DCT
1:25-cv-10458
ALM Holding Co v. All States Materials Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: A.L.M. Holding Company (Wisconsin) and Ergon Asphalt & Emulsions, Inc. (Mississippi)
- Defendant: All States Materials Group Inc. (Massachusetts)
- Plaintiff’s Counsel: Husch Blackwell LLP
- Case Identification: 1:25-cv-10458, D. Mass., 02/25/2025
- Venue Allegations: Venue is alleged to be proper as the Defendant is a Massachusetts corporation with its principal place of business in the district, and because a substantial part of the events giving rise to the claims allegedly occurred in the district.
- Core Dispute: Plaintiffs allege that Defendant’s sale and distribution of ZycoTherm-brand asphalt additives, and its use of those additives in paving compositions, infringes six patents related to "warm mix" and "hot mix/warm laid" asphalt technologies.
- Technical Context: The technology involves chemical additives that allow asphalt to be produced and/or compacted at significantly lower temperatures than conventional "hot mix" asphalt, which provides benefits such as reduced energy consumption, lower emissions, and an extended paving season.
- Key Procedural History: The complaint notes that two of the patents-in-suit (the ’725 and ’466 Patents) were previously litigated against other parties, resulting in a 2014 claim construction order and subsequent licensing agreements. The complaint also highlights that the ’725 and ’466 Patents survived ex parte reexamination proceedings at the USPTO between 2013 and 2015, which may inform the court's analysis of their validity.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-07 | Earliest Priority Date for ’646, ’725, ’652, ’466 Patents |
| 2008-01-01 | Plaintiffs grant royalty-bearing license to MeadWestvaco Corp. |
| 2008-02-22 | Earliest Priority Date for ’581, ’446 Patents |
| 2010-10-19 | U.S. Patent No. 7,815,725 Issues |
| 2011-07-19 | U.S. Patent No. 7,981,466 Issues |
| 2013-04-01 | Reexamination Certificate C1 for ’725 Patent Issues |
| 2014-05-27 | U.S. Patent No. 8,734,581 Issues |
| 2015-02-19 | Reexamination Certificate C1 for ’466 Patent Issues |
| 2015-03-03 | Reexamination Certificate C2 for ’725 Patent Issues |
| 2015-11-03 | U.S. Patent No. 9,175,446 Issues |
| 2016-07-19 | U.S. Patent No. 9,394,652 Issues |
| 2019-02-26 | U.S. Patent No. 10,214,646 Issues |
| 2025-01-13 | License agreement with Ingevity amended |
| 2025-02-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,214,646 - “Warm Mix Paving Composition w/ Lubricating Antistrip Additive”
Issued February 26, 2019
The Invention Explained
- Problem Addressed: Prior methods of creating "warm mix" asphalt compositions required foaming with water or adding viscosity-reducing agents like wax, which could require costly modifications to asphalt plants and undesirably alter the properties of the asphalt binder (Compl. ¶24).
- The Patented Solution: The invention claims an asphalt paving composition that uses a "lubricating antistrip additive" within a "functionally dry, essentially water-free, non-foamed asphalt binder" (’646 Patent, Abstract). This approach is described as allowing the asphalt to be mixed with aggregate and compacted at significantly lower temperatures (e.g., produced at or below 280°F and compacted at or below 260°F) without the need for water-based foaming systems (’646 Patent, Abstract; col. 2:42-56).
- Technical Importance: This chemical additive-based approach is alleged to provide a more efficient and effective technology for warm mix asphalt, enabling reduced energy use and an extended paving season (Compl. ¶¶25-26).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶103).
- Essential elements of claim 1 include:
- An asphalt paving composition comprising a functionally dry, essentially water-free, non-foamed asphalt binder containing a lubricating antistrip additive mixed with uncompacted aggregate.
- The lubricating antistrip additive reduces the mixing and compaction temperature of the composition.
- The composition is produced at a temperature of 280°F or lower and can be compacted at a temperature of 260°F or lower.
- If the composition includes a lubricating wax, the wax is 0.5 weight percent or less of the asphalt binder weight.
- The complaint reserves the right to assert additional claims (Compl. ¶203).
U.S. Patent No. 7,815,725 - “Warm Asphalt Binder Compositions Containing Lubricating Agents”
Issued October 19, 2010
The Invention Explained
- Problem Addressed: The patent's background section describes the industry's desire to reduce asphalt paving temperatures to save energy, reduce emissions, and extend the paving season, while noting the limitations of prior art approaches that used wax additives or water-based foaming technologies (’725 Patent, col. 1:15-46).
- The Patented Solution: The patent discloses a "functionally dry" warm mix asphalt composition that includes a "lubricating additive" (such as a surfactant, non-surfactant, or acid) in a non-foamed asphalt binder (’725 Patent, Abstract). This additive is described as providing a lubricating effect that allows the asphalt mix to be produced and compacted at a temperature at least 30°F lower than a comparable mixture without the additive, thereby avoiding the need for foamed asphalt (’725 Patent, Abstract; col. 2:49-56).
- Technical Importance: The technology is presented as a breakthrough that allows for the benefits of lower-temperature paving without the operational complexities and potential performance alterations associated with prior water-foaming or high-wax methods (Compl. ¶¶25-26).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 25, and dependent claims 20 and 44 (Compl. ¶¶125, 127-128).
- Essential elements of independent claim 1 include:
- A warm mix asphalt paving composition comprising a functionally dry, essentially water-free, non-foamed asphalt binder.
- The binder contains a lubricating additive (lubricating surfactant, non-surfactant, acid, or combination thereof) and is mixed with uncompacted aggregate.
- The composition is produced at a temperature at least 30° F. lower than a "comparison temperature" needed to produce a similar composition without the additive.
- If the additive comprises a lubricating wax, the wax is 0.5 weight percent or less of the binder weight.
- Independent claim 25 is similar but recites a specific group for the lubricating additive ("lubricating surfactant, lubricating non-surfactant other than non-surfactant additives based on wax chemistry, lubricating acid or combination thereof") and omits the wax percentage limitation.
U.S. Patent No. 9,394,652 - “Warm Mix Asphalt Binder Compositions Containing Lubricating Additives”
Issued July 19, 2016
- Technology Synopsis: This patent, a continuation in the same family as the ’725 Patent, claims warm mix asphalt paving compositions and processes that specifically incorporate recycled asphalt pavement (RAP) (Compl. ¶22; Compl. ¶140). The technology allows for the benefits of warm mix (lower temperatures) to be combined with the economic and environmental benefits of using recycled materials (Compl. ¶¶153-154).
- Asserted Claims: The complaint asserts independent claim 1 and dependent claims 2 and 5 (Compl. ¶¶140-142).
- Accused Features: The use of ZycoTherm products in paving processes that combine the additive with aggregate and recycled asphalt pavement (Compl. ¶¶152-154).
U.S. Patent No. 7,981,466 - “Warm Mix Asphalt Binder Compositions Containing Lubricating Additives”
Issued July 19, 2011
- Technology Synopsis: As a divisional of the ’725 Patent, this patent claims methods of making bituminous paving, methods of making warm mix paving compositions, and methods of forming a paved surface using a warm mix composition containing a lubricating additive (Compl. ¶21). The claims focus on the process steps of mixing the components at reduced temperatures and compacting the resulting material to form a surface (Compl. ¶¶158-161).
- Asserted Claims: The complaint asserts independent claims 1, 12, 17, and 20 (Compl. ¶¶158-161).
- Accused Features: The actions of Defendant and its contractors in making, selling, and using the ZycoTherm products to produce and apply warm mix asphalt paving compositions (Compl. ¶162).
U.S. Patent No. 8,734,581 - “Processing Bituminous Mixtures for Paving at Reduced Temperatures”
Issued May 27, 2014
- Technology Synopsis: This patent addresses a "hot mix/warm laid" scenario, claiming a process where a bituminous mix is formed at a hot mix temperature (greater than 160°C) but is then compacted at a lower, warm mix temperature (less than 130°C) (Compl. ¶38). This process is useful for extending transportation times or paving in colder conditions where significant heat loss is expected between the plant and the paving site (Compl. ¶42).
- Asserted Claims: The complaint asserts independent claims 1 and 16 (Compl. ¶¶171-172).
- Accused Features: The alleged use of ZycoTherm products to create asphalt mixtures that are produced at temperatures above 160°C but laid at temperatures below 130°C (Compl. ¶¶177, 187).
U.S. Patent No. 9,175,446 - “Processing Bituminous Mixtures for Paving at Reduced Temperatures”
Issued November 3, 2015
- Technology Synopsis: Similar to the ’581 Patent, this patent relates to a "hot mix/warm laid" paving process. It explicitly adds the step of "hauling the bituminous mix to a paving site" between the high-temperature mixing step and the lower-temperature compacting step (Compl. ¶41).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶184).
- Accused Features: The full process of mixing asphalt with ZycoTherm at temperatures above 160°C, hauling it to a job site, and compacting it at temperatures below 130°C (Compl. ¶¶188-189).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "ZycoTherm line of products," which are chemical additives for asphalt. The complaint specifically identifies ZycoTherm, ZycoTherm SP, ZycoTherm SP2, Zycotherm EZ, and Zycotherm LS (Compl. ¶64).
Functionality and Market Context
- The ZycoTherm products are advertised and sold by Defendant ASMG as "warm mix additives" that allow asphalt producers to mix and compact paving materials at lower temperatures (Compl. ¶82). Promotional materials cited in the complaint state the products are an "organosilane based liquid anti-strip (LAS) additive which provides the additional benefit of traditional warm mix asphalt (WMA)" (Compl. ¶85). The complaint includes a promotional graph from the manufacturer, Zydex, showing that warm mix asphalt with ZycoTherm at 260°F achieves similar compaction efficiency to hot mix asphalt without the additive at 292°F (Compl. p. 13). The complaint alleges that ASMG is the largest U.S. distributor of these products and that the products have been approved for use as warm mix additives by various state departments of transportation, such as those in Arizona and Massachusetts (Compl. ¶¶78, 94, 118).
IV. Analysis of Infringement Allegations
’646 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An asphalt paving composition comprising functionally dry, essentially water-free, non-foamed asphalt binder containing lubricating antistrip additive... | The ZycoTherm products are allegedly added to a functionally dry, non-foamed asphalt binder and are identified in marketing materials as "a next generation antistrip additive with the additional benefit of warm mix asphalt." | ¶105, ¶107 | col. 2:42-45 |
| wherein the lubricating antistrip additive reduces the mixing and compaction temperature... | Zydex and ASMG promotional materials allegedly state that ZycoTherm enables temperature reductions of up to 60°F (30°C) during mix production and field compaction. | ¶67, ¶85 | col. 13:28-34 |
| such that the paving composition is produced at and is at a temperature of 280°F. or lower... | The complaint alleges that ZycoTherm SP and SP2 are approved for use in Arizona, where "warm mix asphalt" is defined as asphaltic concrete produced within the temperature range of 215 to 275°F. | ¶112 | col. 13:30-32 |
| and can be compacted at a temperature of 260°F. or lower... | The complaint cites Massachusetts DOT approval criteria, which allegedly require that mixtures with an approved additive be capable of compaction at temperatures less than 260°F. It also cites marketing materials stating compaction can be achieved at 210°F. | ¶116, ¶118 | col. 13:32-34 |
| and if the warm mix paving composition also comprises a lubricating wax, then the lubricating wax is 0.5 weight percent or less of the asphalt binder weight. | The complaint alleges, based on material safety data sheets and Zydex's website, that the ZycoTherm additives do not comprise a lubricating wax. | ¶108 | col. 13:34-37 |
Identified Points of Contention
- Scope Questions: A central question may be whether the term "lubricating antistrip additive" as used in the patent reads on the accused ZycoTherm products, which are marketed as "organosilane based liquid anti-strip (LAS)" additives. The complaint's theory connects the "lubricating" function to the observed and advertised reduction in compaction temperatures.
- Technical Questions: The complaint relies heavily on marketing materials and state DOT approval criteria to establish that the accused products meet the specific temperature limitations for production (≤280°F) and compaction (≤260°F). A key factual dispute may be whether these advertised capabilities and approval standards reflect the actual temperatures used in the field by Defendant or its customers.
’725 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A warm mix asphalt paving composition comprising i) functionally dry, essentially water-free, non-foamed asphalt binder... | The complaint alleges the ZycoTherm additives are used with a functionally dry, essentially water-free, non-foamed asphalt binder, citing a Zydex product brochure. | ¶132 | col. 2:38-42 |
| containing ii) lubricating additive comprising lubricating surfactant... | The complaint alleges ZycoTherm is a "lubricating additive" and a "surfactant-based silane additive," citing Zydex test protocols and a technical paper by Hasan et al. | ¶130, ¶131 | col. 3:56-61 |
| wherein the warm mix asphalt paving composition is produced at and is at a warm mix temperature at least 30° F. lower than a comparison temperature... | The complaint alleges that advertised temperature reductions of up to 60°F (30°C), and production temperatures below 275°F, are typically at least 30°F lower than corresponding hot-mix temperatures. | ¶67, ¶135 | col. 2:42-49 |
| and if the lubricating additive comprises a lubricating wax, the wax is 0.5 weight percent or less of the asphalt binder weight. | The complaint alleges, based on material safety data sheets and company marketing, that the ZycoTherm additives do not contain wax. | ¶133 | col. 4:26-34 |
Identified Points of Contention
- Scope Questions: The infringement theory hinges on classifying ZycoTherm as a "lubricating additive" and a "lubricating surfactant." The complaint supports this with extrinsic evidence, but Defendant may argue its products function primarily as adhesion promoters and do not "lubricate" in the manner contemplated by the patent. The prior claim construction from the 2013 litigation will be highly relevant to this dispute (Compl. ¶54).
- Technical Questions: A significant factual question will be establishing the proper "comparison temperature" for a given paving project. Because this is a hypothetical baseline (the temperature needed for the same mix without the additive), its determination will likely require competing expert testimony regarding asphalt production standards and practices.
V. Key Claim Terms for Construction
For the ’646 and ’725 Patents
The Term: "lubricating additive" / "lubricating antistrip additive"
- Context and Importance: This is the central technical feature of the asserted claims. The case will likely turn on whether the accused ZycoTherm products, described by their manufacturer as "antistrip" additives, fall within the scope of this term. Practitioners may focus on this term because the prior litigation involving the ’725 Patent resulted in a court order construing disputed terms, which could have a significant bearing on this case (Compl. ¶54).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications of both patents link the "lubricating" function to the effect of allowing adequate coating and compaction at lower temperatures, rather than a specific chemical mechanism (’725 Patent, col. 2:49-56). The patents also list broad functional classes of chemicals that can serve as the additive, such as surfactants, non-surfactants, and acids (’725 Patent, col. 3:56-61).
- Evidence for a Narrower Interpretation: A defendant might argue that the term "lubricating" implies a specific physical phenomenon, such as a reduction in viscosity, and point to specification language or figures to argue their product works differently. The patents' distinction between "lubricating surfactants" and "lubricating non-surfactants" suggests the terms have technical meaning beyond a mere result (’725 Patent, Claim 1).
For the ’725 Patent
The Term: "comparison temperature"
- Context and Importance: Infringement of the relative temperature limitation ("at least 30° F. lower") is measured against this baseline. Its definition is critical to determining whether a given warm mix process infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim defines the term as the "temperature needed to produce a comparison paving composition containing binder-coated aggregate without the lubricating additive" (’725 Patent, Claim 1). This suggests a straightforward comparison to a conventional hot mix process using the same primary components.
- Evidence for a Narrower Interpretation: The term is defined by a hypothetical condition. A defendant could argue that a true "comparison" would involve optimizing the hypothetical mix in other ways (e.g., different aggregate moisture), which could lower the baseline "comparison temperature" and make it more difficult for the plaintiff to prove a 30°F differential.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement based on Defendant’s marketing materials, brochures, and promotional statements that allegedly encourage and instruct customers to use the ZycoTherm additives in a manner that practices the claimed methods and creates the claimed compositions (Compl. ¶¶122, 205). It alleges contributory infringement on the basis that the ZycoTherm products are a material part of the patented inventions, are not staple articles of commerce suitable for substantial non-infringing use, and are known by Defendant to be especially made for an infringing use (Compl. ¶¶123, 204).
- Willful Infringement: The complaint alleges willfulness based on Defendant’s alleged knowledge of the patents-in-suit. This knowledge is alleged to stem from a prior lawsuit filed by Plaintiffs against Zydex (the manufacturer of ZycoTherm) and another distributor, with the complaint alleging that Zydex informed Defendant of that lawsuit and agreed to provide indemnification (Compl. ¶¶194-198, 207).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "lubricating additive," as construed in light of the patent specification and the history from a prior litigation, be proven to encompass the accused ZycoTherm products, which are marketed as "organosilane based liquid anti-strip" additives? The outcome may depend on whether the function of enabling lower-temperature compaction is sufficient to meet the "lubricating" limitation.
- A key evidentiary question will be one of factual proof of use: can Plaintiffs produce evidence demonstrating that the accused additives were actually used in the field under conditions that meet the specific temperature limitations of the claims (e.g., produced below 280°F for the ’646 Patent, or at least 30°F below a "comparison temperature" for the ’725 Patent)? The analysis will likely focus on data from specific paving projects and the requirements set by state transportation agencies that have approved the products.