vinylamide polymer used in the BONDSTAR® process allegedly has a molecular weight within the claimed range. ¶39, ¶40 col. 4:33-40
and the concentration of the vinylamide polymer is less than about 4 weight percent of the reaction mixture at any stage... Based on information and belief, the BONDSTAR® process allegedly operates with a polymer concentration of less than 4 wt. %. ¶39, ¶40 col. 11:1-10
and the adduct is characterized by a viscosity of no more than 30 centipoise measured using a BROOKFIELD viscometer... The GPAM adduct produced by the BONDSTAR® process allegedly has a viscosity that meets the claimed limit. ¶39, ¶40 col. 12:12-20

’343 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A paper or board comprising a cellulose reactive functionalized polyvinylamide adduct prepared by a process... Defendants' customers, such as ND Paper, allegedly produce paper and paperboard that incorporates the GPAM adduct generated by the accused BONDSTAR® process. ¶79, ¶81, ¶22 col. 2:15-18
wherein the concentration of the vinylamide polymer is below, equal to or no more than 1% above a Critical Concentration... The complaint alleges, on information and belief, that the accused BONDSTAR® process is operated at a polymer concentration that meets the functional definition of "Critical Concentration." ¶79, ¶81 col. 9:5-14
and the Critical Concentration is defined as the concentration... above which the viscosity increases... and below which, the viscosity decreases... The complaint alleges the accused process meets this functional definition of the point where viscosity behavior inverts. ¶79, ¶81 col. 9:22-31
wherein the adduct is characterized by a viscosity of no more than 30 centipoise measured using a BROOKFIELD viscometer... Analysis of a sample of GPAM allegedly produced by the accused process confirms it meets the claimed viscosity limitation. ¶81 col. 12:12-20

Identified Points of Contention

  • Evidentiary Questions: The complaint heavily relies on "information and belief" and the analysis of a single GPAM sample (Compl. ¶40, ¶81). Plaintiff explicitly states it "is unaware of any analytical method of analyzing GPAM that would conclusively determine the process that was used for its generation" (Compl. ¶32). A primary point of contention will therefore be whether discovery can produce sufficient evidence to prove that the accused BONDSTAR® process, as commercially implemented, actually operates within the specific parametric limits of the claims (e.g., molecular weight, concentration, viscosity).
  • Scope Questions: For the ’343 and ’676 Patents, infringement depends on the accused process meeting the functional definition of "Critical Concentration." The dispute will likely involve competing technical analyses and expert testimony to determine if the accused process operates at the specific rheological inflection point defined in the claims.

V. Key Claim Terms for Construction

  • The Term: "Critical Concentration"

    • Context and Importance: This term, appearing in the independent claims of the ’343 and ’676 Patents, is the central inventive concept distinguishing the patents from prior art. The claims provide a functional definition based on the reaction's viscosity behavior. The entire infringement case for these two patents may depend on whether the accused process can be proven to operate at a concentration meeting this functional definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself provides a purely functional definition: "the concentration of the vinylamide polymer above which the viscosity increases... and below which, the viscosity decreases" (’343 Patent, col. 22:25-23:4). Plaintiff may argue this term should be applied broadly to any process that operates at or near this observed rheological inflection point.
      • Evidence for a Narrower Interpretation: The specification provides specific, calculated examples of the "Critical Concentration" for polymers of different molecular weights, such as "a polymer with a Mw of approximately 13,000 has a Critical Concentration of about 3.5 wt. %" (’676 Patent, col. 10:25-35). A defendant may argue that the term should be understood and limited in the context of these specific examples and polymer systems, not as a universally applicable abstract principle.

  • The Term: "substantially aqueous reaction mixture"

    • Context and Importance: This term distinguishes the claimed invention from prior art micro-emulsion processes that require significant amounts of organic oils. Claim 8 of the ’847 Patent further narrows this to "substantially no organic liquid." The scope of "substantially" will be important.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The word "substantially" inherently permits some deviation from a purely aqueous mixture, which a party could argue allows for the presence of minor amounts of other miscible solvents or process agents.
      • Evidence for a Narrower Interpretation: The specification provides an explicit definition, stating that in a "substantially aqueous reaction mixture," oil "makes up less than about 20 wt. % of the vinylamide polymer and preferably less than 10, or less than about 5 or less than about 1 wt. %" (’676 Patent, col. 5:6-9). A party will almost certainly argue that this explicit definition should control the term's meaning, giving it a clear, albeit tiered, boundary.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. Inducement is based on allegations that Defendants provide their customers with the technology, equipment, and reagents for the on-site generation of GPAM and encourage them to perform the infringing methods (Compl. ¶49, ¶93, ¶129).
  • Contributory Infringement: Contributory infringement is based on the allegation that the provided technology and equipment are non-staple materials especially adapted for use in an infringing process, with no substantial non-infringing use (Compl. ¶65, ¶105, ¶143).
  • Willful Infringement: The complaint alleges that infringement has been and continues to be willful and deliberate. This allegation is supported by specific claims that Defendants have had knowledge of the asserted patents and their relevance to on-site GPAM generation since at least December 2017, as a result of multiple notice letters sent by Plaintiff (Compl. ¶26-28, ¶42).

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

  • A central issue will be one of technical proof: Can the Plaintiff, through discovery, obtain conclusive evidence that the accused BONDSTAR® process, as commercially practiced by Defendants and their customers, in fact operates within the specific parametric windows (i.e., polymer molecular weight, concentration, and final product viscosity) required by the asserted claims? The complaint's own acknowledgment of the difficulty in reverse-engineering the process highlights this as a primary hurdle.
  • A key legal and technical question will be one of functional scope: For the patents defining the invention by the "Critical Concentration," the dispute will likely focus on whether the accused process can be shown to operate at the precise, functionally-defined rheological inflection point. This raises the question of whether the Defendants' process exhibits this specific viscosity behavior or achieves its results through a different, non-infringing technical mechanism.