DCT

1:23-cv-08624

Corbion NV v. WTI Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-08624, S.D.N.Y., 10/01/2023
  • Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant WTI, Inc. is incorporated in New York and is subject to personal jurisdiction in the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its dried vinegar products do not infringe Defendant’s patent, which claims a method for producing a vinegar-derived food additive and the additive itself.
  • Technical Context: The technology relates to food science, specifically the production of powdered, vinegar-based additives used to preserve, color, and flavor processed meat products while maintaining a "natural" product label.
  • Key Procedural History: The action was prompted by a September 18, 2023 demand letter from Defendant WTI, alleging that Plaintiff Corbion's products infringe the patent-in-suit and threatening litigation for willful infringement, which established the case or controversy required for a declaratory judgment action.

Case Timeline

Date Event
2009-06-04 ’587 Patent Priority Date
2023-07-11 ’587 Patent Issue Date
2023-09-18 WTI sends demand letter to Corbion
2023-10-01 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 11,696,587, “METHOD OF PRODUCING A VINEGAR-DERIVED FOOD ADDITIVE,” issued July 11, 2023

The Invention Explained

  • Problem Addressed: The patent background describes a challenge in the food processing industry: meeting consumer demand for "natural" ingredients in cured meats while still achieving the necessary preservation, color, and flavor traditionally provided by chemical additives like sodium nitrite (’587 Patent, col. 2:38-47). The use of such chemical additives requires specific labeling that can be undesirable to consumers seeking "all-natural" products (’587 Patent, col. 2:45-47).
  • The Patented Solution: The invention claims a method to create a powdered food additive from vinegar that can be labeled as "vinegar" rather than a chemical name (’587 Patent, col. 3:6-11). The process involves "partially neutraliz[ing]" liquid vinegar with a basic agent (e.g., sodium bicarbonate) to raise its pH to a specific level below neutral (7.0), and then drying the mixture into a powder (’587 Patent, col. 9:18-28; Claim 1). This creates a stable, powdered additive that functions as a buffer and antimicrobial agent.
  • Technical Importance: The described process yields a functional food additive that can be used in processed meats to control pH and inhibit microbial growth, while allowing the food manufacturer to use the consumer-friendly term "vinegar" on the ingredient list (’587 Patent, col. 3:6-11).

Key Claims at a Glance

  • The complaint seeks a declaration of non-infringement of all claims of the ’587 patent (Compl. ¶1; ¶14). The independent claims are:

  • Independent Claim 1 (Method):

    • (a) treating vinegar with a basic neutralizing agent to partially neutralize the vinegar to a pH of below about 7.0; and
    • (b) evaporating water from and drying the product of step (a) to produce the food additive consisting essentially of an acetate salt and an acetic acid in the form of a dry powder having a pH of about 4.5 to about 7.0.

  • Independent Claim 9 (Product-by-Process):

    • A food additive produced by the process of Claim 1.

  • Corbion’s request for a judgment of non-infringement of "any claim" of the ’587 patent necessarily includes all dependent claims as well (Compl. ¶14).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies Corbion’s "Verdad Powder N6" and "Verdad Opti Powder N450" as the accused products (Compl. ¶9).

Functionality and Market Context

  • The complaint describes the accused products only as "dried vinegar products" (Compl. ¶9). It alleges in a conclusory manner that these products "are made by manufacturing processes that differ substantially from the products and processes disclosed and claimed in the '587 patent" (Compl. ¶10). The complaint does not provide sufficient detail for analysis of the accused products' specific manufacturing process, chemical composition, or functionality.

IV. Analysis of Infringement Allegations

As this is a complaint for a declaratory judgment of non-infringement, it does not contain affirmative infringement allegations or a claim chart. Instead, Corbion asserts that its products do not practice the claimed invention, stating that "all the limitations within each individual claim of the '587 patent are not present and/or not practiced in the method or manufacture of Corbion's" products (Compl. ¶10). The core of Corbion's non-infringement position rests on the allegation that its manufacturing processes are substantially different from the patented method (Compl. ¶10).

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Factual Question: The central dispute will likely concern the undisclosed facts of Corbion's manufacturing process. The key factual question is whether Corbion's method for producing its Verdad powders involves the two specific steps recited in Claim 1 of the ’587 patent.
  • Technical Question: A critical issue for the court will be comparing the chemical properties of Corbion's products to the claim limitations. This raises the question of whether the accused powders have a composition "consisting essentially of an acetate salt and an acetic acid" and fall within the claimed pH range of "about 4.5 to about 7.0" (’587 Patent, col. 10:25-28).

V. Key Claim Terms for Construction

The Term: "consisting essentially of"

  • Context and Importance: This transitional phrase is critical for defining the scope of the claimed food additive. Its construction will determine whether Corbion's products, if they contain additional ingredients beyond an acetate salt and acetic acid, can still fall within the claim's scope. The question is what unrecited components would materially alter the "basic and novel properties" of the invention.
  • Intrinsic Evidence for a Broader Interpretation: A party arguing for a broader interpretation may contend that the "basic and novel properties" relate solely to the additive's function as an antimicrobial or buffering agent. Under this view, the presence of other inert or non-functional ingredients would not remove a product from the claim's scope.
  • Intrinsic Evidence for a Narrower Interpretation: The specification's emphasis on creating a "natural" product that can be labeled simply as "vinegar" could support a narrower reading (’587 Patent, col. 3:6-11). A party may argue that any additional ingredient that is not naturally found in vinegar or that alters the product's fundamental character beyond its basic buffering function constitutes a material change, thereby placing the product outside the claim.

The Term: "partially neutralize the vinegar to a pH of below about 7.0"

  • Context and Importance: This term defines the crucial chemical reaction step at the heart of the patented process. The dispute will likely center on the degree of precision required by "partially neutralize" and the boundary of "below about 7.0."
  • Intrinsic Evidence for a Broader Interpretation: The use of "about" suggests the 7.0 value is not an absolute, sharp cutoff and may encompass minor variations due to measurement tolerances or standard industry practices. The patent does not define a specific lower bound for the pH, potentially allowing for a wide range of "partial" neutralization.
  • Intrinsic Evidence for a Narrower Interpretation: The claim requires neutralization "to a pH of below about 7.0," indicating a directional limit (’587 Patent, col. 10:20-22). This suggests that a process resulting in a pH of 7.0 or higher would not meet this limitation. The purpose of partial neutralization is to ensure a final product containing both an acetate salt and residual acetic acid, which is essential to the claimed invention's composition (’587 Patent, col. 10:25-28). This functional requirement may support a stricter interpretation of the pH ceiling.

VI. Other Allegations

  • Indirect Infringement: Corbion seeks a declaration that it does not indirectly infringe the ’587 patent (Compl. ¶16). The complaint itself does not present a factual basis for a potential claim of indirect infringement by WTI, as the described demand letter appears to focus on Corbion's direct infringement by "selling dried vinegar products" (Compl. ¶9).
  • Willful Infringement: The complaint states that WTI's demand letter accused Corbion of "willful infringement" and threatened "to fully enforce its intellectual property rights" (Compl. ¶9). This allegation of pre-suit knowledge and threat of enforcement by WTI forms the basis for Corbion's declaratory judgment action.

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

  • A primary issue will be an evidentiary one: what are the specific, factual steps of Corbion’s proprietary manufacturing process for its Verdad powders, and what is the resulting chemical composition and pH of the final products? The outcome of the case will likely depend on facts established during discovery.
  • The case will also turn on a question of compositional scope: can the phrase "consisting essentially of an acetate salt and an acetic acid" be interpreted to read on Corbion’s products, which may contain other ingredients? The court's construction of this term will be pivotal in determining whether there is a literal match or a material difference between the accused products and the claimed additive.