DCT
0:10-cv-00215
3M Innovative Properties Company v. Gojo Industries, Inc.
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: 3M Innovative Properties Company and 3M Company (Delaware)
- Defendant: GOJO Industries, Inc. (Ohio)
- Plaintiff’s Counsel: Faegre & Benson LLP
- Case Identification: 0:10-cv-00215, D. Minn., 01/26/2010
- Venue Allegations: Venue is asserted based on Defendant’s alleged continuous and systematic contacts with Minnesota, including offering to sell and selling the accused products within the state.
- Core Dispute: Plaintiff alleges that Defendant’s Purell® Instant Hand Sanitizer Foam infringes a patent related to foamable, non-aerosol alcohol compositions.
- Technical Context: The technology relates to chemical compositions for alcohol-based hand sanitizers that can produce a stable foam without requiring aerosol propellants, which can be costly to manufacture.
- Key Procedural History: The complaint was filed on the same day the patent-in-suit was issued by the U.S. Patent and Trademark Office. This timing suggests the litigation may have been planned in advance of the patent grant. The complaint does not mention any prior litigation, licensing history, or administrative proceedings related to the patent.
Case Timeline
| Date | Event |
|---|---|
| 2005-06-13 | ’990 Patent Priority Date (Application Filing) |
| 2010-01-26 | ’990 Patent Issue Date |
| 2010-01-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,651,990 - "Foamable Alcohol Compositions Comprising Alcohol and a Silicone Surfactant, Systems and Methods of Use"
The Invention Explained
- Problem Addressed: The patent's background section describes the difficulty in creating high-alcohol-content sanitizing foams without using aerosol propellants. Non-aerosol foams were often unstable and would collapse quickly, while alternative stabilizing agents like fluorochemicals raised environmental concerns (ʼ990 Patent, col. 1:15-41).
- The Patented Solution: The invention claims to solve this problem with a three-part composition: (1) a monohydric alcohol for antimicrobial activity, (2) a dimethicone surfactant, and (3) a "builder," which is a polymer that provides stability to the foam created from the low-viscosity liquid composition (ʼ990 Patent, Abstract; col. 5:1-17). This combination is designed to be dispensed as a stable foam from a simple, non-aerosol mechanical pump (ʼ990 Patent, col. 2:62-65).
- Technical Importance: This approach sought to provide the market with an alcohol hand sanitizer that combined the desirable feel and coverage of a foam with the lower manufacturing cost and simplicity of a non-aerosol dispenser (ʼ990 Patent, col. 1:12-25).
Key Claims at a Glance
- The complaint does not specify which claims are asserted but alleges infringement of the patent generally. Independent claim 1 is the foundational composition claim.
- The essential elements of independent claim 1 are:
- A non-aerosol foamable composition.
- Comprising (A) a monohydric alcohol at a concentration of about 35% to 99.5% by weight.
- Comprising (B) a dimethicone surfactant.
- Comprising (C) a polymeric foam builder, selected from a specific list of chemical types, sufficient to create a stable foam that maintains a measurable height for at least 5 seconds.
- Wherein the composition in its pre-foamed state has a viscosity of no greater than about 50 cps at 23° C.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint identifies "foamable, non-aerosol compositions that include alcohol as a disinfecting and/or antimicrobial agent, including, for example, Purell® Instant Hand Sanitizer Foam" (Compl. ¶11).
Functionality and Market Context
- The complaint alleges the accused product is a "foamable, non-aerosol" composition containing alcohol used as a hand sanitizer (Compl. ¶11).
- The complaint does not provide further technical details regarding the specific chemical formulation, viscosity, or foam stability properties of the accused product.
- The complaint makes no specific allegations regarding the product's commercial importance or market position.
IV. Analysis of Infringement Allegations
The complaint makes general allegations of infringement without providing a detailed mapping of accused product features to claim limitations.
’990 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A non-aerosol foamable composition... | The accused products are identified as "foamable, non-aerosol compositions" (Compl. ¶11). No probative visual evidence provided in complaint. | ¶11 | col. 27:60 |
| comprising: (A) monohydric alcohol present in the composition at a concentration from about 35% to about 99.5% by weight; | The accused compositions "include alcohol as a disinfecting and/or antimicrobial agent" (Compl. ¶11). | ¶11 | col. 27:61-65 |
| (B) a dimethicone surfactant; | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 28:1 |
| (C) a polymeric foam builder present in an amount sufficient to provide a stable foam...wherein the polymeric foam builder is selected from the group consisting of poly(ethylene oxide)...and combinations of two or more of the foregoing; | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 28:4-53 |
| wherein the foamable composition in a pre-foamed state has a viscosity of no greater than about 50 cps at 23° C. | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 28:54-56 |
- Identified Points of Contention:
- Technical Questions: A central dispute will be factual and evidentiary. What is the precise chemical composition of the accused Purell® product? Discovery will be necessary to determine whether the product contains a "dimethicone surfactant" and a "polymeric foam builder" as those terms are used in the patent. Further, what is the measured pre-foamed viscosity and foam stability of the accused product under the conditions specified in the patent?
- Scope Questions: The definition of "polymeric foam builder" is a Markush group listing numerous chemical classes (ʼ990 Patent, col. 28:10-53). A key legal question will be whether any stabilizing agent found in the accused product falls within the scope of this recited group.
V. Key Claim Terms for Construction
The Term: "polymeric foam builder"
Context and Importance: This term is central to the claimed invention, as it recites the ingredient allegedly responsible for creating a stable, non-aerosol foam. Infringement will hinge on whether a component of the accused product is determined to be a "polymeric foam builder" as defined by the extensive list of polymer types in the Markush group of claim 1.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the listed examples of builders, such as poly(ethylene oxide) (POLYOX™), should be interpreted to cover commercially similar or equivalent polymers that perform the same foam-stabilizing function in the composition (ʼ990 Patent, col. 5:6-17).
- Evidence for a Narrower Interpretation: A party will likely argue that the claim is strictly limited to the specific chemical families recited in the Markush group. They may point to the detailed examples and tables in the specification as evidence that the inventor contemplated a specific and finite set of suitable builders, excluding others not listed (ʼ990 Patent, col. 13-14, Table 2).
The Term: "stable foam"
Context and Importance: The patent defines this term functionally as a foam that "maintains a measurable height for at least 5 seconds following creation of the foam" (ʼ990 Patent, col. 28:6-9). The determination of infringement may depend on the methodology used to measure this property.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any foam with a non-zero height for five seconds meets the definition, regardless of the specific test conditions.
- Evidence for a Narrower Interpretation: A party may argue that the term must be interpreted in light of the specific "Foam Height Test Procedure" detailed in the patent's Examples section, which specifies the type of pump, vial dimensions, and measurement technique used by the inventor to assess stability (ʼ990 Patent, col. 15:12-40).
VI. Other Allegations
- Indirect Infringement: The complaint includes boilerplate allegations of active inducement and contributory infringement (Compl. ¶11). It does not, however, plead specific facts to support these claims, such as referencing defendant's instructions, user manuals, or advertising that would encourage infringing acts by end-users.
- Willful Infringement: While the complaint does not use the word "willful," it requests that the court declare the case "exceptional" under 35 U.S.C. § 285, a remedy often tied to findings of willful infringement (Compl., Prayer for Relief, ¶D). The complaint's filing on the same day the patent issued may establish a basis for post-suit knowledge, but it alleges no facts that would support pre-suit knowledge of the patent by the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be compositional and evidentiary: what is the precise chemical formulation of the accused Purell® product? The case will likely depend on facts established in discovery regarding whether the product contains both a "dimethicone surfactant" and, more critically, a "polymeric foam builder" that falls within the specific Markush group defined in Claim 1.
- A central legal question will be one of claim construction: can the term "polymeric foam builder," which is defined by a lengthy and specific list of chemical families, be construed to cover the stabilizing agents used in the accused product? The viability of the infringement claim may turn on the court’s interpretation of the scope of this term.