DCT
1:23-cv-00144
Corbion NV v. WTI Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Corbion N.V. (Netherlands)
- Defendant: WTI, Inc. (New York)
- Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Hull Barrett, PC
- Case Identification: 1:23-cv-00144, S.D. Ga., 10/02/2023
- Venue Allegations: Venue is alleged to be proper because Defendant WTI, Inc. has a place of business in the judicial district and is subject to personal jurisdiction there.
- Core Dispute: Plaintiff seeks a declaratory judgment that its dried vinegar products do not infringe Defendant’s patent related to methods for producing a vinegar-derived food additive.
- Technical Context: The technology concerns food science, specifically the creation of powdered vinegar-based additives used as natural preservatives and flavor enhancers in processed foods like cured meats.
- Key Procedural History: The complaint states that this action was precipitated by a letter from WTI dated September 18, 2023, which accused Corbion of infringing the patent-in-suit and demanded that Corbion cease manufacturing and selling the accused products. The letter also raised the issue of willful infringement, providing the basis for the existence of an actual case or controversy required for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2009-06-04 | ’587 Patent Priority Date |
| 2023-07-11 | ’587 Patent Issue Date |
| 2023-09-18 | WTI sends letter to Corbion alleging infringement of the ’587 patent |
| 2023-10-02 | Complaint for Declaratory Judgment filed by Corbion |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,696,587 - "Method of Producing a Vinegar-Derived Food Additive"
- Patent Identification: U.S. Patent No. 11,696,587, "Method of Producing a Vinegar-Derived Food Additive", issued July 11, 2023.
The Invention Explained
- Problem Addressed: The patent addresses a need in the food industry for "natural" additives that can preserve meat products (improving color, flavor, and microbial safety) without relying on traditional chemical additives like sodium nitrite, which are highly regulated and viewed unfavorably by some consumers (’587 Patent, col. 2:1-2, 38-47). Existing methods for producing natural additives were described as leading to "variable processing of the meat, resulting in an inconsistent product" (’587 Patent, col. 3:39-41).
- The Patented Solution: The invention is a specific method for creating a powdered food additive from vinegar. The process involves treating liquid vinegar with a basic neutralizing agent (like sodium bicarbonate) to partially neutralize it to a specific pH, and then evaporating the water to create a dry powder "consisting essentially of an acetate salt and an acetic acid" with a final pH between 4.5 and 7.0 (’587 Patent, Abstract; col. 9:18-26). This method aims to produce a stable, effective, and consistent "natural" food additive.
- Technical Importance: This technology provides a method for producing a shelf-stable, powdered vinegar product that, according to the patent, can be listed on a food label as "vinegar" rather than a chemical name, thereby meeting consumer demand for "all-natural" or "clean-label" food products (’587 Patent, col. 3:1-11).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of "any claim of the ’587 patent" (Compl. ¶1). The patent contains two independent claims, one directed to a method and one to a product-by-process.
- Independent Method Claim 1:
- (a) treating vinegar with a basic neutralizing agent to partially neutralize the vinegar to a pH of below about 7.0; and
- (b) evaporating water from and drying the product of step (a) to produce the food additive consisting essentially of an acetate salt and an acetic acid in the form of a dry powder having a pH of about 4.5 to about 7.0.
- Independent Product-by-Process Claim 9:
- A food additive produced by the process of: (a) treating vinegar with a basic neutralizing agent to partially neutralize it to a pH below about 7.0; and (b) evaporating and drying the product to create a food additive "consisting essentially of an acetate salt and an acetic acid in the form of a dry powder having a pH of about 4.5 to about 7.0."
- The complaint does not specify which dependent claims may be at issue.
III. The Accused Instrumentality
Product Identification
- Corbion’s "Verdad Powder N6" and "Verdad Opti Powder N450" (Compl. ¶8).
Functionality and Market Context
- The complaint identifies the accused instrumentalities as "dried vinegar products" (Compl. ¶8). It does not provide technical details about their composition or manufacturing process, but asserts they are "made by manufacturing processes that differ substantially from the products and processes disclosed and claimed in the '587 patent" (Compl. ¶9). These products are sold in the United States and function as food ingredients, presumably for preservation and flavoring, placing them in the same market as the food additives described in the ’587 patent.
IV. Analysis of Infringement Allegations
The complaint does not contain a detailed, element-by-element infringement analysis from the patent holder, WTI. Instead, it references WTI’s general allegation of infringement from a demand letter and presents Corbion’s categorical denial (Compl. ¶¶ 8-9). The following chart summarizes Corbion's asserted position of non-infringement with respect to the representative independent method claim.
No probative visual evidence provided in complaint.
’587 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) treating vinegar with a basic neutralizing agent to partially neutralize the vinegar to a pH of below about 7.0; | Corbion contends that its manufacturing process for the accused products does not include this specific neutralization step or that it is performed in a substantially different manner. | ¶9 | col. 9:19-22 |
| and (b) evaporating water from and drying the product of step (a) to produce the food additive consisting essentially of an acetate salt and an acetic acid in the form of a dry powder having a pH of about 4.5 to about 7.0. | Corbion contends its processes are "substantially different" and do not result in a product defined by this limitation. | ¶9 | col. 9:23-26 |
- Identified Points of Contention:
- Factual Question: The central dispute appears to be entirely factual: what are the specific steps of the manufacturing processes used by Corbion to create its Verdad Powder products? The complaint provides no details, making it impossible to compare the accused process to the patent claims. This information will be a primary focus of discovery.
- Scope Question: A key legal question may concern the interpretation of the phrase "consisting essentially of." The infringement analysis will depend on whether this phrase permits the presence of other ingredients in Corbion's final products that are not an acetate salt or acetic acid, and whether any such ingredients materially alter the product's fundamental characteristics.
V. Key Claim Terms for Construction
- The Term: "consisting essentially of an acetate salt and an acetic acid"
- Context and Importance: This transitional phrase is a term of art in patent law that is more limiting than "comprising" but less limiting than "consisting of." It restricts the claimed invention to the specified elements and any unlisted components that do not "materially affect the basic and novel properties" of the invention. Practitioners may focus on this term because the entire infringement analysis could turn on whether Corbion's products contain additional ingredients and whether those ingredients are deemed to materially alter the additive's properties as an antimicrobial or buffering agent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the "basic and novel properties" relate only to the final pH range and its powdered form, potentially allowing for other non-reactive fillers or processing aids common in food additives without departing from the claim scope.
- Evidence for a Narrower Interpretation: A party could argue that the invention's "basic and novel property" is the specific chemical composition itself—a partially neutralized, dried vinegar. The claims repeatedly recite this two-part composition, and the summary of the invention describes producing "an acetate" from neutralized vinegar, suggesting that the chemical identity is the core of the invention and that other active or significant ingredients would be excluded (’587 Patent, col. 9:14-17, 24-26).
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration of non-infringement "either directly or indirectly" (Compl. Prayer for Relief ¶A). However, the factual allegations do not mention any specific acts by Corbion that would constitute induced or contributory infringement, such as instructing its customers on an infringing use.
- Willful Infringement: The complaint explicitly notes that WTI's pre-suit demand letter accused Corbion of "willful infringement" (Compl. ¶8). This allegation establishes that WTI put Corbion on notice of the patent, which is a prerequisite for a subsequent claim by WTI for enhanced damages based on post-notice conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: can discovery reveal that Corbion's proprietary manufacturing process for its Verdad powders practices each step of the method claimed in the '587 patent, including the specific partial neutralization and drying steps resulting in the claimed pH and composition?
- The case may also turn on a question of claim scope: how will the court construe the term "consisting essentially of"? The outcome of this construction will determine whether the presence of any additional ingredients in Corbion’s final products places them outside the boundaries of the patent claims.