Forrester Environmental Services Inc v. Wheelabrator Tech Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Forrester Environmental Services, Inc. and Keith E. Forrester (New Hampshire)
  • Defendant: Wheelabrator Technologies, Inc. (New Hampshire)
  • Plaintiff’s Counsel: Gallagher, Callahan & Gartrell, PC
• Case Identification: 1:10-cv-00154, D.N.H., 03/10/2011
• Venue Allegations: Venue is alleged to be proper based on the domicile and principal places of business of all parties being located in New Hampshire.
• Core Dispute: Plaintiffs allege that Defendant, a direct competitor, tortiously interfered with their contractual relationships and misappropriated trade secrets, including technology covered by Plaintiffs' patents for treating industrial waste.
• Technical Context: The technology concerns chemical methods for stabilizing heavy metals (e.g., lead) in industrial waste products like incinerator ash, thereby preventing the metals from leaching into the environment.
• Key Procedural History: The complaint describes a long-standing competitive relationship, originating from Plaintiff Keith Forrester’s prior employment with Defendant’s predecessor. The central events allegedly occurred around 2007, when Defendant is accused of making false statements to Plaintiffs’ key customer in Taiwan (Kobin), inducing Kobin to terminate its contract with Plaintiffs and adopt Defendant's competing process. The suit is not a direct patent infringement action but rather asserts state-law claims for tortious interference and trade secret misappropriation, with the patented technology being the subject of the alleged wrongdoing.

Case Timeline

Date	Event
1993-10-07	U.S. Patent No. 6,050,929 Priority Date
1996-10-07	U.S. Patent No. 5,860,908 Priority Date
1999-01-19	U.S. Patent No. 5,860,908 Issued
2000-04-18	U.S. Patent No. 6,050,929 Issued
2004-08-27	FESI enters supply agreement with Kobin
2005-04-29	Kobin commences purchases from FESI
2006-03-25	U.S. Patent No. 7,530,939 Priority Date
2007-06-XX	WTI allegedly makes false statements to Kobin
2007-06-XX	Kobin terminates agreement with FESI
2009-05-12	U.S. Patent No. 7,530,939 Issued
2011-03-10	Second Amended Complaint Filed

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

U.S. Patent No. 5,860,908 - "Water Insoluble Heavy Metal Stabilization Process," issued January 19, 1999

The Invention Explained

• Problem Addressed: The patent’s background section describes the environmental hazard of heavy metals leaching from industrial waste. It notes that prior stabilization methods were often expensive, involved corrosive chemicals, or used water-soluble agents that could wash away if the waste was subsequently wetted, rendering the treatment ineffective. (ʼ908 Patent, col. 1:12-51).
• The Patented Solution: The invention proposes a method of treating waste by contacting it with a water-insoluble immobilizing agent, such as pulverized phosphate rock. This agent chemically binds to heavy metals to prevent leaching but, because it is insoluble in water, remains integrated with the waste material through subsequent water contact (e.g., quenching or rain). This process stabilizes the waste while allowing it to retain its original free-flowing physical character, simplifying handling and disposal. (ʼ908 Patent, col. 2:3-10, Abstract).
• Technical Importance: The use of a water-insoluble agent offered a more durable and less corrosive method for waste stabilization compared to prior art techniques that relied on highly soluble chemicals. (ʼ908 Patent, col. 1:36-51).

Key Claims at a Glance

• The complaint does not identify specific claims of the ’908 patent that are alleged to be infringed. It makes a general reference to "Defendant WTI's infringing acts" (Compl. ¶20).

U.S. Patent No. 6,050,929 - "Method for Stabilizing Heavy Metal Bearing Waste in a Waste Generation Stream," issued April 18, 2000

The Invention Explained

• Problem Addressed: Conventional waste stabilization is a post-production process that is often complex, costly, and can subject the waste generator to significant regulatory burdens under frameworks like the Resource Conservation and Recovery Act (RCRA). (ʼ929 Patent, col. 2:27-33).
• The Patented Solution: The patent describes an "in-line" or "pre-waste" stabilization method. Instead of treating waste after it is collected, a stabilizing agent is added directly into the material processing stream before the material is officially designated as waste. For example, the agent is mixed with insulated wires prior to chopping or added to sandblast grit before use. This "seeding" of the material allows the production equipment itself to serve as the mixer, ensuring the final waste product is already stabilized, thereby simplifying the overall process and potentially avoiding certain regulatory requirements. (ʼ929 Patent, Abstract; col. 2:50-62).
• Technical Importance: This approach integrates waste treatment directly into industrial production, offering a more efficient and potentially less regulated pathway for managing hazardous materials. (ʼ929 Patent, col. 1:28-34).

Key Claims at a Glance

• The complaint does not identify specific claims of the ’929 patent that are alleged to be infringed. It makes a general reference to "Defendant WTI's infringing acts" (Compl. ¶21).

U.S. Patent No. 7,530,939 - "Method for Stabilization of Heavy Metals in Incinerator Bottom Ash and Odor Control with DiCalcium Phosphate Dihydrate Powder," issued May 12, 2009

• Technology Synopsis: This patent addresses the dual problems of heavy metal leaching and nuisance odor generation from incinerator ash. The disclosed solution is the use of pulverized DiCalcium Phosphate DiHydrate (DCPDHP), an "acid semi-soluble" chemical, which acts as a dry "seed" to both stabilize heavy metals and adsorb odor-causing compounds without forming a cement-like, non-permeable mass. (Compl. ¶76; ’939 Patent, Abstract).
• Asserted Claims: The complaint does not identify specific asserted claims but alleges that Defendant's accused method "embodies the inventions of the ‘939 Patent" (Compl. ¶81).
• Accused Features: The accused feature is a method for treating lead-bearing waste, licensed by Defendant to a customer in Taiwan, that involves contacting the waste with chemicals including DCPDHP. This method allegedly misappropriates technology disclosed to the customer by Plaintiffs under a confidentiality agreement. (Compl. ¶81).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is a "method for reducing the leaching of lead from a lead bearing waste" that Defendant WTI allegedly used and licensed to its customer, Kobin, in Taiwan (Compl. ¶81).

Functionality and Market Context

• The accused method is alleged to involve contacting waste products, such as incinerator ash, with a combination of chemical stabilizers including "monocalcium phosphate, dicalcium phosphate, tricalcium phosphate, DCPDHP, GTSP, triple super phosphate or wet-process phosphoric acid" (Compl. ¶81). The complaint alleges this method was misappropriated from Plaintiffs and "embodies the inventions of the ‘939 Patent" (Compl. ¶81).
• The complaint frames the commercial context as a targeted effort by WTI to capture Plaintiffs' specific customer, Kobin, which allegedly constituted the "entire market" for Plaintiffs' specialized DCPDHP-based product (Compl. ¶30). WTI is alleged to have induced Kobin to terminate its agreement with Plaintiffs and instead pay WTI royalties for the accused method (Compl. ¶40, ¶46).

IV. Analysis of Infringement Allegations

The complaint does not assert specific claims from the patents-in-suit or provide a detailed mapping of accused functionalities to claim elements. The core allegations consist of a general statement that WTI "used... a method... that embodies the inventions of the ‘939 Patent" in the context of a trade secret claim (Compl. ¶81), and conclusory references to "infringing acts" concerning the ’908 and ’929 patents (Compl. ¶20, ¶21). Without asserted claims, a formal infringement analysis via a claim chart is not possible based on the complaint.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Scope Questions: While not a formal claim construction dispute, a central issue is the technical distinction between the parties' respective technologies. The complaint alleges that Defendant’s older patents (e.g., '114, '233) are limited to water-soluble phosphates, whereas Plaintiffs' patents cover water-insoluble and acid semi-soluble phosphates like DCPDHP (Compl. ¶13, ¶16). The case raises the question of whether Defendant misrepresented the scope of its own patents to suggest they covered the technology that Plaintiffs provided to Kobin (Compl. ¶36, ¶41).
• Technical Questions: A key evidentiary question, particularly for the trade secrets claim, is whether the chemical process WTI actually licensed to Kobin is technically the same as the invention claimed in the ’939 Patent. The complaint alleges WTI's method "embodies" the patented invention (Compl. ¶81), which will require factual proof of the specific chemical agents and process steps used at the Kobin facility.

V. Key Claim Terms for Construction

The complaint does not assert specific claims, precluding a formal analysis of claim terms. However, the factual allegations center on a technical distinction that would be a critical claim construction issue in a patent infringement lawsuit.

• The Term: "water-insoluble" (from the '908 patent family) vs. "water soluble" (from WTI's alleged prior art patents).
• Context and Importance: This distinction appears to be the crux of the commercial dispute. Plaintiffs allege their technology is based on water-insoluble agents, which differ fundamentally from the water-soluble agents of Defendant's older technology. Defendant allegedly secured Plaintiffs' customer by falsely claiming its patents covered these insoluble agents. Practitioners may focus on this distinction because its resolution is central to proving the alleged misrepresentation and misappropriation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The ’908 Patent does not provide a quantitative definition for "water-insoluble," but contrasts it with prior art chemicals that are "subject to loss due to water solution stripping" ('908 Patent, col. 1:47-50). A party could argue the term broadly covers any agent that remains substantially integral with the waste matrix during wetting.
  • Evidence for a Narrower Interpretation: The complaint alleges that Defendant's patents define "water soluble" as requiring solubility of at least "5 grams per 100 milliliters" (Compl. ¶13). In contrast, it identifies DCPDHP, a key agent in Plaintiffs' technology, as having a solubility of "0.02 gr/100 ml" (Compl. ¶16). A party could argue that these figures establish a clear, quantifiable boundary between the two terms, with "water-insoluble" meaning a solubility level orders of magnitude lower than the 5 g/100 ml threshold.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain formal counts for indirect patent infringement (i.e., induced or contributory infringement). The allegations focus on Defendant's own direct use and licensing of the accused method (Compl. ¶81).
• Willful Infringement: While the complaint does not plead "willful infringement" as a formal patent law claim, it repeatedly alleges that Defendant acted "deliberately, willfully and intentionally" when making false statements (Compl. ¶47) and that its use of the allegedly protected technology was knowing (Compl. ¶81). These allegations of knowledge and intent form the basis for seeking enhanced damages under the asserted state-law claims.

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

As this is a tort and trade secret case interwoven with patent concepts, the central questions are hybrids of commercial and intellectual property law.

1. A core issue will be one of misrepresentation and technical scope: Did Defendant WTI materially misrepresent the scope of its own patents to a customer? This determination will likely require the court to analyze the technical boundaries of the competing patent portfolios to decide if Defendant's patents, as alleged, are limited to "water-soluble" technology and do not cover the "water-insoluble" methods at the heart of the dispute.
2. A key evidentiary question will be one of misappropriation and embodiment: Can Plaintiffs prove that the waste stabilization method Defendant licensed in Taiwan is the same as the technology protected by the ’939 Patent and disclosed to the customer under a confidentiality agreement? This will require a factual comparison of Defendant's accused process against the technical disclosures and claims of Plaintiffs' patent.