DCT

1:10-cv-00039

Dow AgroSciences LLC v. Cooper Industries LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:10-cv-00039, S.D. Ind., 01/12/2010
  • Venue Allegations: Plaintiffs allege venue is proper based on Defendants having continuous and systematic business contacts within the Southern District of Indiana.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their natural oil-based dielectric fluids do not infringe ten of Defendants’ patents and/or that the patents are invalid.
  • Technical Context: The dispute concerns dielectric fluids, which are used as electrical insulators and coolants in equipment such as high-voltage power transformers.
  • Key Procedural History: The complaint states that Dow approached Cooper in late 2008/early 2009 regarding entry into the transformer oils market and requested immunity from suit, which Cooper rejected. Subsequently, on June 12, 2009, Cooper sent a letter to Dow formally putting Dow "on notice that Cooper will vigorously defend its rights should Dow attempt to make products covered by one or more of Cooper's patents." The letter also referenced prior litigation where Cooper sued ABB for infringement of several of the same patents, which ended in a settlement. This history establishes the "actual and substantial controversy" required for a declaratory judgment action.

Case Timeline

Date Event
1995-12-21 Priority Date for ’915, ’517, ’655, ’986, ’659, ’250, ’857 Patents
1996-10-08 Priority Date for ’537, ’459, ’638 Patents
1998-04-07 U.S. Patent 5,736,915 Issues
1998-06-16 U.S. Patent 5,766,517 Issues
2000-03-14 U.S. Patent 6,037,537 Issues
2001-02-06 U.S. Patent 6,184,459 Issues
2002-03-05 U.S. Patent 6,352,655 Issues
2002-06-04 U.S. Patent 6,398,986 Issues
2002-11-26 U.S. Patent 6,485,659 Issues
2003-09-02 U.S. Patent 6,613,250 Issues
2004-04-27 U.S. Patent 6,726,857 Issues
2005-06-14 U.S. Patent 6,905,638 Issues
2008-Late Dow approaches Cooper regarding market entry (approximate)
2009-Early Dow approaches Cooper regarding market entry (approximate)
2009-06-12 Cooper sends letter to Dow putting it on notice of its patents
2010-Q1 Dow contemplates launching its canola oil-based dielectric fluid
2010-01-12 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 5,736,915 - “Hermetically sealed, non-venting electrical apparatus with dielectric fluid having defined chemical composition”

The Invention Explained

  • Problem Addressed: Conventional transformers require a headspace of air or gas to accommodate the thermal expansion of dielectric fluid, which makes them susceptible to contamination from moisture and oxygen through “breathing” (U.S. Patent 5736915, col. 6:45-56). This contamination degrades the fluid and insulation, shortening the transformer’s life (U.S. Patent 5,736,915, col. 2:57-64). Such transformers are also large and heavy due to the volume of fluid required (U.S. Patent 5,736,915, col. 3:55-64).
  • The Patented Solution: The patent describes an electrical apparatus, like a transformer, that is completely and permanently sealed from the environment, with no vents or gaskets (U.S. Patent 5,736,915, Abstract). The apparatus is completely filled with a dielectric fluid and sealed at a sub-atmospheric pressure (U.S. Patent 5,736,915, col. 7:36-40). Its enclosure walls are flexible, allowing them to bow inward and outward to accommodate the fluid’s thermal expansion and contraction, which eliminates the need for a headspace and prevents contamination (U.S. Patent 5,736,915, col. 7:45-49).
  • Technical Importance: This design approach allows for smaller, lighter, and more reliable transformers by preventing fluid degradation from environmental exposure.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment on "any valid claim" of the patent and does not single out specific claims (Compl. ¶19). Claim 1 is the first independent claim.
  • Essential elements of Claim 1 include:
    • An enclosure having a hermetically sealed, expandable chamber.
    • A conductor disposed in the sealed chamber.
    • A dielectric liquid surrounding the conductor and completely filling the chamber.
    • The liquid is sealed in the chamber at an absolute pressure that is less than one atmosphere.
    • The liquid comprises a fluid made of two or more compounds from a group including alphaolefin oligomers, aromatic hydrocarbons, polyol esters, and triglycerides.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 5,766,517 - “Dielectric fluid for use in power distribution equipment”

The Invention Explained

  • Problem Addressed: Traditional mineral oil-based dielectric fluids have varying compositions and raise safety and environmental concerns (U.S. Patent 5766517, col. 6:8-21). Alternatives like polychlorinated biphenyls (PCBs) are toxic and environmentally persistent, while other substitutes are deficient in performance or cost (U.S. Patent 5,766,517, col. 5:46-59).
  • The Patented Solution: The patent discloses a dielectric fluid with a well-defined chemical composition comprising a blend of specific hydrocarbon compounds, such as polyalphaolefins and aromatic hydrocarbons (U.S. Patent 5,766,517, Abstract; col. 1:8-15). This approach allows for the fluid’s physical properties (e.g., fire point, viscosity, pour point) to be tailored to meet performance requirements while using chemicals known to be environmentally safe (U.S. Patent 5,766,517, col. 6:18-21).
  • Technical Importance: The invention provides a high-performance, environmentally compatible alternative to conventional mineral oils and toxic PCBs for use in electrical equipment.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment on "any valid claim" of the patent (Compl. ¶25). Claim 1 is the first independent claim.
  • Essential elements of Claim 1 include:
    • A dielectric coolant suitable for use in power distribution equipment, consisting essentially of:
    • approximately 65 to 99 weight percent alphaolefin oligomers with carbon chain lengths of C6 to C12, and
    • 1-35 weight percent of an aromatic hydrocarbon selected from a specific group including diaryl ethanes, diaryl methanes, etc.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,037,537 - “Vegetable oil based dielectric coolant”

  • Technology Synopsis: This patent discloses a dielectric fluid comprising a vegetable oil, an antioxidant, and a low-temperature additive. It also describes a transformer tank designed to enhance the fluid's stability by including an oxygen absorbing material in the headspace to prevent oxidative degradation of the vegetable oil.
  • Asserted Claims: The complaint asserts non-infringement of "any valid claim" (Compl. ¶31).
  • Accused Features: Dow’s development and planned commercialization of a canola oil-based dielectric fluid (Compl. ¶9, ¶11).

U.S. Patent No. 6,184,459 - “Vegetable oil based dielectric coolant”

  • Technology Synopsis: This patent is a continuation of the ’537 Patent, describing a dielectric fluid composed of vegetable oil and an antioxidant. The invention also includes a transformer with an oxygen absorbing material isolated from the fluid, and a method for replacing the oxygen absorbing material.
  • Asserted Claims: The complaint asserts non-infringement of "any valid claim" (Compl. ¶37).
  • Accused Features: Dow’s natural oil-based dielectric fluids (Compl. ¶9, ¶11).

U.S. Patent No. 6,352,655 - “Vegetable oil based dielectric fluid”

  • Technology Synopsis: This patent discloses a dielectric fluid system using a vegetable oil and an oxidation-reducing composition housed in an oxygen-permeable polymer. This system is designed to remove oxygen from the transformer headspace, preventing fluid degradation.
  • Asserted Claims: The complaint asserts non-infringement of "any valid claim" (Compl. ¶43).
  • Accused Features: Dow’s natural oil-based dielectric fluids (Compl. ¶9, ¶11).

U.S. Patent No. 6,398,986 - “Food grade vegetable oil based dielectric fluid and methods of using same”

  • Technology Synopsis: This patent describes a food-grade dielectric fluid consisting of at least one vegetable oil, such as oleate modified oil or blends with soybean oil, that is substantially free of chlorinated compounds. The invention focuses on specific formulations to achieve desired performance characteristics.
  • Asserted Claims: The complaint asserts non-infringement of "any valid claim" (Compl. ¶49).
  • Accused Features: Dow’s natural oil-based dielectric fluids (Compl. ¶9, ¶11).

U.S. Patent No. 6,485,659 - “Electrical apparatus with dielectric fluid blend of polyalphaolefins and polyol esters or triglycerides”

  • Technology Synopsis: This patent discloses a dielectric fluid comprising a blend of a polyalphaolefin with either a polyol ester or a triglyceride (such as vegetable oil). The invention is directed at creating fluids with tailored performance properties by blending these specific components.
  • Asserted Claims: The complaint asserts non-infringement of "any valid claim" (Compl. ¶55).
  • Accused Features: Dow’s natural oil-based dielectric fluids (Compl. ¶9, ¶11).

U.S. Patent No. 6,613,250 - “Vegetable oil based dielectric fluid and methods of using same”

  • Technology Synopsis: This patent, related to the ’986 Patent, describes a food-grade dielectric fluid made from vegetable oil blends, such as soybean oil with rapeseed or sunflower oil, to achieve improved low-temperature performance (pour point).
  • Asserted Claims: The complaint asserts non-infringement of "any valid claim" (Compl. ¶61).
  • Accused Features: Dow’s natural oil-based dielectric fluids (Compl. ¶9, ¶11).

U.S. Patent No. 6,726,857 - “Dielectric fluid having defined chemical composition for use in electrical apparatus”

  • Technology Synopsis: This patent, related to the ’915 and ’517 Patents, describes both a sealed electrical apparatus with a flexible enclosure and the specific chemical compositions of dielectric fluids suitable for use therein, including blends of polyalphaolefins with polyol esters or triglycerides.
  • Asserted Claims: The complaint asserts non-infringement of "any valid claim" (Compl. ¶67).
  • Accused Features: Dow’s natural oil-based dielectric fluids (Compl. ¶9, ¶11).

U.S. Patent No. 6,905,638 - “Vegetable oil based dielectric fluid and methods of using same”

  • Technology Synopsis: This patent, related to the family of vegetable-oil patents, discloses a dielectric fluid system including a transformer and a vegetable oil-based fluid. It further claims a method for retrofitting existing equipment with this fluid.
  • Asserted Claims: The complaint asserts non-infringement of "any valid claim" (Compl. ¶73).
  • Accused Features: Dow’s natural oil-based dielectric fluids (Compl. ¶9, ¶11).

III. The Accused Instrumentality

Product Identification

Plaintiffs’ "canola oil-based dielectric fluid" and, more generally, their "natural oil-based dielectric fluids for use in electrical equipment, including transformers" (Compl. ¶9, ¶11).

Functionality and Market Context

The complaint describes the accused instrumentality as a fluid developed for use in electrical equipment such as transformers (Compl. ¶9). It alleges that Dow was contemplating a commercial introduction of the canola oil-based fluid in the first quarter of 2010 and had approached Cooper about its entry into the transformer oils market (Compl. ¶9, ¶12). The complaint does not provide further technical details regarding the fluid's specific composition or performance characteristics.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint, being a declaratory judgment action for non-infringement, does not contain affirmative infringement allegations or a claim chart. Instead, it makes general assertions that the plaintiffs' products "do not infringe, either literally or under the doctrine of equivalents, any valid claim of the Cooper Patents" (Compl. ¶11, ¶20, ¶26). The complaint does not specify which claims of the ten patents-in-suit are at issue, nor does it provide a technical basis for its non-infringement position. As such, the complaint does not provide sufficient detail for a claim-chart-based analysis.

  • Identified Points of Contention:
    • Apparatus vs. Composition Claims: A primary point of contention will be the distinction between patents claiming a physical apparatus (like the '915 Patent's sealed transformer) and those claiming a chemical composition (like the '517 Patent's fluid blend). For the apparatus claims, the dispute may focus on indirect infringement theories. The complaint suggests Dow manufactures and markets only the fluid (Compl. ¶9), raising the question of whether Dow could be held liable for inducing or contributing to infringement by its customers who manufacture the complete transformers.
    • Scope of Chemical Claims: For the composition patents, the dispute will likely focus on whether the specific formulation of Dow’s canola oil-based fluid falls within the scope of the claims. This raises a technical question regarding the chemical makeup of Dow's product versus the specific components and ratios (e.g., polyalphaolefins, aromatic hydrocarbons, specific vegetable oil blends) required by various claims in the Cooper patents.

V. Key Claim Terms for Construction

Term: "hermetically sealed, expandable chamber" (from ’915 Patent, Claim 1)

  • Context and Importance: This term defines the core structural element of the apparatus claimed in the ’915 Patent. The definition is critical because Dow, as a fluid supplier, would argue for a narrow construction that its customers’ transformer designs do not meet, thereby negating any claim of indirect infringement. Practitioners may focus on whether a standard transformer tank, even if welded shut, meets the "expandable" limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states the enclosure walls are "flexible" and "are permitted to bow inwardly and outwardly as the volume of the dielectric fluid changes" (’915 Patent, col. 1:47-51). This could support a construction covering any non-rigid enclosure capable of some deformation under pressure changes.
    • Evidence for a Narrower Interpretation: The detailed description emphasizes a specific "noncylindrical, box-like structure" made from "0.040 inch thick sheets of 400 series stainless steel" designed to flex (’915 Patent, col. 10:19-42). This suggests the term may be limited to enclosures specifically designed with thin, flexible walls for expansion, rather than merely being subject to incidental bulging.

Term: "consisting essentially of" (from ’517 Patent, Claim 1)

  • Context and Importance: This transitional phrase is critical for determining the scope of the claimed chemical composition. Its construction will determine whether Dow's canola oil-based fluid, which likely contains components other than the alphaolefin oligomers and aromatic hydrocarbons specified in Claim 1 of the ’517 Patent, can infringe. Practitioners may focus on this term because it permits the presence of unlisted ingredients only if they do not materially affect the basic and novel properties of the claimed invention.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that the "basic and novel" properties are high fire point, low pour point, and environmental safety. If the additional components in Dow's canola oil do not materially alter these general characteristics, the fluid might be found to infringe.
    • Evidence for a Narrower Interpretation: The patent distinguishes between different classes of compounds for dielectric fluids, including polyalphaolefins, aromatic hydrocarbons, and triglycerides (vegetable oils) (’915 Patent, claim 1). The fact that triglycerides are listed as a distinct alternative component in related patents could support an argument that their presence in a fluid claimed as "consisting essentially of" alphaolefins and aromatics would materially alter the invention's properties, thus avoiding infringement of the ’517 Patent.

VI. Other Allegations

  • Indirect Infringement: The complaint makes a blanket assertion of non-infringement, stating that Plaintiffs "do not infringe, and have not infringed directly, indirectly, willfully or otherwise" (Compl. ¶20, ¶26, et seq.). No specific facts are alleged to support this denial of indirect infringement, but the issue is pertinent to the apparatus claims, as discussed in Section IV.
  • Willful Infringement: The complaint denies willful infringement. The basis for potential willfulness arises from Cooper’s June 12, 2009 letter, which the complaint alleges "formally put Dow on notice that Cooper will vigorously defend its rights" (’Compl. ¶16). This alleged pre-suit knowledge establishes the controversy necessary for this declaratory judgment action and would be the factual predicate for a future willfulness claim by Cooper against Dow.

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

  • A core issue will be one of indirect liability: Given that Dow alleges it only develops and markets a dielectric fluid, can it be held liable for indirectly infringing Cooper’s apparatus patents, such as the ’915 patent claiming a complete sealed transformer? This will depend on evidence of how Dow markets its fluid and whether it has substantial non-infringing uses.
  • A key technical question will be one of chemical scope: Does Dow's canola oil-based fluid, which is primarily composed of triglycerides, fall within the scope of patent claims that recite specific blends of other chemical classes, such as polyalphaolefins and aromatic hydrocarbons, particularly when those claims use the limiting phrase "consisting essentially of"?
  • A central legal question will be validity: The complaint alleges that one or more claims of the patents-in-suit are invalid under 35 U.S.C. §§ 102, 103, and 112, citing several prior art references (Compl. ¶11). The case will likely involve a significant validity challenge based on whether the claimed inventions were anticipated or rendered obvious by the state of the art at the time of invention.