DCT

1:15-cv-00111

Knauf Insulation LLC v. Johns Manville Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:15-cv-00111, S.D. Ind., 09/03/2015
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Indiana because Defendants have a regular and established place of business in the district and have committed acts of infringement there, including the shipment and sale of accused products.
  • Core Dispute: Plaintiff alleges that Defendant’s formaldehyde-free, bio-based fiberglass insulation products infringe five patents related to binders used in the manufacturing of such materials.
  • Technical Context: The technology concerns environmentally-conscious binder compositions for fiberglass insulation, which serve as an alternative to traditional binders that utilize formaldehyde.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of several of the patents-in-suit, citing Defendant's monitoring of Plaintiff's patent activities and a specific instance of Defendant's in-house counsel discussing the '210 Patent in a separate patent application filing. Subsequent to the filing of this complaint, U.S. Patent 8,114,210 was subject to an inter partes review (IPR2015-01402), which resulted in the cancellation of several claims, including independent claim 10, which is asserted in Count I of the complaint.

Case Timeline

Date Event
2007-08-03 Earliest Priority Date ('210, '089, '827, '652 Patents)
2011-02-01 Issue Date, U.S. Patent No. D631,670
2012-02-14 Issue Date, U.S. Patent No. 8,114,210
2012-12-17 Date of letter in which Defendant's VP allegedly stated awareness of Plaintiff's patents
2013-01-23 Date of Defendant's bulletin regarding accused product specifications
2015-01-27 Issue Date, U.S. Patent No. 8,940,089
2015-05-26 Issue Date, U.S. Patent No. 9,039,827
2015-05-26 Issue Date, U.S. Patent No. 9,040,652
2015-09-03 Complaint Filing Date
2020-02-24 IPR Certificate issues cancelling asserted claim 10 of '210 Patent

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

U.S. Patent No. 8,114,210 - "Binders"

The Invention Explained

  • Problem Addressed: The patent background describes prior art formaldehyde-free binder systems based on a combination of a carbohydrate, ammonia, and a carboxylic acid, which rely on a Maillard-type reaction for curing chemistry. The implicit problem is the need for alternative, effective, and potentially more cost-efficient formaldehyde-free binder formulations. (’210 Patent, col. 1:21-32).
  • The Patented Solution: The invention is a substantially formaldehyde-free binder solution created by dissolving a reducing sugar (e.g., dextrose) and an acid precursor derived from an inorganic salt (e.g., ammonium sulphate) in water. This composition, when heated on a substrate like mineral wool, undergoes a curing reaction to form a water-insoluble thermoset binder without the need for an organic acid precursor. (’210 Patent, Abstract; col. 1:35-46).
  • Technical Importance: This approach offers a formaldehyde-free binder system that may provide advantages in cost, availability, and ease of handling by utilizing inorganic salts as the acid precursor instead of organic acids. (’210 Patent, col. 2:24-27).

Key Claims at a Glance

  • The complaint asserts method claims 10, 11, and 12, with claim 10 being the sole independent claim asserted (Compl. ¶59). Notably, the U.S. Patent and Trademark Office cancelled claim 10 in a subsequent inter partes review proceeding (IPR2015-01402).
  • Independent Claim 10 (as issued) requires:
    • providing a collection of loose matter;
    • treating the collection of loose matter with the binder solution of claim 1, which requires a reducing sugar and an ammonium salt (e.g., ammonium sulphate);
    • arranging the treated loose matter into the shape of the product; and
    • curing the binder by applying a source of energy.

U.S. Patent No. 8,940,089 - "Binders"

The Invention Explained

  • Problem Addressed: The technical problem is identical to that described for the ’210 Patent, from which this patent is a divisional. The goal is an effective formaldehyde-free binder for materials like mineral wool insulation. (’089 Patent, col. 1:24-33).
  • The Patented Solution: This patent claims the finished product resulting from the use of the binder technology. The invention is a material comprising non-woven mineral fibers held together by a cured, formaldehyde-free, melanoidin-containing binder. A key characteristic of the patented material is the presence of specific residual ionic species (e.g., sulfates) derived from the inorganic salt used in the binder, which can be measured in the final product. (’089 Patent, claim 1).
  • Technical Importance: The patent claims the physical embodiment of the insulation product, providing a different scope of protection than the method and solution claims of the parent ’210 Patent.

Key Claims at a Glance

  • The complaint asserts "one or more claims" without specifying them (Compl. ¶65). Independent claim 1 is representative.
  • Independent Claim 1 requires:
    • A finished material comprising a collection of non-woven mineral fibers.
    • The fibers are maintained together by a cured, substantially formaldehyde free melanoidin containing binder.
    • The finished material comprises residual levels of more than 500 mg of ionic species (e.g., sulfates) per kg of finished material.
    • These residual levels are assessed in a leach test.

U.S. Patent No. D631,670 - "Insulation Material"

  • Patent Identification: D631670, "Insulation Material," issued February 1, 2011.
  • Technology Synopsis: This is a design patent claiming the ornamental appearance of an insulation material. The design consists of a mottled, fibrous, non-uniform surface texture.
  • Asserted Claims: The single claim for the ornamental design as shown in the patent's figure.
  • Accused Features: The complaint alleges that the JM Bio-based Binder Insulation has "substantially the same ornamental design as claimed in the ’670 Patent" (Compl. ¶71).

U.S. Patent No. 9,039,827 - "Binders"

  • Patent Identification: 9,039,827, "Binders," issued May 26, 2015.
  • Technology Synopsis: This patent claims the uncured binder solution itself. The solution consists essentially of a reducing sugar and an acid precursor derived from an inorganic ammonium salt, with a specific ratio between the two components.
  • Asserted Claims: "one or more claims" (Compl. ¶78).
  • Accused Features: The uncured binder solution used by Defendant to manufacture its JM Bio-based Binder Insulation products is alleged to infringe (Compl. ¶¶29-37).

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

  • Patent Identification: 9,040,652, "Binders and Materials Made Therewith," issued May 26, 2015.
  • Technology Synopsis: This patent claims a curable aqueous composition comprising a carbohydrate, a crosslinking agent, and an amine base, as well as the resulting cured binder which includes melanoidins. It is directed at the chemical composition of the binder itself and the products made with it.
  • Asserted Claims: "one or more claims" (Compl. ¶81).
  • Accused Features: The binder composition used in the JM Bio-based Binder Insulation, which the complaint alleges is a "nitrogenous polymer" (Compl. ¶57).

III. The Accused Instrumentality

Product Identification

  • Defendant's "Formaldehyde Free" and "Bio-based binder" insulation products, collectively referred to as "JM Bio-based Binder Insulation" (Compl. ¶20). Specific product lines include "EasyFit," "RANGE-GLAS EQ," and "ComfortTherm," among others (Compl. ¶21).

Functionality and Market Context

  • The accused products are fiberglass insulation materials where the glass fibers are bonded by a bio-based, formaldehyde-free binder (Compl. ¶¶23-24). The complaint alleges this binder is made using a Maillard reaction between reducing sugars (dextrose) and amines (from an ammonium salt, specifically ammonium sulphate), resulting in a binder containing melanoidins and giving the final product an "earthy brown color" (Compl. ¶¶27, 29, 30, 32, 35). A photograph included in an exhibit to the complaint shows a batt of insulation with a dark brown, fibrous appearance (Compl. ¶22, referencing Ex. 4). The complaint also alleges that this binder liberates less than 5 ppm, and even less than 1 ppm, of formaldehyde during curing (Compl. ¶¶41-42).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,114,210 Infringement Allegations

Claim Element (from Independent Claim 10, referencing Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A substantially formaldehyde free binder solution consisting essentially of a solution obtainable by dissolving a reducing sugar... Defendant's binder is made from a solution including dextrose, which is a reducing sugar. ¶32 col. 4:30-34
...and at least 2.5% by dry weight with respect to the reducing sugar of a material selected from the group consisting of ammonium sulphate salts...in water. Defendant's binder is made from a solution that includes ammonium sulphate salt dissolved in water. ¶¶35, 36 col. 15:5-9
[method step of] treating a collection of loose matter with the substantially formaldehyde free binder solution... Defendant's manufacturing method includes spraying the binder solution onto fiberglass. ¶37 col. 6:12-21
[method step of] curing the binder by applying a source of energy. Defendant's manufacturing method includes heating the combination of fiberglass and binder in an oven. ¶¶37, 51 col. 6:22-34
  • Identified Points of Contention:
    • Legal Question: The primary point of contention for the ’210 Patent is that asserted independent claim 10 was cancelled during an inter partes review proceeding that concluded after the complaint was filed. This raises the question of whether Count I of the complaint remains viable.
    • Technical Question: The complaint alleges the presence of ammonium sulphate in the accused binder solution but does not allege facts supporting the claimed quantitative limitation of "at least 2.5% by dry weight with respect to the reducing sugar." The viability of the infringement allegation may depend on evidence establishing this specific ratio.

U.S. Patent No. 8,940,089 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 cured, "formaldehyde-free" binder that is alleged to contain melanoidins. ¶¶23, 30, 40 col. 14:35-38
...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... The accused product is alleged to include residual levels of more than 500 milligrams of sulfates per kilogram of finished material. ¶44 col. 14:38-44
...in which the residual levels are assessed in a leach test. The complaint does not provide specific facts showing that the alleged residual levels of sulfates are those that would be assessed in a leach test. ¶44 col. 14:43-44
  • Identified Points of Contention:
    • Technical Question: Claim 1 requires that the finished product contain "more than 500 mg/kg" of specific ionic species, and specifies that these levels are those "assessed in a leach test." The complaint makes a conclusory allegation tracking this language but presents no facts regarding any leach test methodology or results. The dispute may turn on whether Plaintiff can provide evidence that the accused products meet the quantitative limitation as measured by the specific method required by the claim.

V. Key Claim Terms for Construction

  • The Term: "consisting essentially of" (’210 Patent, claim 1)

    • Context and Importance: This transitional phrase is a legal term of art that closes the claim to any additional elements that would "materially affect the basic and novel characteristic(s)" of the invention. Defendant may argue that its "bio-based" binder contains other components beyond a reducing sugar and an inorganic ammonium salt that materially alter its properties, thereby designing around the claim. Practitioners may focus on this term because its interpretation could either narrow the claim to the core two components or broaden it to encompass formulations with other non-material additives.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests that certain additives, such as silanes, mineral oils, and silicones, may be included in the binder solution, which could support an argument that their presence does not materially affect the invention's characteristics (’210 Patent, col. 5:35-44).
      • Evidence for a Narrower Interpretation: The patent explicitly defines the phrase, stating it is "intended to limit the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic(s) of the claimed invention" (’210 Patent, col. 4:55-59). This language could be used to argue for a narrow interpretation focused solely on the recited components.

  • The Term: "substantially formaldehyde free" (’210 Patent, claim 1; ’089 Patent, claim 1)

    • Context and Importance: The patent provides an explicit quantitative definition for this term: "they liberate less than 5 ppm formaldehyde as a result of drying and/or curing" (’210 Patent, col. 4:46-50). The infringement analysis will likely depend on factual evidence and expert testimony regarding the test methods and results for formaldehyde liberation from the accused products.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The use of "substantially" may suggest some minor deviation from the 5 ppm threshold is permissible.
      • Evidence for a Narrower Interpretation: The patent provides a clear numerical definition (less than 5 ppm) and an even stricter preferred definition for "formaldehyde free" (less than 1 ppm), suggesting the patentee intended to be bound by these specific, measurable limits (’210 Patent, col. 4:46-54). The complaint alleges the accused products meet both of these thresholds (Compl. ¶¶41-42).

VI. Other Allegations

  • Willful Infringement: The complaint alleges willful infringement of the ’210, ’089, and ’670 Patents (Compl. ¶¶62, 68, 75). The allegations are based on pre-suit knowledge, asserting that Defendant monitored Plaintiff's patent portfolio and that Defendant's own in-house counsel referenced the invention of the ’210 Patent in a patent application filed on behalf of Defendant before the lawsuit commenced (Compl. ¶¶52-54).

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

  • A central procedural issue will be the viability of Count I: given that asserted independent claim 10 of the ’210 Patent was cancelled in an inter partes review after the complaint was filed, the court will need to determine if this count can proceed.
  • A key evidentiary question will be one of quantitative proof: can the Plaintiff demonstrate through testing and discovery that the accused products meet the specific numerical limitations recited in the claims, such as the weight percentage of the inorganic salt relative to the sugar ('210 Patent) and the quantity of residual sulfates as measured by a leach test ('089 Patent)?
  • The case may also turn on a question of claim scope: how will the court construe the term "consisting essentially of," and will unrecited components within the defendant's "bio-based" binder be deemed to materially alter the binder's characteristics, thereby placing the accused products outside the scope of the claims?