Modumetal Inc v. Parker Hannifin Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Modumetal, Inc. (Delaware)
  • Defendant: Parker Hannifin Corp. (Ohio)
  • Plaintiff’s Counsel: King & Spalding LLP
• Case Identification: 1:24-cv-02053, N.D. Ohio, 11/22/2024
• Venue Allegations: Venue is alleged to be proper in the Northern District of Ohio because Defendant is an Ohio corporation with its principal place of business in Cleveland, Ohio.
• Core Dispute: Plaintiff alleges that Defendant’s ToughShield® Plus anti-corrosion coatings infringe patents related to nanolaminate coating technology.
• Technical Context: The lawsuit concerns advanced anti-corrosion coatings, a technology critical for extending the service life of metal components in various industries.
• Key Procedural History: The complaint alleges that the parties entered into a "Collaboration Agreement" in November 2016, during which Plaintiff shared confidential information about its patented technology. The complaint further alleges that after this agreement terminated, Defendant launched the accused infringing product, ToughShield® Plus, based on the shared technology.

Case Timeline

Date	Event
2009-06-08	Priority Date for ’419 and ’613 Patents
2015-01-01	Defendant launches original "ToughShield" (TS1000) coating
2016-11-01	Plaintiff and Defendant enter into Collaboration Agreement
2017-10-01	Collaboration Agreement terminates
2019-04-09	U.S. Patent No. 10,253,419 issues
2021-01-01	Defendant launches accused "ToughShield® Plus" coating
2022-02-08	U.S. Patent No. 11,242,613 issues
2024-11-22	Complaint filed

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

U.S. Patent No. 10,253,419 - Electrodeposited, Nanolaminate Coatings and Claddings for Corrosion Protection, issued April 9, 2019

The Invention Explained

• Problem Addressed: The patent describes the limitations of conventional anti-corrosion coatings. Sacrificial coatings (like galvanization) are consumed over time, while barrier coatings, if scratched, can fail and even accelerate localized corrosion of the underlying metal substrate (’419 Patent, col. 1:40-2:8).
• The Patented Solution: The invention is a multilayered coating composed of extremely thin "nanolaminate" layers of different metal alloys. These layers are engineered to have different galvanic properties, or "nobility." When the coating is damaged, this structure causes corrosion to spread laterally within a more reactive "sacrificial" layer, rather than penetrating perpendicularly down to the protected metal part (’419 Patent, Abstract; col. 6:8-28; Fig. 1). This mechanism aims to combine the benefits of both sacrificial and barrier coatings.
• Technical Importance: This approach seeks to control the direction of corrosion propagation at a microscopic level, thereby significantly extending the useful life of a coated component compared to traditional homogeneous coatings (Compl. ¶11-12).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶31).
• Claim 1 of the ’419 Patent requires:
  • A coating or cladding with a total thickness from 5 to 50 microns.
  • Comprising a series of alternating layers, each between 5 and 1,000 nanometers thick.
  • A first layer of a "first alloy" that is less noble than the substrate, containing at least 1 wt.% of a first metal (from the group Co, Fe, Ni, Zn) and at least 1 wt.% of a second metal.
  • A second layer of a "second alloy" that is less noble than the first alloy, containing at least 1 wt.% of the same first metal and at least 1 wt.% of the same second metal.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,242,613 - Electrodeposited, nanolaminate Coatings and Claddings for Corrosion Protection, issued February 8, 2022

The Invention Explained

• Problem Addressed: The ’613 Patent, which is part of the same family as the ’419 Patent, addresses the same technical problem of improving corrosion protection for metal substrates (’613 Patent, col. 1:13-2:51).
• The Patented Solution: This patent claims a method for forming the nanolaminate coating. The method involves creating a coating on a substrate with a specified total thickness (5 to 50 microns) and composed of a repeating pattern of layers, where each layer has a thickness on the nanometer scale (’613 Patent, Abstract; col. 11:11-30). The method creates the specific layered structure with distinct alloys as described in the ’419 Patent.
• Technical Importance: The claimed method provides a process for manufacturing the novel anti-corrosion coating structure, enabling its practical application (’613 Patent, col. 3:1-18).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶39).
• Claim 1 of the ’613 Patent requires a method of:
  • Forming a coating on a substrate or mandrel with a total thickness of 5 to 50 microns.
  • The coating comprises a series of layers in a repeating pattern, each layer having a thickness from 5 to 1,000 nanometers.
  • The series includes a first layer of a "first alloy" (less noble than the substrate) and a second layer of a "second alloy" (less noble than the first alloy), with specified compositions of a first and second metal.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant's "ToughShield® Plus" anti-corrosion coatings and the products on which they are applied, such as steel tube fittings and adapters (Compl. ¶27, 31).

Functionality and Market Context

The complaint alleges that ToughShield® Plus is an anti-corrosion "zinc/nickel nanolaminate coating" (Compl. ¶27). It is advertised as providing protection for up to 3,000 hours in a salt spray test, a threefold improvement over Defendant’s previous technology (Compl. ¶27). The complaint also alleges that ToughShield® Plus is the "new standard anticorrosion coating applied to virtually all of the steel fittings sold by Parker Hannifin," suggesting significant commercial adoption (Compl. ¶27). The complaint includes a diagram comparing the protective action of a nanolaminate coating to a conventional coating, alleging the former diverts corrosion laterally while the latter allows it to proceed directly to the substrate (Compl. ¶12, p. 4). A second visual, taken from the ’419 Patent, further illustrates this alleged difference in corrosion propagation between a multilayered and a homogeneous coating (Compl. ¶17, p. 6).

IV. Analysis of Infringement Allegations

The complaint references, but does not attach, claim chart exhibits. The narrative infringement theories are summarized below.

’419 Patent Infringement Allegations

The complaint alleges that Parker Hannifin's ToughShield® Plus products, such as various steel fittings, infringe at least claim 1 of the ’419 Patent (Compl. ¶31-35). The core of the infringement theory is that the ToughShield® Plus coating has a structure that meets the claim limitations. The complaint alleges that the accused coatings "contain zinc/nickel alloy layers" and that "[a]djacent zinc/nickel alloy layers...contain different relative amounts of zinc and nickel" (Compl. ¶28). This allegation maps to the claim requirement for a "series of alternating layers" of different alloys. The complaint further alleges that ToughShield® Plus is the "standard zinc-nickel plating on all steel tube fittings and adapters worldwide," which supports the allegation of widespread infringement (Compl. ¶31).

’613 Patent Infringement Allegations

The complaint alleges that Parker Hannifin infringes at least claim 1 of the ’613 Patent by selling its ToughShield® Plus products (Compl. ¶39-43). Because the ’613 Patent claims a method of forming a coating, this allegation is based on a theory of indirect infringement. The underlying theory is that Defendant's manufacturing process for ToughShield® Plus practices the steps of the claimed method. The factual basis for this allegation appears to stem from information Plaintiff provided to Defendant during their prior collaboration, which allegedly detailed the "methods, materials, and equipment required to form Modumetal's zinc/nickel nanolaminate alloy layers" (Compl. ¶26).

Identified Points of Contention

• Structural Questions: A central dispute may be whether the ToughShield® Plus coating actually has the "series of alternating layers" with the specific galvanic relationships ("less noble") required by the claims. The defense may argue its coating has a different structure, such as a gradient composition rather than discrete layers, or that the layers do not meet the claimed nobility requirements.
• Technical Questions: For the ’613 method patent, a key question will be whether Plaintiff can produce evidence that Defendant's manufacturing process actually performs the steps recited in claim 1. The dispute may center on the specific parameters of Defendant’s electrodeposition process.

V. Key Claim Terms for Construction

The Term: "a series of alternating layers" (appearing in claim 1 of both patents)

• Context and Importance: This term is fundamental to the claimed invention's structure. The outcome of the infringement analysis may depend on whether the physical structure of the ToughShield® Plus coating is found to meet this definition. Practitioners may focus on this term because its construction will determine whether a coating with diffuse interfaces, complex repeating patterns, or a gradient composition falls within the scope of the claims.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests patterns beyond a simple A-B-A-B structure are contemplated, such as "layer 1, layer 2, layer 3, layer 1, layer 2, layer 3" (’419 Patent, col. 5:46-49). This could support a construction that is not limited to two alternating materials.
  • Evidence for a Narrower Interpretation: The patent also discloses embodiments with "diffuse interfaces" between layers, which could be used to argue that a coating must possess some identifiable boundary between layers, however diffuse, to qualify (’419 Patent, col. 5:8-13). Figure 1 depicts discrete, parallel layers, which might support a narrower construction requiring a more defined layered structure.

The Term: "less noble" (appearing in claim 1 of both patents)

• Context and Importance: This term defines the essential electrochemical relationship between the layers that allegedly causes corrosion to propagate laterally. Infringement requires proving that the layers in the accused coating possess this specific relative nobility. The dispute will be factual and technical, hinging on measurements of the alloys' properties.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent links nobility to general concepts like "reactivity" and being "more reactive" (’419 Patent, col. 4:31-32; col. 12:16), which may support a functional, rather than strictly numerical, definition.
  • Evidence for a Narrower Interpretation: The specification ties nobility to electronegativity, stating that "the higher the electronegativity, the greater the nobility (non reactivity)" (’419 Patent, col. 1:58-60). This could support a more constrained definition tied to a specific position on the galvanic series.

VI. Other Allegations

Indirect Infringement

For the ’613 method patent, the complaint alleges infringement by selling products, which is an indirect infringement claim (Compl. ¶39). The complaint alleges that Defendant had knowledge of the technology via a "Collaboration Agreement" under which Plaintiff disclosed confidential details about its "methods, materials, and equipment" (Compl. ¶26). This alleged knowledge is the basis for the intent required for induced infringement.

Willful Infringement

The complaint alleges that Defendant engaged in a "bait-and-switch" scheme to gain access to Plaintiff's technology and then launched its infringing product after the collaboration lapsed (Compl. ¶ Introduction, ¶27). These allegations of pre-suit knowledge of the technology and intentional copying form the basis for the claim of willful infringement (Prayer for Relief ¶B).

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

• A central question will be one of structural and compositional identity: Can discovery establish that the accused ToughShield® Plus coating possesses the specific nanostructure claimed in the patents—namely, a "series of alternating layers" of distinct alloys with the required relative "less noble" electrochemical properties?
• A second core issue will relate to knowledge and intent: What evidence exists from the parties' prior "Collaboration Agreement" to demonstrate that the defendant not only knew of the patented technology but deliberately used Plaintiff's confidential information to develop the accused product? The answer will be critical for the claims of willful and indirect infringement.
• The case may also turn on a question of claim scope: How will the court construe the term "alternating layers"? Will it require discrete, well-defined layers as depicted in patent figures, or could it be broad enough to read on coatings with more gradual or complex compositional changes?