DCT
3:19-cv-17647
Trutek Corp v. Matrixx Initiatives Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Trutek Corp. (New Jersey)
- Defendant: Matrixx Initiatives, Inc. (Delaware)
- Plaintiff’s Counsel: Law Offices of Amirali Y. Haidri
- Case Identification: 3:19-cv-17647, D.N.J., 12/13/2019
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the tort of patent infringement occurred within the state and Defendant Matrixx has an established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s ZICAM® brand of nasal products infringes two patents related to topical formulations that create an electrostatic field to block airborne contaminants, and further alleges that Defendant misappropriated Plaintiff's trade secrets to develop these products following failed licensing negotiations.
- Technical Context: The technology involves topical preparations applied near the nostrils that create an electrostatic charge to attract and trap airborne particulates, allergens, and pathogens, with some embodiments also including an agent to neutralize them.
- Key Procedural History: The complaint alleges a history of business dealings from 2011-2012, during which Plaintiff, under Confidential Disclosure Agreements (CDAs), disclosed its patented and proprietary technology to Defendant for potential licensing. After Defendant declined to pursue a business relationship, it allegedly used this information to develop the accused products and file its own patents. The '481 Patent expired during the period of alleged infringement.
Case Timeline
| Date | Event |
|---|---|
| 1993-06-24 | '481 Patent Priority Date |
| 1997-10-07 | '481 Patent Issue Date |
| 2008-07-07 | '802 Patent Priority Date |
| 2011-06-24 | Parties execute Confidential Disclosure Agreement #1 (CDA #1) |
| 2011-08-31 | Parties execute Confidential Disclosure Agreement #2 (CDA #2) |
| 2012-04-24 | '802 Patent Issue Date |
| 2012-05-16 | Parties execute one-month Option Agreement |
| 2012-05-21 | Parties hold meeting where Plaintiff discloses technical information |
| 2012-09-18 | Parties execute Confidential Disclosure Agreement #3 (CDA #3) |
| c. 2013-2014 | Defendant allegedly begins selling accused ZICAM® products |
| 2015-11-20 | '481 Patent expires |
| 2019-04-01 | Plaintiff alleges it discovered misappropriation and infringement |
| 2019-12-13 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,163,802 - “Electrostatically Charged Multi-Acting Nasal Application, Product, and Method” (Issued Apr. 24, 2012)
The Invention Explained
- Problem Addressed: The patent describes the inadequacy of existing methods like tissues or simple dust masks for protecting against inhalation of harmful microorganisms and toxic particulates, noting that such methods are often inefficient or cumbersome for daily use (ʼ802 Patent, col. 2:11-42).
- The Patented Solution: The invention is a "multi-acting" topical formulation that, when applied near the nostrils, creates an electrostatic field to attract and trap airborne particles. Critically, it also contains a biocidic agent that acts to "inactivate, kill, or render harmless" the captured microorganisms, thereby providing a second layer of protection beyond simple electrostatic filtering (ʼ802 Patent, Abstract; col. 3:36-44).
- Technical Importance: The claimed invention combines a physical capture mechanism (electrostatics) with a chemical neutralization mechanism (a biocidic agent) in a single topical product, aiming to offer more robust protection against airborne pathogens than a purely physical barrier. (ʼ802 Patent, col. 2:1-7).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 6, and 7 (Compl. ¶62).
- Independent Claim 1 recites a method for inhibiting harmful particulate matter, comprising the steps of:
- electrostatically attracting the particulate matter to a thin film of a formulation;
- holding the particulate matter in place by the adhesion and cohesion of the film; and
- inactivating the particulate matter by adding at least one ingredient to the formulation that would render the matter harmless.
U.S. Patent No. 5,674,481 - “Electrostatically Charged Nasal Topical Application Product” (Issued Oct. 7, 1997)
The Invention Explained
- Problem Addressed: The patent identifies a lack of practical, preventative measures to stop airborne contaminants from entering the nasal passages, contrasting such an approach with reactive methods like taking allergy medication after exposure has already occurred (’481 Patent, col. 2:1-9).
- The Patented Solution: The invention proposes creating an artificial electrostatic field in the area near the nasal passage using a topical product, such as a cream, gel, or paste. This field is intended to either repel or attract airborne contaminants, thereby preventing them from being inhaled (’481 Patent, Abstract; col. 2:15-20). The specification describes how this could be achieved with a carrier material containing electrostatic polymers applied to the skin or on a substrate like a bandage (’481 Patent, col. 4:21-46).
- Technical Importance: The technology introduced a personalized, non-obtrusive method for preventing inhalation of airborne contaminants by applying electrostatic principles directly to the user, as an alternative to masks or room-scale air filtration systems (’481 Patent, col. 2:47-64).
Key Claims at a Glance
- The complaint does not specify which claims of the ’481 Patent are asserted (Compl. ¶¶65-71).
- Independent Claim 1 recites a nasal topical application product consisting essentially of:
- a plurality of masses of one or more electrostatic polymers; and
- a topical carrier having the plurality of masses dispersed through a portion thereof.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s "ZICAM® branded products," including ZICAM® Cold Remedy (in nasal swab and nasal spray forms), ZICAM® Intense Sinus Relief, ZICAM® Nasal All Clear, and ZICAM® Allergy Relief (Compl. ¶39).
Functionality and Market Context
- The complaint alleges these products are topical nasal applications that function by "producing an electrostatic charge in and around the user's nasal passages" (Compl. ¶47). The complaint notes the products are marketed as "ZINC-FREE" and contain the ingredient benzalkonium chloride (Compl. ¶45). Photographs of packaging for the ZICAM® Cold Remedy Nasal Swabs and Nasal Spray are referenced in the complaint as being contained in an exhibit (Compl. ¶45). The products are allegedly sold in major retail outlets and online (Compl. ¶39).
IV. Analysis of Infringement Allegations
'802 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for electrostatically inhibiting harmful particulate matter...wherein a formulation is applied to skin or tissue of nasal passages... | The accused ZICAM® branded products are topical nasal applications intended to relieve allergy and cold symptoms. | ¶39, ¶47 | col. 6:18-24 |
| a) electrostatically attracting the particulate matter to the thin film; | The ZICAM® branded products "possess an electrostatic charge when applied to a person's nasal passages." | ¶62 | col. 6:25-27 |
| b) holding the particulate matter in place by adjusting the adhesion of the thin film...and by adjusting the cohesion of the formulation... | The complaint does not contain specific allegations mapping product features to this limitation. | N/A | col. 6:28-32 |
| c) inactivating the particulate matter by adding at least one ingredient that would render said particulate matter harmless. | The accused ZICAM® products "use benzalkonium chloride both as a biocide and as a cationic agent." | ¶62 | col. 6:33-35 |
'481 Patent Infringement Allegations
The complaint does not provide sufficient detail for a claim-chart analysis of the ’481 Patent. The infringement allegations are general and do not identify specific asserted claims or map accused product features to claim limitations (Compl. ¶¶69-70).
Identified Points of Contention
- Technical Questions: A primary technical question is whether benzalkonium chloride, which the complaint notes is an "inactive ingredient" on the accused product's packaging (Compl. ¶45), performs the active functions required by the '802 patent claims: serving as a "biocide" that "inactivates" particulate matter and also as a "cationic agent" that contributes to the electrostatic field.
- Scope Questions: For the '802 patent, a question of claim scope is whether the inherent properties of a gel or spray (the accused product forms) are sufficient to meet the "holding the particulate matter in place" limitation of Claim 1, which the complaint does not explicitly address with factual allegations.
- Evidentiary Questions: For the '481 patent, a threshold issue is whether the Plaintiff can produce any evidence to support its conclusory allegation of infringement, given the absence of specific factual pleadings on this count.
V. Key Claim Terms for Construction
Term: "inactivating the particulate matter" ('802 Patent, Claim 1)
- Context and Importance: This term is central to the "multi-acting" aspect of the ’802 Patent, distinguishing it from prior art that may only trap particles. Its definition will determine what level and type of biocidic or neutralizing activity the accused product must demonstrate. Practitioners may focus on this term because the complaint alleges an "inactive ingredient" performs this function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses broad, varied language to describe this effect, stating microorganisms are "neutralized, killed, inactivated, and rendered harmless" ('802 Patent, col. 3:42-44), which could support a construction that does not require complete sterilization.
- Evidence for a Narrower Interpretation: A party could argue that the context of "biocidic agent" ('802 Patent, Claim 2) and the patent's focus on preventing infection imply that "inactivating" requires a specific, clinically meaningful level of antimicrobial efficacy, not just a passive chemical property.
Term: "cationic agent" ('802 Patent, Claim 6)
- Context and Importance: The complaint specifically alleges that benzalkonium chloride functions as a "cationic agent" (Compl. ¶62), directly implicating asserted dependent claim 6. The construction of this term will be critical to proving infringement of this claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent lists "Benzalkonium Chloride" as an example of a material that can serve as both a cationic agent and a biocide ('802 Patent, col. 4:33-35), directly supporting the plaintiff’s theory that one ingredient can satisfy both roles.
- Evidence for a Narrower Interpretation: A defendant could argue that, in the context of the invention, a "cationic agent" must be present in sufficient concentration to be the primary contributor to the formulation's electrostatic properties, and that its presence as an "inactive ingredient" does not meet this functional requirement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants actively induce infringement of both patents by encouraging others "to practice infringing methods" (Compl. ¶¶60, 69). This allegation appears to be based on the sale of the accused products with instructions for their intended use, though the complaint does not specify the content of those instructions.
- Willful Infringement: Willfulness is alleged for both patents, based on alleged pre-suit knowledge (Compl. ¶¶63, 71). The complaint asserts that Defendants were "aware of the specification and claims" of the patents as a result of the due diligence and technology disclosures that occurred under the CDAs between 2011 and 2012 (Compl. ¶¶28-37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of causation and proof: can the Plaintiff establish an evidentiary link showing that the technology in the accused ZICAM® products was developed using the specific confidential information and trade secrets disclosed during the 2011-2012 negotiations, as opposed to being the result of independent development? The resolution of this question will heavily influence both the trade secret and willfulness claims.
- A key patent-specific question will be one of functional operation: does benzalkonium chloride, listed as an "inactive ingredient" in the accused ZICAM® products, in fact perform the dual, active roles of a "biocidic agent" that "inactivates" harmful particulates and a "cationic agent" that generates an electrostatic field, as required by the asserted claims of the '802 patent?
- A threshold procedural question may arise regarding pleading sufficiency: do the complaint's allegations for the expired '481 patent, which assert infringement without identifying specific claims or mapping any product features to claim limitations, satisfy the plausibility standard required to survive a motion to dismiss?