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 Defendant is a Massachusetts corporation with its principal place of business and residence within the district, and a substantial part of the alleged infringing events occurred there.
• Core Dispute: Plaintiffs allege that Defendant’s line of ZycoTherm warm mix asphalt additives, and the paving compositions and methods using them, infringe six U.S. patents related to warm mix and "hot mix/warm laid" asphalt technologies.
• Technical Context: The patents relate to chemical additives that allow asphalt paving compositions to be produced, transported, and compacted at significantly lower temperatures than conventional "hot mix" asphalt, offering benefits such as reduced energy consumption, lower emissions, and an extended paving season.
• Key Procedural History: The complaint notes that two of the asserted patents (the ’725 and ’466 patents) survived ex parte reexamination proceedings at the USPTO, which affirmed their patentability. It also details prior litigation against other parties (Akzo and ArrMaz) that resulted in those parties taking royalty-bearing sublicenses. Plaintiffs also reference a prior lawsuit against the manufacturer of the accused products (Zydex) and another distributor, which allegedly put the current Defendant on notice of the patents and infringement allegations. A license agreement originally granted to a third party (Ingevity) was amended to be non-exclusive, which the complaint alleges provides Plaintiffs with the necessary standing to bring this suit.

Case Timeline

Date	Event
2007-09-07	Earliest Priority Date for ’725, ’466, ’652, and ’646 Patents
2008-01-01	A.L.M. and Ergon grant license to MeadWestvaco Corporation (MWV)
2008-02-22	Earliest Priority Date for ’581 and ’446 Patents
2010-10-19	’725 Patent Issues
2011-07-19	’466 Patent Issues
2013-04-01	USPTO issues Reexamination Certificate US 7,815,725 C1 for the ’725 Patent
2014-05-27	’581 Patent Issues
2015-02-19	USPTO issues Reexamination Certificate US 7,781,466 C1 for the ’466 Patent
2015-03-03	USPTO issues Reexamination Certificate US 7,815,725 C2 for the ’725 Patent
2015-11-03	’446 Patent Issues
2016-07-19	’652 Patent Issues
2019-02-26	’646 Patent Issues
2025-01-13	License agreement with Ingevity is 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"

The Invention Explained

• Problem Addressed: The complaint describes prior art methods for creating "warm mix" asphalt as having significant drawbacks, such as requiring water-based foaming or high concentrations of wax-based additives (Compl. ¶24). These methods allegedly had limited use in certain climates, required costly modifications to asphalt plants, and could undesirably alter the properties of the asphalt binder itself (Compl. ¶24).
• The Patented Solution: The invention is 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 additive is described as reducing the required mixing and compaction temperatures, allowing the composition to be produced at or below 280°F and compacted at or below 260°F, without the need for foaming or significant plant modifications (’646 Patent, Abstract; Compl. ¶25). The patent specification emphasizes that the additive provides a "lubricating effect," which is distinct from merely reducing viscosity (’646 Patent, col. 5:28-6:1).
• Technical Importance: This technology claims to enable reduced energy consumption, lower emissions, an extended paving season, and improved pavement life compared to conventional hot mix asphalt processes (Compl. ¶¶2, 25).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶103).
• The essential elements of independent claim 1 are:
  • An asphalt paving composition comprising a functionally dry, essentially water-free, non-foamed asphalt binder.
  • The binder contains a lubricating antistrip additive.
  • The binder and additive are mixed with uncompacted aggregate.
  • The lubricating additive reduces the mixing and compaction temperature such that the composition is produced at or below 280°F and can be compacted at or below 260°F.
  • 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"

The Invention Explained

• Problem Addressed: The patent addresses the need for asphalt binder compositions that can be mixed with aggregate and compacted at temperatures substantially lower than conventional methods, thereby reducing energy and emissions (Compl. ¶2; ’725 Patent, col. 1:21-2:51).
• The Patented Solution: The invention is a "warm mix asphalt paving composition" comprising a "functionally dry, essentially water-free, non-foamed asphalt binder" that contains a "lubricating additive" (’725 Patent, Abstract). The additive allows the composition to be produced at a temperature at least 30°F lower than a comparable composition without the additive (’725 Patent, claim 1). The specification details how different additives provide a "visco-lubricity" characteristic that enables easier rotation and coating at lower temperatures, a phenomenon measured by reduced normal force in rheological testing (’725 Patent, col. 5:32-49).
• Technical Importance: The technology allows for improved ease of use and significant temperature reduction in asphalt paving, leading to cost savings and an extended paving season (Compl. ¶25).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 25 (Compl. ¶¶125, 127).
• The essential elements of independent claim 1 are:
  • A warm mix asphalt paving composition comprising a functionally dry, essentially water-free, non-foamed asphalt binder.
  • The binder contains a lubricating additive (comprising a lubricating surfactant, non-surfactant, acid, or combination thereof).
  • The binder and additive are mixed with uncompacted aggregate.
  • The composition is produced at a temperature at least 30°F lower than a comparison temperature needed for a composition without the additive.
  • If the additive comprises a lubricating wax, the wax is 0.5 weight percent or less of the asphalt binder weight.
• The essential elements of independent claim 25 are substantially similar but recite a specific Markush 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 omit the conditional limitation on wax content.
• The complaint also asserts dependent claims 20 and 44, which add a temperature limitation of 280°F or lower (Compl. ¶¶126, 128).

U.S. Patent No. 9,394,652 - "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives"

• Technology Synopsis: This patent, a continuation of earlier asserted patents, claims a paving process using a lubricating additive in a warm mix asphalt binder composition that also includes recycled asphalt pavement (RAP) (Compl. ¶¶22, 140). The process involves mixing at a temperature lower than a comparison material and then applying and compacting the mix to form a paved surface (Compl. ¶140).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶140).
• Accused Features: The complaint alleges that Defendant's ZycoTherm products are used in paving processes with aggregate and RAP in a manner that infringes the claimed process steps, including the temperature limitations (Compl. ¶¶148, 153, 154).

U.S. Patent No. 7,981,466 - "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives"

• Technology Synopsis: A divisional of the ’725 Patent, this patent claims methods of making and using warm mix paving compositions (Compl. ¶21). The claimed methods involve mixing a non-foamed asphalt binder with a lubricating additive and aggregate at a temperature of 280°F or lower, and compacting the resulting material at 260°F or lower (Compl. ¶¶158-161).
• Asserted Claims: The complaint asserts independent claims 1, 12, 17, and 20 (Compl. ¶¶158-161).
• Accused Features: Defendant's sale and promotion of ZycoTherm for use in making warm mix asphalt are alleged to meet the claimed method steps regarding mixing, temperature reduction, application, and compaction (Compl. ¶¶163-165).

U.S. Patent No. 8,734,581 - "Processing Bituminous Mixtures for Paving at Reduced Temperatures"

• Technology Synopsis: This patent claims a "hot mix/warm laid" process where a bituminous mix is formed by mixing binder, aggregate, and a lubricating additive at a temperature greater than 160°C (hot mix) (Compl. ¶38). The resulting mix is then compacted at a second, lower temperature of less than 130°C (warm laid), allowing for longer haul times and working in colder climates (Compl. ¶¶38, 42).
• Asserted Claims: The complaint asserts independent claims 1 and 16 (Compl. ¶¶171, 172).
• Accused Features: The complaint alleges that ZycoTherm products are used in processes that involve mixing above 160°C and compacting below 130°C, thereby infringing the claimed "hot mix/warm laid" methods (Compl. ¶¶177, 187).

U.S. Patent No. 9,175,446 - "Processing Bituminous Mixtures for Paving at Reduced Temperatures"

• Technology Synopsis: Similar to the ’581 Patent, this patent claims a "hot mix/warm laid" process that adds a hauling step between the hot mixing (>160°C) and warm compaction (<130°C) steps (Compl. ¶41). This process is designed to accommodate longer transport times between the asphalt plant and the paving site (Compl. ¶42).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶184).
• Accused Features: The use of ZycoTherm products in processes that involve hot mixing, hauling, and warm compaction is alleged to infringe the claimed method (Compl. ¶¶187-189).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are the "ZycoTherm line of products," which include at least ZycoTherm, ZycoTherm SP, ZycoTherm SP2, Zycotherm EZ, and Zycotherm LS (collectively "ZycoTherm additives") (Compl. ¶64). The infringement allegations also extend to the warm mix asphalt compositions made with these additives and the methods of producing and using such compositions (Compl. ¶¶104, 129).

Functionality and Market Context

• The ZycoTherm additives are marketed and sold by Defendant ASMG as chemical additives that enable "warm mix asphalt" (WMA) production (Compl. ¶¶82, 85). The complaint alleges, based on promotional materials from the manufacturer (Zydex) and Defendant, that these additives allow for "lower production and compaction temperatures," with reductions of up to 60°F (30°C) (Compl. ¶¶66, 85). Defendant's brochure describes ZycoTherm as an "organosilane based liquid anti-strip (LAS) additive which provides the additional benefit of traditional warm mix asphalt" (Compl. ¶85). The complaint includes a promotional graphic from Zydex showing the "Compaction Efficiency" of asphalt with and without ZycoTherm, demonstrating that a higher density is achieved with fewer gyrations at lower temperatures when using the additive (Compl. p. 13). Defendant is alleged to be the largest U.S. distributor of the ZycoTherm products, which are approved for use by numerous state Departments of Transportation (DOTs) (Compl. ¶¶78, 90).

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	Defendant sells ZycoTherm products, which are advertised as lubricating antistrip additives, for use in a non-foamed asphalt binder.	¶¶105, 107	col. 1:17-26
mixed with uncompacted aggregate to provide a warm mix paving composition...	Defendant provides instructions and the products are used to mix the binder and additive with uncompacted aggregate.	¶107	col. 1:19-21
wherein the lubricating antistrip additive reduces the mixing and compaction temperature of the warm mix paving composition such that the paving composition is produced at and is at a temperature of 280°F. or lower and can be compacted at a temperature of 260°F. or lower	The complaint cites DOT approvals in Arizona and Massachusetts, allegedly sought by Defendant, which require warm mix asphalt using the additives to be produced and compacted within these temperature ranges.	¶¶110-112, 116, 118	col. 1:26-30
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 on information and belief, based on material safety data sheets and company statements, that the ZycoTherm additives do not contain wax.	¶108	col. 1:30-33

’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	Defendant's products are used in a non-foamed asphalt binder.	¶132	col. 2:52-60
containing ii) lubricating additive comprising lubricating surfactant, lubricating non-surfactant, lubricating acid or combination thereof	The complaint alleges ZycoTherm is a "surfactant-based silane additive" and thus a "lubricating surfactant."	¶131	col. 4:5-24
mixed with iii) uncompacted aggregate to provide aggregate coated with binder and lubricating additive	The products are mixed with uncompacted aggregate per instructions.	¶132	col. 1:35-37
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 needed to produce a comparison paving composition... without the lubricating additive	Marketing materials from Defendant and the manufacturer allegedly advertise temperature reductions of up to 60°F, which meets the "at least 30°F lower" limitation.	¶¶135, 136, 149	col. 1:37-43
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 on information and belief that the ZycoTherm additives do not contain wax.	¶133	col. 1:43-46

Identified Points of Contention

• Scope Questions: The infringement theory for the ’725 Patent hinges on whether the accused "organosilane based" ZycoTherm additives fall within the scope of the claimed term "lubricating surfactant." The complaint presents extrinsic evidence, such as academic papers and alleged statements on the manufacturer's website, to support this characterization (Compl. ¶131). A central dispute may be whether the chemical nature and function of an organosilane qualifies as a "lubricating surfactant" as that term is understood from the patent's specification.
• Technical Questions: A key evidentiary question will be whether the use of ZycoTherm additives in the field consistently results in asphalt being produced and compacted at the specific temperature thresholds recited in the claims (e.g., "at or below 280°F" and "at or below 260°F" for the ’646 Patent). The complaint builds a case based on marketing materials and the requirements for state DOT approvals, inferring that such use must have occurred to gain approval (Compl. ¶¶112, 120). The case may require direct evidence from specific paving projects to confirm that these temperature limitations were actually met in practice.

V. Key Claim Terms for Construction

The Term: "lubricating additive" / "lubricating surfactant"

• Context and Importance: These terms are central to the patents' distinction over prior art, which allegedly relied on different mechanisms like viscosity reduction or foaming (Compl. ¶24). The patentability of the claims, and the infringement analysis, depends on whether the accused additives function as "lubricating" agents or "surfactants" within the meaning of the patents. Practitioners may focus on this term because the accused product's "organosilane" chemistry is not explicitly listed as an example in the patent specifications.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification of the parent ’725 Patent defines the term by its function: providing a "visco-lubricity" characteristic that allows for easier compaction at lower temperatures, which is measured by a reduction in normal force during rheological testing, even if viscosity is not substantially reduced (’725 Patent, col. 5:32-6:1). This functional definition could support including any chemical that produces this lubricating effect, regardless of its specific classification.
  • Evidence for a Narrower Interpretation: The specification lists specific classes of chemical compounds that can serve as the "lubricating additive," such as anionic, cationic, ampholytic, and non-ionic surface agents, as well as various waxes and acids (’725 Patent, col. 4:5-6:3). A defendant may argue that because organosilanes are not listed, they were not contemplated by the inventors and fall outside the scope of the claims.

The Term: "functionally dry, essentially water-free, non-foamed asphalt binder"

• Context and Importance: This limitation distinguishes the claimed invention from prior art warm mix technologies that required the deliberate injection of water to create foam, which in turn lowered the asphalt's viscosity (Compl. ¶24). The infringement case depends on showing the accused process does not rely on such foaming.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification of the ’725 Patent clarifies that the term is not absolute, meaning it "contains less water or moisture than is routinely used in conventional or known warm mixes" and does not mean "completely free of water" (’725 Patent, col. 2:52-60). It acknowledges that aggregate naturally contains moisture. This suggests the term is intended to exclude deliberate water-foaming processes, not incidental moisture.
  • Evidence for a Narrower Interpretation: A defendant might focus on the "essentially water-free" language to argue for a near-zero water content standard. The specification provides numerical context, stating that in many instances the water content is "less than about 1 wt. %" and in certain embodiments "less than 0.5 wt. %" (’725 Patent, col. 3:33-36). This could be used to argue for a specific, low quantitative threshold.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement theory is based on allegations that Defendant actively encourages infringement by distributing the ZycoTherm additives along with marketing materials, technical brochures, and instructions that direct end-users to mix and apply the products at the low temperatures claimed in the patents (Compl. ¶¶122, 205). The contributory infringement theory alleges the additives are a material part of the patented compositions, are not a staple article of commerce suitable for substantial non-infringing use, and that Defendant knows they are especially made for this infringing purpose (Compl. ¶204).
• Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the patents. The complaint claims that Defendant was aware of a prior infringement lawsuit Plaintiffs filed against Zydex, the manufacturer of the ZycoTherm products, and another distributor (Compl. ¶¶194-197). It further alleges that Zydex specifically informed Defendant of the lawsuit and agreed to provide indemnification for any infringement, suggesting a deliberate disregard of Plaintiffs' patent rights (Compl. ¶198).

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

• A core issue will be one of chemical and functional scope: Does the "organosilane" chemistry of the accused ZycoTherm products function as a "lubricating additive" or "lubricating surfactant" as defined by the patents' specifications, particularly through the "visco-lubricity" and reduced normal force framework described in the intrinsic evidence?
• A central evidentiary question will be one of performance in practice: Beyond marketing claims and the requirements for DOT approvals, what direct evidence will demonstrate that the accused additives, when used by Defendant's customers in actual paving projects, consistently cause asphalt to be produced and compacted within the specific temperature ranges (e.g., produced "at or below 280°F") mandated by the asserted claims?
• A key question for damages will be one of intent and knowledge: The complaint makes strong allegations of pre-suit knowledge based on a prior lawsuit and an alleged indemnification agreement. A court will have to determine whether this conduct rises to the level of willfulness, which could expose the Defendant to claims for enhanced damages.