DCT
1:22-cv-02636
G W Aru LLC v. W R Grace & Co Conn
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: G. W. Aru, LLC (Colorado) and Cochise Technology, LLC (Colorado)
- Defendant: W. R. Grace & Co.-Conn. (Connecticut)
- Plaintiff’s Counsel: Nixon Peabody LLP
- Case Identification: 1:22-cv-02636, D. Md., 01/12/2023
- Venue Allegations: Venue is alleged to be proper in the District of Maryland based on Defendant's corporate headquarters, substantial facilities, and acts of alleged infringement occurring within the district.
- Core Dispute: Plaintiffs allege that Defendant’s optimized combustion promoter products for petroleum refining infringe a patent directed to catalyst particles with an "eggshell" distribution of noble metals.
- Technical Context: The technology concerns catalysts used in Fluid Catalytic Cracking (FCC), a fundamental process in most modern petroleum refineries for converting crude oil into gasoline and other valuable products.
- Key Procedural History: The complaint alleges a history of business collaboration during which Plaintiffs confidentially disclosed their patent-pending technology to Defendant. It further notes a prior, unrelated lawsuit filed against Plaintiff Aru, which Defendant allegedly used as a pretext to terminate their joint marketing agreement before launching the accused "copycat" products. This filing is a First Amended Complaint, which adds a count for false advertising.
Case Timeline
| Date | Event |
|---|---|
| 2018-04-02 | '864 Patent Priority Date |
| 2020-12-04 | Approximate launch date of Defendant's accused product |
| 2022-01-18 | '864 Patent Issue Date |
| 2023-01-12 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,224,864 - CO to CO₂ combustion promoter, issued January 18, 2022
The Invention Explained
- Problem Addressed: The patent's background describes a disadvantage of prior art CO to CO₂ combustion promoters used in petroleum refining: they required "relatively large amounts of noble metal" to achieve the desired effect, which was costly (Compl. ¶¶ 25-27; ’864 Patent, col. 2:13-20). The prevailing industry wisdom was that these expensive metals needed to be distributed homogeneously throughout the catalyst particle for the promoter to be effective (Compl. ¶28).
- The Patented Solution: The invention proposes a more efficient catalyst particle where the noble metal is concentrated in an "eggshell" distribution—a higher concentration is present in the outer region of the particle compared to its center (’864 Patent, Abstract). This design is based on the insight that the CO oxidation reaction is "diffusion limited," meaning it occurs almost instantaneously at the particle's surface, so any noble metal in the core is underutilized (’864 Patent, col. 3:6-13). The complaint reproduces Figure 2 of the patent, which illustrates this core concept of an outer shell containing the active material (Compl. ¶41).
- Technical Importance: This "eggshell" configuration allows the promoter to function effectively while using substantially less noble metal, thereby reducing costs and potentially lowering undesirable NOx emissions (Compl. ¶¶ 32-33).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶100).
- The essential elements of independent claim 1 are:
- A CO to CO₂ combustion promoter comprising microsphere sized porous particles, each particle having a diameter of less than 1 mm.
- The particles independently comprise silica, alumina, or mixtures thereof.
- The particles also comprise one or more Group VIII noble metals distributed as an "eggshell" where a higher concentration of the metal is present in the outer region of the particle compared to the concentration in the center of the particle.
- The complaint notes that its allegations are for notice pleading purposes and does not limit the infringement theories or asserted claims, suggesting a reservation of rights to assert other claims (Compl. ¶99).
III. The Accused Instrumentality
Product Identification
The accused products are Defendant's "optimized versions of its palladium- and platinum-based CO to CO₂ combustion promoters," including products marketed as "Optimized CP®P" (Compl. ¶¶ 98, 101). The complaint characterizes these as "copycat products" launched after Plaintiffs disclosed their technology to Defendant (Compl. ¶72).
Functionality and Market Context
The accused products are catalysts used in FCC processes within petroleum refineries (Compl. ¶101). The complaint alleges that Defendant launched these products to compete with Plaintiffs' technology, which had been gaining market share (Compl. ¶¶ 64, 96). Plaintiffs allege that Defendant's marketing materials for the accused products claim the same benefits as the patented invention, such as providing "the same CO promotion activity at a lower metals level, with an additional benefit of lower NOx emissions" (Compl. ¶94, citing Ex. C). A key visual exhibit in the complaint is a screenshot from the Internet Archive of Defendant's blog, which Plaintiffs allege contained an article promoting the infringing technology before it was later removed. (Compl. ¶113).
IV. Analysis of Infringement Allegations
'864 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A CO to CO₂ combustion promoter... | Defendant's accused products are marketed and sold as "CO to CO₂ combustion promoters." | ¶101 | col. 1:1 |
| ...comprising microsphere sized porous particles, each microsphere sized porous particle having a diameter of less than 1 mm, and independently comprising: silica, alumina, or mixtures thereof... | Defendant's promoters are allegedly made of porous support particles comprising alumina. Plaintiffs cite Defendant's separate patent (Ex. H) as admitting that such particles typically have an average size of 20-200 µm, which is less than 1 mm. | ¶¶102, 103 | col. 11:47-50 |
| ...and one or more Group VIII noble metals distributed in the particle as an eggshell such that a higher concentration of the one or more Group VIII noble metals is present in the outer region ... as compared to the concentration ... in the centre of the ... particle. | Defendant's own marketing announcement allegedly states that its process "naturally leads to a particle where the majority of the metals are located at the surface" and that its "advanced alumina ... results in an even higher proportion of the metals residing on the outer surface of the particle." A key complaint visual, a reproduction of Figure 2 from the patent, illustrates this precise configuration. | ¶104, ¶41 | col. 6:27-32 |
Identified Points of Contention
- Technical Questions: The central factual dispute will likely be whether Defendant's accused products actually have the claimed "eggshell" distribution. The complaint presents conflicting accounts: it cites Defendant's marketing materials as evidence for infringement (Compl. ¶104) but also alleges that in a private meeting, Defendant's President stated that its product had been tested and "did not have an eggshell distribution of noble metal and thus believed it did not infringe" (Compl. ¶116). This sets up a direct conflict that will turn on physical evidence and expert testing.
- Scope Questions: The interpretation of what constitutes an "eggshell" distribution will be critical. The court will need to determine how much "higher" the concentration of noble metal must be in the "outer region" compared to the "centre" to meet the claim limitation.
V. Key Claim Terms for Construction
The Term: "eggshell"
- Context and Importance: This term is the lynchpin of the invention, defining the non-uniform distribution of the catalyst. Its construction is critical because Defendant has allegedly denied that its products embody this structure (Compl. ¶116), making the precise definition determinative of infringement.
- Intrinsic Evidence for a Broader Interpretation: The specification provides a functional definition: a distribution where "a higher content of noble metal is present in the outer region of the particle as compared to the content of noble metal in the center" (’864 Patent, col. 6:29-32). This could support an interpretation where any statistically significant, non-uniform distribution favoring the surface meets the limitation.
- Intrinsic Evidence for a Narrower Interpretation: The patent also describes an embodiment with "a first inner region not comprising the one or more noble metals or a very low concentration" and a "second outer region, referred to herein as an 'eggshell'" (’864 Patent, col. 6:46-50). This language, along with the clear depiction of a distinct outer ring in Figure 2, could support a narrower definition requiring a near-zero concentration in the core.
The Term: "higher concentration ... in the outer region ... as compared to the concentration ... in the centre"
- Context and Importance: This phrase quantifies the "eggshell" limitation. Practitioners may focus on this term because its construction will dictate the methodology for expert testing and the threshold for proving infringement.
- Intrinsic Evidence for a Broader Interpretation: The claim language does not require a specific ratio or gradient. The specification suggests that if surface analysis shows a concentration merely "2 times as high as the bulk concentration," the distribution is considered an eggshell type (’864 Patent, col. 8:40-45), implying a relatively low threshold.
- Intrinsic Evidence for a Narrower Interpretation: A defendant could argue that the terms "outer region" and "centre" must be defined in a specific way that minimizes the measured difference, or that "higher" implies a material or substantial difference, not just any detectable variance.
VI. Other Allegations
Willful Infringement
The complaint alleges that Defendant's infringement has been willful. The basis for this allegation is Defendant's alleged pre-suit knowledge of the patent, stemming from an email sent on December 28, 2021, by Plaintiff's founder to a Grace manager. This email allegedly provided notice of the allowed patent application, its patent number, and its anticipated issue date of January 18, 2022 (Compl. ¶39). The willfulness claim is further supported by allegations that Defendant copied the technology after receiving confidential disclosures during partnership discussions that predated the patent's issuance (Compl. ¶¶ 58-63, 106).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of physical composition: Does Defendant's "Optimized CP-P" promoter, when subjected to expert analysis, actually exhibit the "eggshell" distribution of noble metals required by Claim 1 of the '864 patent?
- A key legal issue will be one of admission versus puffery: What is the legal effect of Defendant's marketing statements that allegedly describe an infringing product structure? The court will have to determine whether these statements constitute a binding admission of infringement or, if the statements are proven false (as Defendant allegedly claimed in a private meeting), they instead form the basis for Plaintiffs' alternative claim of false advertising.
- A core question of claim construction will be one of definitional scope: How will the court define the "eggshell" structure and the quantitative requirement that the noble metal concentration be "higher" in the outer region than the center? The resolution of this issue will establish the technical benchmark for the infringement analysis.