Richards v. Kallish

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nicole Richards (North Carolina)
  • Defendant: Thomas C. Kallish (New York); Everyone's Earth, Inc. (Delaware); Kane Socks Company (Delaware)
  • Plaintiff’s Counsel: Law Offices of Michael G. Santangelo PLLC; Claudia Pollak
• Case Identification: 7:22-cv-09095, S.D.N.Y., 03/22/24
• Venue Allegations: Venue is alleged to be proper in the Southern District of New York as defendants are alleged to reside, have an office, or regularly transact business in the State of New York.
• Core Dispute: Plaintiff seeks correction of inventorship for two patents related to biodegradable absorbent articles, alleging she is the sole inventor and that Defendant Kallish was improperly named as a co-inventor.
• Technical Context: The technology concerns biodegradable diapers that use chemically-treated natural fibers to replace non-degradable plastics and employ dye-based compositions for whitening, addressing consumer demand for eco-friendly products.
• Key Procedural History: The complaint alleges that Plaintiff was the sole inventor of the technologies but was pressured into signing assignment agreements that transferred her rights to Everyone's Earth. It further alleges that Defendant Kallish, with deceptive intent, falsely declared himself a co-inventor to the U.S. Patent and Trademark Office.

Case Timeline

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

U.S. Patent No. 10,709,806 - “Biodegradable Absorbent Articles”

The Invention Explained

• Problem Addressed: The patent addresses the environmental problem of conventional disposable diapers, which are made with non-biodegradable petroleum-based plastics and take hundreds of years to decompose ('806 Patent, col. 1:60-65, col. 2:1-4).
• The Patented Solution: The invention is a disposable absorbent article, like a diaper, constructed primarily from natural, biodegradable fibers such as cotton. To solve the problem of liquid containment without plastic, the non-woven outer layer is treated with a hydrophobic compound, such as a dendrimer wax, to make it water-impermeable while remaining biodegradable ('806 Patent, Abstract; col. 4:42-51). The complaint alleges Plaintiff conceived of this solution by researching and testing dendrimer waxes on cotton to create a hydrophobic back sheet (Compl. ¶26, 29).
• Technical Importance: This technology offers a potential solution for creating a fully compostable and biodegradable disposable diaper, a significant innovation in the market for sustainable consumer goods ('806 Patent, col. 3:11-20).

Key Claims at a Glance

• The complaint alleges the invention is contingent on three independent claims, which are claims 1, 14, and 19 (Compl. ¶44; '806 Patent).
• The essential elements of independent claim 1 include:
  • A non-woven inner layer consisting of 100% cellulosic fibers.
  • A hydrophobic non-woven outer layer consisting of 100% cellulosic fibers treated with an internal hydrophobic agent that is a dendrimer wax, and an external hydrophobic surface treatment.
  • A core of natural fibers positioned between the inner and outer layers.
• The complaint does not explicitly reserve the right to assert dependent claims, as the central dispute is inventorship of the claimed subject matter as a whole.

U.S. Patent No. 10,870,946 - “Whitening Compositions for Cellulosic-Containing Fabric”

The Invention Explained

• Problem Addressed: Natural, unbleached cotton has a tan or yellowish appearance. Achieving a white look typically requires harsh chemical bleaching, which can damage the natural fibers and is less environmentally friendly ('946 Patent, col. 2:9-29).
• The Patented Solution: The invention is a method for whitening fabric without bleach. It uses a whitening composition comprising a specific combination of a blue dye and a violet dye in an aqueous solution. By applying this composition, the fabric's yellowish tint is counteracted through color cancellation, making it appear visually whiter to the human eye ('946 Patent, Abstract; col. 2:50-65). The complaint alleges Plaintiff discovered this method through independent experiments with dyes and hydrophobic emulsions (Compl. ¶36-37).
• Technical Importance: This method allows manufacturers to produce visually white products from unbleached natural fabrics, which is valuable for creating products marketed as natural, organic, or for sensitive skin, without resorting to harsh bleaching agents ('946 Patent, col. 2:30-39).

Key Claims at a Glance

• The patent contains one independent claim, Claim 1 ('946 Patent).
• The essential elements of independent claim 1 include:
  • A method for dying fibers during fabric manufacture.
  • Applying a whitening dye composition consisting of a specific blue dye, a specific violet dye, and at least 80% water.
  • Subjecting the dyed fibers to a finishing process.
  • The method is explicitly "free of a bleaching step."
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The subject of the dispute is not a traditional accused product but the inventions embodied in the '806 and '946 patents, namely a "biodegradable diaper product" and a "whitening agent" (Compl. ¶10, 69).

Functionality and Market Context

• The complaint describes the functionality of the diaper invention as using natural fibers (e.g., cotton) treated with dendrimer waxes to achieve a water-repellent outer layer, thereby replacing non-biodegradable plastics (Compl. ¶27-29). The whitening invention is described as a composition of dyes that creates a whitening effect on the diaper's fabric components without using bleach, which was discovered to have a "synergistic effect" (Compl. ¶37-38).
• The complaint alleges the inventions were conceived in the context of developing an "environmentally-friendly diaper product" to be exploited commercially by Defendant Everyone's Earth (Compl. ¶23).

IV. Analysis of Infringement Allegations

As this is a correction of inventorship action, the core allegations concern Plaintiff's sole conception of the claimed inventions and Defendant Kallish's lack of any inventive contribution.

'806 Patent Inventorship Allegations

'946 Patent Inventorship Allegations

V. Key Claim Terms for Construction

In an inventorship dispute, the construction of claim terms helps define the metes and bounds of the invention that a purported inventor must have conceived.

• Term: "dendrimer wax" ('806 Patent, Claim 1)

  • Context and Importance: The central technical challenge addressed by the '806 Patent is creating a waterproof yet biodegradable outer layer. The complaint alleges that the specific selection of "dendrimer wax" was Plaintiff's unique inventive contribution resulting from her research comparing it to other materials like paraffin waxes (Compl. ¶29). The dispute may turn on whether Kallish contributed to the conception of using this specific class of chemical, or merely expressed a general desire for a waterproof diaper.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent’s Abstract lists a broader group of treatments including "waxes, urethanes, silicones, fluorocarbons, and non-fluorochemical repellents," which may suggest "dendrimer wax" is one of several interchangeable options ('806 Patent, Abstract).
    • Evidence for a Narrower Interpretation: Claim 1 specifically recites "a dendrimer wax," not just "wax." The specification details the specific structural advantages of dendrimers (e.g., being "hyper-branched molecules") as being optimal for the application, distinguishing them from other types of waxes ('806 Patent, col. 13:42-50, which mirrors the technical details in Compl. ¶29). This suggests the choice of a dendrimer was a specific, deliberate, and key part of the conception.

• Term: "free of a bleaching step" ('946 Patent, Claim 1)

  • Context and Importance: The stated purpose of the '946 Patent is to whiten natural fabrics without the damage caused by bleaching ('946 Patent, col. 2:19-29). This negative limitation is thus core to the invention's identity. Practitioners may focus on this term because inventorship requires conception of the invention as claimed. The dispute will question who conceived of the specific, bleach-free method, not just the use of dyes in general.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: An argument could be made that the core invention is the novel dye combination and that the absence of bleach is merely a resulting benefit, not a conceived element.
    • Evidence for a Narrower Interpretation: The claim explicitly requires the method be "free of a bleaching step." The patent’s background section is dedicated to the problems of conventional bleaching, framing the invention as a direct solution ('946 Patent, col. 2:9-29). This indicates the avoidance of bleach was a fundamental and essential part of the conceived invention.

VI. Other Allegations

• Willful Infringement: While this is not a traditional infringement case, the complaint makes allegations of "deceptive intent" which are analogous to the state of mind required for willfulness. The complaint alleges that Defendant Kallish knew he was not an inventor but proceeded to file a false Declaration of Inventorship with the USPTO (Compl. ¶64, 72). These allegations of knowingly false representations to the USPTO with "intent to deceive" are central to Plaintiff's request to invalidate the patent assignments and correct inventorship (Compl. ¶1, 92).

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

• A core issue will be one of the legal standard for inventorship: Did Defendant Kallish's alleged contribution—providing the general goal of creating a "biodegradable diaper," along with funding and business connections—rise to the level of "conception" of any of the specific technical solutions recited in the patent claims? Or, as the complaint alleges, did he merely identify a problem for the true inventor, the Plaintiff, to solve?
• A key evidentiary question will be one of origination and corroboration: Can the Plaintiff produce sufficient contemporaneous evidence, such as the alleged dated photos, lab notes, and emails, to establish that she alone conceived of the complete and operative inventions as claimed, particularly the specific "dendrimer wax" and "bleach-free" dye-based limitations?
• A dispositive question for ownership rights will be whether the patent assignments can be voided: This will depend on the court's findings regarding the Plaintiff’s allegations of duress, fraudulent inducement, and inequitable conduct surrounding the circumstances under which she signed the assignment documents and Defendant Kallish was named as a co-inventor.