DCT
4:18-cv-04090
SNI Solutions Inc v. Univar USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SNI Solutions, Inc. (Illinois) and Natural Alternatives, LLC (Kentucky)
- Defendant: Univar USA, Inc. (Washington) and Road Solutions, Inc. (Indiana)
- Plaintiff’s Counsel: Hamilton IP Law, PC
- Case Identification: 4:18-cv-04090, C.D. Ill., 05/11/2018
- Venue Allegations: Venue is alleged to be proper in the Central District of Illinois based on Defendant Univar maintaining its "Commercial Headquarters" and a regular and established place of business within the district, and Defendant RSI allegedly committing acts of infringement in the state.
- Core Dispute: Plaintiffs allege that Defendants' de-icing products containing desugared sugar beet molasses infringe a patent related to anti-freezing and de-icing compositions.
- Technical Context: The technology involves chemical compositions used for de-icing surfaces like roadways, a significant market in regions with cold weather, by utilizing an agricultural byproduct to create a more environmentally-friendly and less corrosive alternative to traditional salts.
- Key Procedural History: The complaint details a decade-long history between the inventor and Defendant Univar, including a 2006 letter of intent, a 2008 patent infringement lawsuit that was dismissed without prejudice, and three separate ex parte reexamination proceedings filed by Univar at the U.S. Patent and Trademark Office between 2009 and 2011. These reexaminations were consolidated, and in 2017, the Patent Trial and Appeal Board (PTAB) issued a decision confirming the validity of the patent claims now asserted in this litigation. This history may be relevant to questions of willfulness and the viability of any invalidity defenses.
Case Timeline
| Date | Event |
|---|---|
| 1999-02-24 | ’330 Patent Priority Date (Provisional Application) |
| 2000-06-27 | ’330 Patent Issue Date |
| 2006-04-27 | Inventor Bloomer and Univar enter Letter of Intent (LOI) |
| 2008-10-21 | Natural Alternatives licenses ’330 Patent to SNI |
| 2008-10-22 | Inventor Bloomer sends letter to Univar terminating LOI |
| 2008-11-04 | First use date alleged for Univar’s ICE BITE® trademark |
| 2008-11-19 | "Bloomer Patent Litigation" filed against Univar in E.D. Ky. |
| 2009-01-23 | Univar files First Reexamination request for the ’330 Patent |
| 2009-02-26 | Bloomer Patent Litigation dismissed without prejudice |
| 2011-01-21 | Univar files Second Reexamination request for the ’330 Patent |
| 2011-05-26 | Univar files Third Reexamination request for the ’330 Patent |
| 2015-04-21 | Univar represents to USPTO that ICE BITE® product is still in use |
| 2016-01-20 | RSI allegedly still offering ICE BITE® anti-icing fluid for sale |
| 2017-02-22 | PTAB issues decision confirming validity of asserted patent claims |
| 2017-04-03 | PTAB issues Notice of Intent to Issue Ex Parte Reexamination Certificate |
| 2018-05-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,080,330 - "Anti-freezing and Deicing Composition and Method"
The Invention Explained
- Problem Addressed: The patent describes the limitations of prior art de-icing agents. Conventional chloride salts are corrosive to vehicles and infrastructure, harmful to the environment, and become ineffective at very low temperatures (’330 Patent, col. 1:20-41). Other proposed organic alternatives derived from fermentation processes are described as being biologically reactive, leading to unpleasant odors and foam, or becoming too viscous ("thick and putty-like") to spray at low temperatures, which can clog equipment (’330 Patent, col. 2:1-34).
- The Patented Solution: The invention proposes using desugared sugar beet molasses (DSBM), a waste byproduct from sugar manufacturing, as a de-icing composition (’330 Patent, Abstract). The patent teaches that this DSBM-based solution is effective at temperatures well below freezing, is non-corrosive, environmentally friendly, and remains flowable for use in conventional sprayers without extra processing or mixing (’330 Patent, col. 3:50-65). It can be used alone or mixed with traditional chloride salts to improve their performance and reduce the overall corrosiveness of the mixture (’330 Patent, col. 4:5-22).
- Technical Importance: The invention offered a way to repurpose a low-cost industrial byproduct into a high-value de-icing product that addressed the known environmental, corrosive, and operational drawbacks of existing solutions (’330 Patent, col. 2:45-57).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1, as well as other "Original Composition Claims" (1-6, 10) and "New Composition Claims" created during reexamination (Compl. ¶¶ 100-101, 115). Independent claim 1 is representative:
- Independent Claim 1:
- A composition for deicing and inhibiting the formation of ice and snow on surfaces;
- comprising from 25-99% by volume of desugared sugar beet molasses having 60-75% suspended solids; and
- 1-75% by volume of a component selected from the group consisting of sodium formate, calcium magnesium acetate, potassium acetate, ethylene glycol, di-ethylene glycol, magnesium chloride, calcium chloride, sodium chloride, potassium chloride and mixtures thereof.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are de-icing products sold by Univar and its distributor, RSI, that comprise DSBM, including those sold under the "ICE BITE®" trademark (Compl. ¶¶ 73, 113). The complaint also refers to infringing "Brine Products" and "Covered Products," which are created when customers combine the DSBM sold by Defendants with other de-icing agents like sodium chloride (Compl. ¶¶ 18, 33, 74).
Functionality and Market Context
- The accused products are marketed and sold for use in de-icing applications, such as for state and local government transportation departments and commercial entities (Compl. ¶19). The complaint alleges that Univar intended for its DSBM to be combined with a chloride salt, such as sodium chloride (Compl. ¶32). The complaint provides a "product data sheet" for Univar's DSBM product, which includes statements regarding the applicability of the ’330 Patent (Compl. ¶39, Ex. B). The complaint alleges that Univar is a direct competitor to the Plaintiffs in the market for DSBM-based de-icers (Compl. ¶28).
IV. Analysis of Infringement Allegations
’330 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A composition for deicing and inhibiting the formation of ice and snow on surfaces | Defendants market, sell, and offer for sale the accused ICE BITE® product as an "anti-icing fluid" and a "de-icing solution." | ¶¶ 69, 78 | col. 9:6-8 |
| comprising from 25-99% by volume of desugared sugar beet molasses having 60-75% suspended solids | The complaint alleges Univar intended its DSBM, having 60-75% suspended solids, to be combined in a ratio of 25-99% by volume with other de-icing components to create the infringing products. | ¶33 | col. 9:8-10 |
| and 1-75% by volume of a component selected from the group consisting of sodium formate, calcium magnesium acetate, potassium acetate, ethylene glycol, di-ethylene glycol, magnesium chloride, calcium chloride, sodium chloride, potassium chloride and mixtures thereof. | The complaint alleges Univar intended its DSBM to be combined with a component from the claimed group, such as sodium chloride, at a ratio of 1-75% by volume. It is alleged that RSI directly sells, and Univar induces customers to create, these infringing combined "Brine Products." | ¶¶ 33, 74, 115 | col. 9:10-14 |
- Identified Points of Contention:
- Scope Questions: The complaint’s primary theory against Univar is induced infringement. This raises the question of whether Univar's alleged actions—selling one component (DSBM) while actively marketing it for combination with another (e.g., a chloride salt)—are sufficient to prove the specific intent required for inducement of a claim covering the final composition (Compl. ¶¶ 78-81).
- Technical Questions: A central factual dispute may concern the quantitative limitations of the claims. What evidence will show that the accused products, either as sold by RSI or as combined by Univar's customers, actually contain "25-99% by volume" of DSBM and "1-75% by volume" of a claimed chloride salt? The complaint makes direct allegations regarding Univar's intent for these specific ratios (Compl. ¶33).
V. Key Claim Terms for Construction
The Term: "desugared sugar beet molasses"
- Context and Importance: This term defines the core component of the invention. Its construction is critical, as Defendants may argue that their molasses product is produced by a different process or has a different chemical profile, thereby falling outside the scope of the term as used in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes the ingredient functionally as a "waste product of the process used to remove sugar from sugar beet molasses" and notes it is "commonly referred to as 'desugared sugar beet molasses'" (’330 Patent, col. 3:52-56). This language could support a construction covering any molasses byproduct from a sugar beet desugaring process.
- Evidence for a Narrower Interpretation: The detailed description explains two methods for producing the molasses, a conventional method and the "Steffen process" (’330 Patent, col. 5:4-30). A party could argue the term should be limited to byproducts resulting from these specifically described processes, particularly since the patent notes that the Steffen process yields a product with "slightly better" properties (’330 Patent, col. 5:38-41).
The Term: "having 60-75% suspended solids"
- Context and Importance: This quantitative parameter is a key limitation differentiating the claimed composition. Practitioners may focus on this term because infringement will depend on whether the accused product, as sold or used, falls within this precise numerical range.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not specify a particular methodology for measuring "suspended solids." The absence of a specific testing protocol could support using any standard, commercially reasonable method of measurement.
- Evidence for a Narrower Interpretation: While the term itself appears definite, disputes could arise over the testing conditions (e.g., temperature) under which the measurement is taken. The patent provides examples and compositions that meet this range, which a party might argue implicitly define the context and method of measurement (’330 Patent, col. 5:49-50, col. 8:14).
VI. Other Allegations
- Indirect Infringement: The complaint makes detailed allegations of induced infringement against Univar (Compl., Count I). It alleges Univar knew of the ’330 patent and took affirmative steps to encourage its customers to infringe, including by "actively marketing Univar's DSBM as a de-icing solution" for combination with other products, providing customer support regarding such combinations, and offering indemnification to its distributor RSI against patent issues (Compl. ¶¶ 78, 80, 83-84).
- Willful Infringement: Willfulness is alleged against both Defendants, supported by extensive allegations of pre-suit knowledge (Compl. ¶¶ 106, 118). The complaint alleges that Univar knew of the ’330 patent as early as 2006 through an LOI with the inventor, was the target of a 2008 lawsuit on the same patent, and subsequently filed three unsuccessful ex parte reexamination requests to invalidate the patent claims (Compl. ¶¶ 35, 43, 53-58). The complaint further alleges that Univar marked its own products with the ’330 patent number during the LOI period (Compl. ¶38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the case against Univar will be one of inducement: will the evidence of Univar's marketing, product data sheets, and customer support be sufficient to prove it took affirmative steps with the specific intent to encourage its customers to combine its DSBM with chloride salts to create a final composition that directly infringes the ’330 patent?
- A key question for damages will be one of willfulness: given the decade-long history of interactions, prior litigation, and Univar’s three unsuccessful attempts to invalidate the patent at the PTO, can Defendants establish that their continued alleged infringement was based on an objectively reasonable, good-faith belief that the patent was invalid or not infringed?
- An essential evidentiary question will be one of quantitative proof: can Plaintiffs demonstrate through testing and discovery that the accused ICE BITE® products, as sold by RSI or as combined by end-users of Univar's DSBM, meet the specific percentage-by-volume and suspended solids limitations recited in the asserted claims?