GS Cleantech Corp v. GEA Westfalia Separator Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: GS CleanTech Corporation (Delaware)
  • Defendant: GEA Mechanical Equipment US, Inc. (New York); Ace Ethanol, LLC (Wisconsin); ICM, Inc. (Kansas); David J. Vander Griend (Kansas)
  • Plaintiff’s Counsel: Cantor Colburn LLP
• Case Identification: 1:10-cv-08007, S.D. Ind., 11/09/2012
• Venue Allegations: The complaint alleges venue is proper in the Southern District of Indiana under 28 U.S.C. §§ 1391(b)-(d) and 1400(b).
• Core Dispute: Plaintiff alleges that Defendants’ equipment and methods for recovering corn oil from ethanol byproducts infringe five U.S. patents directed to corn oil extraction technology.
• Technical Context: The technology at issue involves processes for efficiently recovering valuable corn oil from the byproducts of corn-based ethanol production, thereby increasing the overall economic viability of ethanol plants.
• Key Procedural History: This Fourth Amended Complaint is part of a multi-district litigation (MDL). The complaint references an extensive litigation history between the parties, including prior infringement lawsuits filed by the Plaintiff against Defendants' customers (e.g., GS Cleantech v. Cardinal Ethanol) and declaratory judgment actions for non-infringement and invalidity filed by Defendants against the Plaintiff.

Case Timeline

Date	Event
2004-08-17	Priority Date for ’858, ’516, ’517, and ’484 Patents
2005-03-15	Priority Date for ’037 Patent
2008-08-01	Ace Ethanol allegedly begins using accused GEA centrifuge
2009-10-13	’858 Patent Issued
2010-02-11	Plaintiff files suit against Cardinal Ethanol
2011-08-30	’516 Patent Issued
2011-08-30	’517 Patent Issued
2012-05-01	’037 Patent Issued
2012-10-09	’484 Patent Issued
2012-11-09	Complaint Filing Date

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

U.S. Patent No. 7,601,858 - “Method Of Processing Ethanol Byproducts And Related Subsystems”

• The Invention Explained:
  • Problem Addressed: The patent addresses the economic and technical inefficiency of prior art methods for recovering valuable corn oil from the byproducts of ethanol production (Compl. ¶38; ’858 Patent, col. 1:51-54). Specifically, attempting to centrifuge oil from "thin stillage" (a watery byproduct) before it is concentrated results in an unusable emulsion and requires cost-prohibitive capital investment due to the large volumes involved (’858 Patent, col. 1:55-65).
  • The Patented Solution: The invention introduces a novel sequence: first, evaporate the thin stillage to create a more concentrated byproduct, or "syrup," and then use a centrifuge to mechanically separate the usable corn oil from this concentrated syrup (’858 Patent, col. 2:22-29). This post-evaporation processing step is described as a more efficient and economical way to recover the oil (’858 Patent, col. 4:54-58). Figure 2 of the patent provides a key flow chart illustrating this "AFTER" process, where syrup from an evaporator (12) is fed to a centrifuge (14) to recover oil.
  • Technical Importance: This process created a new, economically viable method for ethanol plants to extract a valuable co-product (corn oil) from what was previously a lower-value waste stream, thereby increasing plant profitability (Compl. ¶38-39).
• Key Claims at a Glance:
  • The complaint asserts infringement of one or more claims without specification (Compl. ¶53). Independent claim 1 is representative of the core method:
    • A method of recovering oil from thin stillage, comprising, in sequence:
    • evaporating the thin stillage to remove water and form a concentrated byproduct; and
    • recovering oil from the concentrated byproduct by heating and mechanically processing the concentrated byproduct to separate the oil from the concentrated byproduct,
    • wherein the concentrated byproduct has a moisture content of greater than 30% and less than 90% by weight.
  • The complaint does not explicitly reserve the right to assert dependent claims, but the general allegation for "one or more of the claims" preserves this option (Compl. ¶53).

U.S. Patent No. 8,008,516 - “Method Of Processing Ethanol Byproducts And Related Subsystems”

• The Invention Explained:
  • Problem Addressed: As a continuation of the application leading to the ’858 Patent, the ’516 Patent addresses the same inefficiency of recovering corn oil from the high-volume, low-concentration thin stillage byproduct of ethanol production (’516 Patent, col. 1:53-col. 2:17).
  • The Patented Solution: The patent claims a method that, like the ’858 Patent, involves first concentrating the thin stillage via evaporation and then mechanically separating the oil (’516 Patent, Abstract). The claims use the transitional phrase "consisting essentially of," which suggests the inventive process is defined by a specific set of core steps without the inclusion of other steps that would materially affect the invention's characteristics (’516 Patent, col. 6:11-21).
  • Technical Importance: The invention provides a defined, sequential process that enables the efficient and economical extraction of corn oil from a byproduct of the dry milling process (Compl. ¶38-39).
• Key Claims at a Glance:
  • The complaint asserts infringement of one or more unspecified claims (Compl. ¶58). Independent claim 1 is representative:
    • A method of recovering oil from thin stillage; the method consisting essentially of, in sequence:
    • evaporating water from the thin stillage to form a thin stillage concentrate, wherein the thin stillage concentrate has a moisture content of greater than 30% and less than 90% by weight before the recovering step;
    • mechanically processing the thin stillage concentrate to separate oil from the thin stillage concentrate; and
    • recovering the separated oil.

U.S. Patent No. 8,008,517 - “Method Of Recovering Oil From Thin Stillage”

• Patent Identification: U.S. Patent No. 8,008,517, "Method Of Recovering Oil From Thin Stillage," issued August 30, 2011.
• Technology Synopsis: This patent, another continuation, claims a method of recovering oil from thin stillage by first evaporating it to create a concentrate with a moisture content between 15% and 90% by weight, and then centrifuging the concentrate to recover the oil (’517 Patent, Abstract, claim 1).
• Asserted Claims: The complaint asserts one or more unspecified claims (Compl. ¶63). Independent claim 1 is representative.
• Accused Features: The accused features are Defendants' processes of using centrifuges to separate corn oil from concentrated thin stillage, or syrup (Compl. ¶49).

U.S. Patent No. 8,283,484 - “Method Of Processing Ethanol Byproducts And Related Subsystems”

• Patent Identification: U.S. Patent No. 8,283,484, "Method Of Processing Ethanol Byproducts And Related Subsystems," issued October 9, 2012.
• Technology Synopsis: This patent claims methods of processing ethanol byproducts that involve concentrating thin stillage and then mechanically separating oil from it. The claims include specific parameters for temperature and pH during the oil recovery step (’484 Patent, claims 3-6).
• Asserted Claims: The complaint asserts one or more unspecified claims (Compl. ¶68). Independent claims 1, 8, 16, and 19 are representative method claims.
• Accused Features: The accused features are Defendants' processes and systems for recovering corn oil from concentrated thin stillage at ethanol plants (Compl. ¶49).

U.S. Patent No. 8,168,037 - “Method And Systems For Enhancing Oil Recovery From Ethanol Production Byproducts”

• Patent Identification: U.S. Patent No. 8,168,037, "Method And Systems For Enhancing Oil Recovery From Ethanol Production Byproducts," issued May 1, 2012.
• Technology Synopsis: This patent describes methods and systems that enhance oil recovery by strategically positioning the oil separation step (e.g., a centrifuge) within a multi-stage evaporation process, specifically before the final stage of evaporation (’037 Patent, Abstract). This approach is distinct in its focus on integrating the recovery step into the evaporation process itself for greater efficiency.
• Asserted Claims: The complaint asserts one or more unspecified claims against defendants ICM and Vander Griend (Compl. ¶73, ¶78). Independent claims 1, 10, 13, 14, and 15 are representative.
• Accused Features: The accused features are the corn oil recovery systems and processes designed, built, and promoted by ICM (Compl. ¶48, ¶73).

III. The Accused Instrumentality

• Product Identification: The accused instrumentalities are the processes and equipment used by Defendants and their customers for corn oil extraction from ethanol byproducts (Compl. ¶49). This specifically includes centrifuge equipment supplied by GEA and ICM to ethanol producers such as Ace Ethanol (Compl. ¶16-17, ¶48).
• Functionality and Market Context: The complaint alleges that Defendants employ, and supply equipment designed for, a process of separating corn oil from "condensed thin stillage (i.e., syrup) using GEA’s centrifuges" (Compl. ¶46-47). This process involves first concentrating thin stillage through evaporation and then using a centrifuge for oil recovery (Compl. ¶41, ¶51). The complaint alleges this is a significant business for GEA, which admitted in a separate lawsuit to selling "twenty-nine centrifuges designed for corn oil recovery" resulting in "over $15 million in total sales" (Compl. ¶43). ICM is alleged to design, build, and sell ethanol plants and equipment to practice these recovery methods (Compl. ¶48).

IV. Analysis of Infringement Allegations

’858 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method of recovering oil from thin stillage, the method comprising, in sequence: evaporating the thin stillage to remove water and form a concentrated byproduct;	Defendants are alleged to use a process where thin stillage is introduced into an evaporator to form a concentrated byproduct or "syrup." Ace Ethanol and GEA are alleged to have admitted they "separated corn oil through evaporation followed by centrifugation."	¶41, ¶51	col. 2:23-26
and recovering oil from the concentrated byproduct by heating and mechanically processing the concentrated byproduct to separate the oil from the concentrated byproduct,	Defendants are alleged to use a centrifuge to separate corn oil from the concentrated syrup. GEA is alleged to admit its centrifuges are "designed for that specific purpose" of extracting oil from condensed thin stillage.	¶41, ¶46-47	col. 2:26-29
wherein the concentrated byproduct has a moisture content of greater than 30% and less than 90% by weight.	The complaint does not provide specific data on the moisture content of the syrup in Defendants' accused processes. Infringement of this limitation is asserted through the general allegation that Defendants' activities practice the claimed methods.	¶53	col. 6:7-9

’516 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method of recovering oil from thin stillage; the method consisting essentially of, in sequence:	The complaint alleges a sequence of steps that mirrors the claimed method.	¶41, ¶49	col. 6:11-12
evaporating water from the thin stillage to form a thin stillage concentrate... wherein the thin stillage concentrate has a moisture content of greater than 30% and less than 90% by weight...	Defendants' process is alleged to involve evaporating thin stillage to create a concentrated syrup. The complaint does not specify the moisture content of the accused syrup.	¶41, ¶51, ¶58	col. 6:13-17
mechanically processing the thin stillage concentrate to separate oil from the thin stillage concentrate;	Defendants are alleged to use centrifuges supplied by GEA and ICM to separate corn oil from the concentrated syrup.	¶41, ¶46-47	col. 6:18-20
and recovering the separated oil.	This is the stated purpose of the accused process, which is designed for "recovering oil from corn byproducts."	¶48	col. 6:21

Identified Points of Contention

• Technical Questions: A primary factual dispute may center on whether the accused processes operate within the numerical limitations recited in the claims, such as the moisture content range of "greater than 30% and less than 90%" in claim 1 of the ’858 Patent. The complaint alleges infringement but does not provide specific evidentiary support for these parameters, which will be a necessary element of proof.
• Scope Questions: For the ’516 Patent, the transitional phrase "consisting essentially of" raises a key question of claim scope. The court will need to determine if Defendants' processes include any additional, unrecited steps that materially alter the "basic and novel properties" of the claimed invention, which could be a basis for a non-infringement argument.

V. Key Claim Terms for Construction

• The Term: "concentrated byproduct" (’858 Patent) / "thin stillage concentrate" (’516 Patent)

  • Context and Importance: The invention's point of novelty is the recovery of oil from this concentrated material, not from raw thin stillage. The definition of this term is therefore critical, as it defines the starting material for the key mechanical separation step and distinguishes the invention from prior art.
  • Intrinsic Evidence for a Broader Interpretation: The specification refers to the material generally as a "concentrate or syrup," suggesting the term is not limited to a single, precise chemical or physical state (’858 Patent, col. 4:51-52).
  • Intrinsic Evidence for a Narrower Interpretation: The claims and preferred embodiments explicitly tie the term to specific operating parameters, such as a "moisture content of greater than 30% and less than 90% by weight" (’858 Patent, col. 6:7-9). A party could argue the term should be construed as being defined by these disclosed ranges.

• The Term: "mechanically processing"

  • Context and Importance: This term defines the core action of separating the oil. Its scope determines which types of separation equipment and techniques fall within the claims. Practitioners may focus on this term because the patents heavily feature a specific type of centrifuge.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the mechanical separation step as being achievable with a "centrifuge" and lists several types, including a "self-cleaning bowl type of disk stack centrifuge, a nozzle bowl disk stack centrifuge, or a horizontal centrifugal decanter" (’858 Patent, col. 3:18-24).
  • Intrinsic Evidence for a Narrower Interpretation: The patent repeatedly identifies a "disk stack centrifuge" as the preferred device and explains its unique suitability for the process (’858 Patent, col. 2:27-29). A defendant might argue that the term should be limited to the preferred embodiment, particularly if the prosecution history involved distinguishing prior art based on the type of centrifuge used.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement (Compl. ¶16-17). The factual basis for inducement includes allegations that GEA and ICM supply centrifuges with the knowledge that they are designed for and will be used by customers to perform the patented methods (Compl. ¶46, ¶48). The complaint further alleges that ICM provides indemnification agreements to its customers against infringement claims by GS CleanTech, which may be presented as strong evidence of a specific intent to encourage infringement (Compl. ¶24-27).
• Willful Infringement: Willfulness is alleged for all infringement counts (Compl. ¶55, ¶60, ¶65, ¶70, ¶75, ¶80). The allegations are based on purported pre-suit knowledge, with the complaint stating that Defendants have had "specific knowledge of the existence of the ’858 patent since the day that it issued on October 13, 2009" and knowledge of the related patent applications (Compl. ¶19-23).

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

• A central evidentiary question will be one of process verification: can the Plaintiff produce evidence that the accused methods, as practiced by Defendants and their customers, actually meet the specific numerical parameters (e.g., moisture content, pH, temperature) recited in the asserted claims? While the complaint describes a process flow that appears to map onto the patents, infringement will hinge on proving these specific factual conditions.
• A key legal question for several patents, including the ’516 Patent, will concern the scope of "consisting essentially of": the court will need to determine if the accused processes include additional steps not recited in the claims that materially alter the basic and novel characteristics of the patented oil recovery method, which could be a viable non-infringement defense.
• A core issue for establishing liability against the equipment suppliers (GEA and ICM) will be one of specific intent: does the evidence of supplying "designed for" equipment and offering indemnification agreements prove that Defendants specifically intended to encourage their customers' infringement, or can they successfully argue they were merely selling general-purpose equipment with a standard business practice of indemnification?