DCT
1:21-cv-01759
Kurita America Inc v. BASF Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kurita America Inc. (Minnesota)
- Defendant: BASF Corporation (Delaware), BASF Enzymes, LLC (Delaware), and Illinois River Energy, LLC, d/b/a CHS Ethanol (Delaware)
- Plaintiff’s Counsel: Perkins Coie LLP
- Case Identification: 1:21-cv-01759, N.D. Ill., 04/01/2021
- Venue Allegations: Venue is alleged to be proper based on Defendants’ business operations, physical presence, and commission of infringing acts within the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendant BASF’s phytase enzyme product, "Fueltase", is used by Defendant CHS Ethanol and other plants in a manner that directly and indirectly infringes patents related to methods for reducing mineral deposit formation in ethanol production systems.
- Technical Context: The technology concerns the chemical process of preventing "fouling," the buildup of mineral deposits (specifically phytate salts) on equipment in fuel ethanol plants, a significant operational and cost issue for the industry.
- Key Procedural History: The complaint notes that the patents-in-suit were previously found valid and infringed by a federal jury in a case against Novozymes A/S, which resulted in an award of nearly $8 million and a subsequent settlement. The complaint also mentions a separate settled lawsuit against CTE Global, Inc. over the same patents. This history may be relevant to willfulness and notice allegations.
Case Timeline
| Date | Event |
|---|---|
| 2007-10-17 | Earliest Priority Date for '137 and '399 Patents |
| ~2008-01-01 | Kurita America begins trials of its patented deposit control method |
| ~2011-07-01 | Novozymes begins selling competing "Phytaflow" product |
| 2013-04-09 | U.S. Patent No. 8,415,137 issues |
| 2013-12-17 | U.S. Patent No. 8,609,399 issues |
| ~2016-06-01 | BASF begins offering its accused "Fueltase" product |
| 2019-10-14 | Kurita America informs BASF by letter of the '137 and '399 Patents |
| 2021-04-01 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,415,137 - “Preventing Phytate Salt Deposition in Polar Solvent Systems,” issued April 9, 2013
The Invention Explained
- Problem Addressed: In the commercial production of fuel ethanol, aqueous slurries of plant grains (like corn) release phytic acid, which precipitates with metals in the processing fluid to form hard, insoluble scale deposits on equipment surfaces (Compl. ¶¶ 12, 15). This "fouling" impedes heat transfer and fluid flow, forcing costly and dangerous shutdowns for manual or chemical cleaning (’137 Patent, col. 2:31-41; Compl. ¶¶ 13-14).
- The Patented Solution: The invention introduces a method of adding an enzyme with phytase activity into the ethanol-processing fluid. The phytase enzyme acts as a catalyst to break down, or hydrolyze, the insoluble phytic acid salts (phytates) into soluble inorganic phosphates and inositol, which can be easily removed and do not form scale ('137 Patent, Abstract, col. 2:50-58). This prevents the harmful deposits from forming in the first place.
- Technical Importance: This enzymatic approach provided an alternative to the prior methods of either physically scraping equipment or adding large quantities of toxic and expensive sulfuric acid to dissolve deposits (Compl. ¶ 13).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 6 and 7 (Compl. ¶ 37).
- Independent Claim 1 requires:
- A method of reducing formation of insoluble deposits of phytic acid or its salts on surfaces in fuel ethanol-processing equipment.
- Adding phytase to an ethanol processing fluid containing phytic acid or its salts.
- The addition occurs under conditions suitable for converting the insoluble phytic acid salts to soluble products.
- The equipment where deposit formation is reduced includes a "beer column."
- The pH of the ethanol processing fluid in the beer column is 4.5 or higher during ethanol production.
- The complaint reserves the right to assert other claims (Compl. ¶ 37).
U.S. Patent No. 8,609,399 - “Reducing Insoluble Deposit Formation in Ethanol Production,” issued December 17, 2013
The Invention Explained
- Problem Addressed: As with the parent '137 Patent, this invention addresses the problem of insoluble phytate salt deposits forming on equipment, particularly heat transfer equipment, during fuel ethanol production (’399 Patent, col. 2:32-44).
- The Patented Solution: The invention provides a method for reducing these deposits by adding an additive comprising phytase to the ethanol processing fluid. The phytase breaks down the phytic acid, and the method is distinguished by being "accomplished substantially without the addition of an acidic compound," contrasting it with prior art acid-wash techniques (’399 Patent, Claim 1, col. 12:47-56).
- Technical Importance: This method claims a path to prevent fouling that avoids the use of strong acid additives, which could have safety, cost, and environmental benefits.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 2 (Compl. ¶ 37).
- Independent Claim 1 requires:
- A method of reducing insoluble phytic acid deposit formation in fuel ethanol plant equipment that includes a piece of heat transfer equipment.
- Providing an additive comprising phytase in an ethanol processing fluid.
- The phytase reduces the amount of phytic acid by breaking it down.
- This reduction in deposits is accomplished "substantially without the addition of an acidic compound that can break down organic phosphates."
- Independent Claim 2 includes the limitations of claim 1 and further requires the equipment to include a "beer column" and the pH of the fluid in that column to be 4.5 or higher.
- The complaint reserves the right to assert other claims (Compl. ¶ 37).
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is the method of using the "Fueltase" phytase enzyme product, which is manufactured, marketed, and sold by Defendant BASF (Compl. ¶¶ 26, 41). The complaint focuses on the use of this method by Defendant CHS Ethanol at its dry-mill ethanol production facility (Compl. ¶ 31).
- Functionality and Market Context: "Fueltase" is alleged to be a phytase enzyme product sold to fuel ethanol plants for the express purpose of controlling deposits, reducing backend fouling, and decreasing sulfuric acid use (Compl. ¶ 26). The complaint alleges that "Fueltase" is sold as a "direct replacement" for Kurita’s own "pHytOUT" product and for other previously-accused competing products (Compl. ¶ 26). The complaint further alleges that the "Fueltase" product has no substantial, non-infringing use (Compl. ¶ 27). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’137 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of reducing formation of insoluble deposits of phytic acid or salts of phytic acid on surfaces in a fuel ethanol-processing equipment, the method comprising: | CHS Ethanol uses BASF's "Fueltase" product to control deposits in its ethanol production facility (Compl. ¶¶ 26, 35). | ¶37, 40 | col. 12:30-34 |
| adding phytase to an ethanol processing fluid in the equipment containing phytic acid or salts of phytic acid under conditions suitable for converting the insoluble phytic acid or phytic acid salts to soluble products; thereby reducing the formation of deposits of insoluble phytic acid or phytic acid salts on surfaces in the equipment; | CHS Ethanol adds "Fueltase", a phytase enzyme, to its processing fluids as a direct replacement for Kurita's patented method to reduce deposit formation (Compl. ¶¶ 26, 35, 37). | ¶37, 40 | col. 12:35-43 |
| wherein the equipment in which deposit formation is reduced comprises a beer column, and | The complaint alleges that the accused method is practiced in ethanol plants, such as CHS Ethanol's facility, which contain the requisite equipment (Compl. ¶¶ 31, 37, 40). | ¶37, 40 | col. 12:43-45 |
| wherein the pH of the ethanol processing fluid in the beer column is 4.5 or higher during production of ethanol. | The complaint alleges that the accused method practices "each and every limitation," which by implication includes meeting the specified pH level (Compl. ¶ 37). | ¶37, 40 | col. 12:45-47 |
’399 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of reducing formation of insoluble deposits of phytic acid and/or salts of phytic acid in fuel ethanol processing plant equipment... during the production of a quantity of ethanol... wherein the fuel ethanol processing plant comprises a piece of heat transfer equipment... | CHS Ethanol uses BASF's "Fueltase" product at its ethanol production facility to reduce insoluble deposits on its equipment (Compl. ¶¶ 31, 35, 37). | ¶37, 49 | col. 12:30-37 |
| ...the method comprising: providing an additive in an ethanol processing fluid in the plant, wherein the ethanol processing fluid comprises an amount of phytic acid and/or salts of phytic acid, and wherein the additive comprises phytase, | CHS Ethanol provides "Fueltase" (an additive comprising phytase) into its ethanol processing fluid (Compl. ¶¶ 26, 35, 37). | ¶37, 49 | col. 12:37-41 |
| wherein the phytase reduces the amount of phytic acid and/or phytic acid salts in the ethanol processing fluid by breaking down the phytic acid and/or phytic acid salts... | The complaint alleges "Fueltase" is used to control deposits and reduce fouling, which corresponds to the function of breaking down phytic acid (Compl. ¶¶ 26, 37). | ¶37, 49 | col. 12:42-44 |
| wherein providing the additive comprising phytase in the ethanol processing fluid causes a reduction of the formation of insoluble deposits... in a piece of heat transfer equipment in the plant, and | The use of "Fueltase" is alleged to reduce deposits in the plant's equipment (Compl. ¶¶ 26, 37). | ¶37, 49 | col. 12:44-49 |
| wherein the reduction in the formation of insoluble deposits... is accomplished substantially without the addition of an acidic compound that can break down organic phosphates and phosphonates into soluble inorganic phosphates... | The complaint alleges that "Fueltase" is used to "reduce backend fouling and sulfuric acid use," suggesting the method operates without the addition of such acid (Compl. ¶ 26). | ¶26, 37, 49 | col. 12:49-56 |
- Identified Points of Contention:
- Factual Question: A primary point of dispute may be factual: does the accused process at CHS Ethanol's facility actually meet the specific operational parameters required by the claims? For instance, what evidence demonstrates that the pH in the "beer column" is consistently "4.5 or higher" as required by claim 1 of the ’137 Patent and claim 2 of the ’399 Patent?
- Scope Question: For the ’399 Patent, the analysis will raise the question of what "substantially without the addition of an acidic compound" means. The case may turn on whether the accused process uses other acidic additives for different purposes, and if so, whether such use falls outside the scope of this negative limitation.
V. Key Claim Terms for Construction
The Term: "beer column" (’137 Patent, cl. 1; ’399 Patent, cl. 2)
Context and Importance: This term is critical because it anchors the location where specific claim limitations, such as pH level, must be satisfied. The definition will determine which part of an accused ethanol plant's process is legally relevant for the infringement analysis.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined in the specification. A party could argue for its plain and ordinary meaning as understood by a person of ordinary skill in the art of ethanol production, which might encompass a range of equipment involved in the post-fermentation distillation process.
- Evidence for a Narrower Interpretation: The specification states that once fermentation is complete, "the mash or slurry is called 'beer' and is moved into beer wells to be used for ethanol distillation and recovery" (’137 Patent, col. 2:47-49). A party could argue that "beer column" should be limited to the specific stripper or distillation column that directly processes this "beer" from the "beer wells."
The Term: "substantially without the addition of an acidic compound" (’399 Patent, cl. 1)
Context and Importance: This negative limitation is central to distinguishing the claimed invention from prior art methods that relied on adding acid. Infringement of this claim requires demonstrating that the accused process avoids a certain action. Practitioners may focus on this term because its interpretation will define the boundary between infringing and non-infringing processes.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (i.e., easier for a defendant to prove non-infringement): A defendant could argue that any addition of a compound that is acidic, regardless of its purpose or concentration, means the process is not "substantially without" such addition.
- Evidence for a Narrower Interpretation (i.e., easier for a plaintiff to prove infringement): A plaintiff could point to the complaint's description of prior art, which involved adding "large quantities of expensive and toxic sulfuric acid" (Compl. ¶ 13). This context suggests the limitation is meant to exclude the practice of using acid as the primary means of deposit control, and that incidental use of acidic compounds for other purposes (e.g., pH adjustment elsewhere in the system) does not negate infringement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that BASF induces and contributes to infringement by selling "Fueltase" to ethanol plants like CHS Ethanol (Compl. ¶¶ 41, 50). The allegations state BASF sells "Fueltase" with the intent for customers to use it in the patented method, noting it is a "direct replacement" for Kurita’s own product (Compl. ¶ 26). The complaint further alleges that "Fueltase" is a material part of the invention and has "no substantial, non-infringing use," which directly supports a claim for contributory infringement (Compl. ¶ 27).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges that BASF had actual knowledge of the patents at least as early as October 14, 2019, when Kurita sent a letter identifying the patents (Compl. ¶ 28). Any infringing activity after this date is alleged to be willful (Compl. ¶¶ 46, 55). The complaint also highlights the prior jury verdict against Novozymes A/S as a basis for the industry, including BASF, being aware of the patents and their validity (Compl. ¶ 24).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to two central questions:
A core issue will be one of definitional scope: How will the court construe the negative limitation "substantially without the addition of an acidic compound"? The outcome will determine whether processes that use any acidic additives, even for unrelated purposes, can infringe the ’399 Patent.
A key evidentiary question will be one of factual compliance: Can Plaintiff produce evidence from discovery showing that the accused methods, as practiced by CHS Ethanol, meet the precise numerical limitations of the claims, particularly the requirement that the pH in the "beer column" is "4.5 or higher"?