Knauf Insulation LLC v. Johns Manville Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Knauf Insulation, Inc. (Delaware), Knauf Insulation GmbH (Germany), and Knauf Insulation SPRL (Belgium)
  • Defendant: Johns Manville Corporation (Delaware) and Johns Manville, Inc. (Delaware)
  • Plaintiff’s Counsel: Woodard, Emhardt, Moriarty, McNett & Henry LLP
• Case Identification: 1:15-cv-00111, S.D. Ind., 04/09/2018
• Venue Allegations: Plaintiffs allege venue is proper because Defendants are subject to personal jurisdiction, maintain a regular and established place of business, and have committed acts of infringement within the Southern District of Indiana.
• Core Dispute: Plaintiff alleges that Defendant’s formaldehyde-free, bio-based fiberglass insulation products infringe nine U.S. patents related to the chemical binders used to hold glass fibers together.
• Technical Context: The technology concerns environmentally-friendly, formaldehyde-free binders for mineral wool insulation, a critical component in building materials for thermal and acoustical performance.
• Key Procedural History: This filing is a Fourth Amended Complaint in a case originally filed in 2015. Post-filing administrative proceedings at the U.S. Patent and Trademark Office have resulted in the cancellation of several claims across the asserted patents, including claim 10 of the lead '210 Patent, which is explicitly asserted in this complaint. This history may substantially narrow the scope of the dispute for several of the patents-in-suit.

Case Timeline

Date	Event
2007-08-03	Priority Date for ’210 and ’089 Patents
2011-02-01	Issue Date for ’670 Patent
2012-02-14	Issue Date for ’210 Patent
2012-12-17	Date of letter from Defendant's VP of R&D mentioned in complaint
2013-01-23	Date of Defendant's technical bulletin mentioned in complaint
2015-01-27	Issue Date for ’089 Patent
2015-01-27	Original lawsuit filed by Plaintiff
2015-05-26	Issue Date for ’827 and ’652 Patents
2016-10-11	Issue Date for ’207 Patent
2016-10-18	Issue Date for ’747 Patent
2017-11-28	Issue Date for ’287 Patent
2018-04-09	Fourth Amended Complaint Filing Date

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

U.S. Patent No. 8,114,210 - "Binders," issued February 14, 2012

The Invention Explained

• Problem Addressed: The patent addresses the need for a formaldehyde-free binder system for mineral wool products like glass and stone wool insulation ('210 Patent, col. 1:24-32). This implicitly targets the environmental and health concerns associated with traditional formaldehyde-based binders.
• The Patented Solution: The invention is a curable, aqueous binder solution created by dissolving a reducing sugar and an ammonium salt acid precursor in water (’210 Patent, Abstract). The curing chemistry is based on a Maillard-type reaction, similar to food browning, which forms a water-insoluble thermoset binder upon heating without releasing formaldehyde ('210 Patent, col. 2:13-18, col. 6:56-58). The patent notes the surprising discovery that an acid precursor from an inorganic salt can be effective in this system ('210 Patent, col. 2:20-24).
• Technical Importance: The technology provided an alternative to phenol-formaldehyde resins, enabling the production of fiberglass insulation products marketed as more environmentally friendly ('210 Patent, col. 1:30-32).

Key Claims at a Glance

• The complaint asserts independent method claim 10 and dependent claims 11 and 12 (Compl. ¶64).
• Essential elements of independent claim 10 include:
  • Providing a collection of loose matter.
  • Treating the loose matter with the substantially formaldehyde-free binder solution of claim 1 (which requires a reducing sugar and an ammonium salt acid precursor).
  • Arranging the treated loose matter into the shape of the product.
  • Curing the binder by applying a source of energy.

U.S. Patent No. 8,940,089 - "Binders," issued January 27, 2015

The Invention Explained

• Problem Addressed: The patent, which is related to the ’210 Patent, similarly addresses the need for formaldehyde-free binders in mineral wool insulation products (’089 Patent, col. 1:22-24).
• The Patented Solution: This patent claims the final product resulting from the use of the Maillard-reaction binder technology. The invention is a finished material containing mineral fibers held together by a cured, formaldehyde-free, "melanoidin containing binder" (’089 Patent, col. 14:34-36). A key aspect of the claimed solution is the characterization of the finished product by its chemical fingerprint: specifically, the presence of "residual levels of more than 500 mg of ionic species per kg of finished material," such as sulfates or phosphates, which are byproducts of the inorganic acid precursors used in the binder (’089 Patent, col. 7:24-32, claim 1).
• Technical Importance: This patent protects the final insulation product itself, defined by specific chemical markers, thereby extending protection beyond the binder solution or the manufacturing method described in the parent ’210 Patent (’089 Patent, claim 1).

Key Claims at a Glance

• The complaint asserts "one or more claims" of the ’089 Patent (Compl. ¶70). The allegations focus on the composition of the finished product, mapping to independent claim 1.
• Essential elements of independent claim 1 include:
  • A finished material comprising a collection of non-woven mineral fibers.
  • A cured, substantially formaldehyde-free melanoidin containing binder maintaining the fibers together.
  • The finished material comprises residual levels of more than 500 mg of ionic species (e.g., sulfates, phosphates) per kg of finished material.
  • The residual levels are assessed in a leach test.

U.S. Patent No. D631,670 - "Insulation Material," issued February 1, 2011

• Technology Synopsis: This is a design patent claiming the ornamental appearance of an insulation material (D631,670 Patent, Figs. 1, Claim).
• Asserted Claims: The single claim of the design patent is asserted (Compl. ¶76).
• Accused Features: The complaint alleges that the JM Bio-based Binder Insulation has "substantially the same ornamental design" as claimed (Compl. ¶76).

U.S. Patent No. 9,039,827 - "Binders," issued May 26, 2015

• Technology Synopsis: This patent is from the same family and claims a finished material with fibers held by a cured, nitrogenous, polymer-containing binder. It specifies residual ionic species levels and various physical properties of the finished material, such as parting strength and density (9,039,827 Patent, Abstract, claim 1).
• Asserted Claims: "one or more claims" (Compl. ¶83).
• Accused Features: The complaint accuses the manufacture, sale, and use of JM Bio-based Binder Insulation generally (Compl. ¶83).

U.S. Patent No. 9,040,652 - "Binders and Materials Made Therewith," issued May 26, 2015

• Technology Synopsis: This patent claims a curable aqueous composition comprising a carbohydrate and a crosslinking agent, as well as a method of making the composition by adjusting its pH with an amine base (9,040,652 Patent, Abstract).
• Asserted Claims: "one or more claims" (Compl. ¶86).
• Accused Features: The complaint accuses the manufacture, sale, and use of JM Bio-based Binder Insulation generally (Compl. ¶86).

U.S. Patent No. 9,464,207 - "Binders and Materials Made Therewith," issued October 11, 2016

• Technology Synopsis: This patent claims a method of making fiberglass insulation products using a Maillard-reaction-based aqueous binder solution, detailing specific process steps from spraying the binder to compressing the final batt for packaging (9,464,207 Patent, claim 1).
• Asserted Claims: "one or more claims" (Compl. ¶103).
• Accused Features: The complaint alleges that the method of making the accused insulation includes a binder solution with reducing sugars and an amine reactant, and involves curing in an oven to produce a formaldehyde-free binder (Compl. ¶90-99).

U.S. Patent No. 9,469,747 - "Mineral Wool Insulation," issued October 18, 2016

• Technology Synopsis: This patent claims a method of manufacturing a glass fiber thermal insulation product using a binder solution that "consists essentially of" a carbohydrate reactant and an acid precursor, where the acid precursor provides specific ionic species (e.g., sulphates) and an amine reactant (9,469,747 Patent, claim 1).
• Asserted Claims: "one or more claims" (Compl. ¶112).
• Accused Features: The complaint alleges the method of making the accused product includes forming glass fibers and using an "acid precursor, in aqueous solution" that provides ionic species like sulphates (Compl. ¶109-111).

U.S. Patent No. 9,828,287 - "Binders and Materials Made Therewith," issued November 28, 2017

• Technology Synopsis: This patent claims a thermal or acoustical fiberglass insulation material comprising glass fibers and a binder that includes reaction products of a reducing sugar and an amine reactant, with specified reactant percentages and additives like a corrosion inhibitor (9,828,287 Patent, Abstract).
• Asserted Claims: "one or more claims" (Compl. ¶125).
• Accused Features: The complaint alleges the accused product is a fiberglass insulation material whose binder includes a reaction product of a reducing sugar and an amine, with specific percentages and additives (Compl. ¶118-124).

U.S. Patent No. 9,926,464 - "Binders and Materials Made Therewith," issued March 27, 2018

• Technology Synopsis: This patent claims a specific method of making a thermal or acoustical fiberglass insulation product, reciting steps including spraying an uncured aqueous binder solution comprising Maillard reactants, transferring the mat to a curing oven, heating, and compressing the final batt (9,926,464 Patent, claim 1).
• Asserted Claims: "one or more claims," including independent claim 1 (Compl. ¶131-132).
• Accused Features: The complaint alleges infringement by mapping the steps of making the JM Bio-based Binder Insulation to the elements of claim 1 (Compl. ¶131).

III. The Accused Instrumentality

Product Identification

• Defendants’ "Formaldehyde Free" insulation products that utilize a "bio-based binder," collectively referred to as "JM Bio-based Binder Insulation" (Compl. ¶22). Specific product lines include "EasyFit," "RANGE-GLAS EQ," and "ComfortTherm" (Compl. ¶23).

Functionality and Market Context

• The accused products are fiberglass insulation composed of "long, resilient glass fibers bonded with our bio-based binder" (Compl. ¶25, ¶26). The complaint includes a photograph of the accused product from Defendant's 2012 Sustainability Report (Compl. ¶24). The product is described as having an "earthy brown color" (Compl. ¶29).
• Technically, the binder is alleged to be made from "rapidly renewable plant-based materials" through a Maillard reaction (Compl. ¶27, ¶31). The complaint alleges the binder is formed from an aqueous solution containing reducing sugars (such as dextrose) and amines (such as an ammonium sulphate salt) (Compl. ¶33-37). The resulting cured binder is alleged to contain melanoidins, be formaldehyde-free, and constitute approximately 5% of the finished product's weight (Compl. ¶30, ¶32, ¶42).

IV. Analysis of Infringement Allegations

'210 Patent Infringement Allegations

Claim Element (from Independent Claim 10)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method of manufacturing a product comprising the steps of: providing a collection of loose matter;	Defendants manufacture fiberglass insulation products, which begin as a collection of loose glass fibers (Compl. ¶25).	¶51, ¶64	col. 5:14-16
treating the collection of loose matter with the substantially formaldehyde free binder solution of claim 1;	Defendants allegedly manufacture their products by "treating a collection of fibers with a substantially formaldehyde free binder solution" (Compl. ¶51), which solution is alleged to meet the chemical requirements of claim 1 (Compl. ¶33-37).	¶51	col. 5:17-23
arranging the collection of loose matter treated with the binder solution into the shape of the product; and	The manufacturing method allegedly includes "arranging a collection of fibers treated with binder into the shape of an insulation product" (Compl. ¶52).	¶52	col. 5:24-25
curing the binder by applying a source of energy.	The manufacturing method allegedly includes "curing a binder by applying a source of energy," such as in an oven (Compl. ¶53).	¶53	col. 5:26-28

Identified Points of Contention

• Scope Questions: A central question may be whether the accused binder solution, as manufactured by Defendant, meets all the limitations of claim 1 of the ’210 Patent, which is incorporated by reference into asserted claim 10. Claim 1 requires a solution "consisting essentially of" a reducing sugar and a specific ammonium salt acid precursor. The analysis may turn on whether other components in Defendant's binder "materially affect the basic and novel characteristic(s)" of the claimed invention.
• Technical Questions: While the complaint alleges the use of a Maillard reaction and the presence of constituent chemicals like reducing sugars and ammonium salts (Compl. ¶31-37), a key factual question will be what evidence confirms that the accused manufacturing process practices each specific step of the asserted method claim.

'089 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A finished material comprising a collection of non-woven mineral fibers maintained together by a cured, substantially formaldehyde free melanoidin containing binder,	The accused product is fiberglass insulation bonded with a formaldehyde-free, bio-based binder (Compl. ¶25, ¶42). The complaint alleges this binder is made with a Maillard reaction and includes melanoidins (Compl. ¶31-32).	¶25, ¶31, ¶32, ¶42	col. 7:34-37
wherein the finished material comprises residual levels of more than 500 mg of ionic species per kg of finished material, said species selected from the group consisting of sulfates, phosphates, nitrates, carbonates, and combinations thereof	The complaint alleges that the accused products include "residual levels of more than 500 milligrams of sulfates, phosphates, nitrates, carbonates, or combinations thereof per kilogram of finished material" (Compl. ¶46).	¶46	col. 7:24-29
in which the residual levels are assessed in a leach test.	The complaint alleges the presence of the required ionic species but does not specify that this level was determined by a leach test (Compl. ¶46).	¶46	col. 7:30-32

Identified Points of Contention

• Scope Questions: A potential dispute may arise over the term "melanoidin containing binder." Given that melanoidins are complex polymers, the parties may contest the precise chemical definition and whether the accused binder meets it.
• Technical Questions: A key evidentiary question may be whether the amount of residual ionic species in the accused product exceeds the claimed threshold of 500 mg/kg. Further, the complaint does not allege that this determination was made "in a leach test" as required by the claim, raising a question of whether Plaintiff's infringement theory meets every limitation.

V. Key Claim Terms for Construction

For the '210 Patent

• The Term: "consisting essentially of" (from claim 1, incorporated into asserted claim 10).
• Context and Importance: This transitional phrase is critical for defining the scope of the required binder solution. Its construction will determine whether unlisted ingredients in the accused binder solution can prevent a finding of infringement. Practitioners may focus on this term because it will dictate whether the infringement analysis is limited to the named components or can accommodate additional, non-material ingredients.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification discloses numerous optional additives, such as organic acids, silanes, mineral oils, and silicones, suggesting the core invention is the combination of the reducing sugar and the inorganic salt precursor, with flexibility for other components ('210 Patent, col. 1:45-48, col. 4:35-44).
  • Evidence for a Narrower Interpretation: The use of "consisting essentially of" rather than "comprising" suggests a conscious choice by the patentee to exclude components that would materially alter the binder's fundamental characteristics. A defendant may argue that its proprietary additives do materially affect the binder's properties, thus placing it outside the claim scope.

For the '089 Patent

• The Term: "a leach test" (from claim 1).
• Context and Importance: This term specifies the method by which the infringing characteristic (residual ionic species) must be assessed. The dispute may turn on whether any standard industry test qualifies as "a leach test" or if the patent implies a specific methodology. The complaint makes a factual allegation about the quantity of residual ions without mentioning the test method used to determine it (Compl. ¶46).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent uses the indefinite article "a," which may suggest that any scientifically valid test for leaching chemicals from a solid matrix would suffice. The specification states that the presence of such species "may be assessed in a leach test" without defining a particular protocol ('089 Patent, col. 8:32-34).
  • Evidence for a Narrower Interpretation: A defendant may argue that in the context of materials science, a "leach test" implies a specific, standardized protocol (e.g., an ASTM or EPA standard) and that infringement requires showing the claim limitation is met when using such a protocol. The patent does not define the term or provide an exemplary protocol.

VI. Other Allegations

Willful Infringement

• The complaint alleges that Defendants' infringement has been and continues to be willful (Compl. ¶67, ¶73). The allegations are based on pre-suit knowledge of the asserted intellectual property. The complaint alleges that a senior R&D executive at Defendant stated in a 2012 letter that "Johns Manville is very aware of the patents and intellectual property Knauf has pursued" (Compl. ¶56). It further alleges that Defendant's in-house patent counsel had awareness of the '210 Patent as early as May 2, 2013, and that Defendant was aware of the '089 Patent since its issuance date (Compl. ¶57, ¶71-72).

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

• A core issue will be one of chemical composition: can Plaintiff prove through discovery that the specific formulation of the JM Bio-based Binder, including its constituent reactants and their ratios, falls within the scope of the asserted claims, particularly the "consisting essentially of" limitation in the '210 patent family?
• A key evidentiary question will be one of analytical proof: what evidence will be presented to establish the specific chemical and physical properties of the accused finished product, such as the precise quantity of residual ionic species as measured by a "leach test" required by the '089 patent family?
• A central procedural question will be the impact of post-filing invalidations: given that multiple asserted claims, including lead method claim 10 of the '210 Patent, were cancelled in administrative proceedings after this complaint was filed, a threshold issue will be how these cancellations affect the viability and scope of the overall infringement case presented by Plaintiff.