DCT

3:24-cv-00654

Premiere Concrete Admixtures LLC v. E5 Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:24-cv-00654, N.D. Ohio, 04/11/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant sold accused products for use in the district and sent a Cease and Desist letter to Plaintiff’s principal place of business within the district, which constitutes a substantial part of the events giving rise to the action.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its concrete admixture products do not infringe Defendant’s patents, and that those patents are invalid and unenforceable.
  • Technical Context: The technology relates to concrete admixtures containing amorphous nanosilica, which are added during the mixing process to improve the final cured concrete's performance characteristics, such as strength and durability.
  • Key Procedural History: Plaintiff initiated this declaratory judgment action after receiving a Cease and Desist letter from Defendant. The complaint notes that U.S. Patent No. 11,279,658 was the subject of an ex parte reexamination, requested by Plaintiff, which resulted in claim amendments adding limitations concerning the absence of superplasticizers. The complaint heavily relies on alleged public uses and sales of the patented technology by Defendant's predecessor-in-interest more than one year prior to the patents' effective filing dates as grounds for invalidity and unenforceability due to inequitable conduct.

Case Timeline

Date Event
2016-07-01 Alleged first commercial use of "INTERNAL CURE" mark by Defendant's predecessor
2017-01-15 Alleged first commercial use of "E5 plus design mark" by Defendant's predecessor
2018-03-09 Earliest possible priority date for U.S. Patent No. 11,279,658
2018-03-22 Earliest possible priority date for U.S. Patent No. 11,919,823
2022-03-22 U.S. Patent No. 11,279,658 issues
2023-01-01 Plaintiff begins selling ULTRAFINISH 1L™ product (approx. date)
2023-06-01 Plaintiff files Request for Ex Parte Reexamination of the ’658 Patent
2024-02-09 Reexamination Certificate for U.S. Patent No. 11,279,658 issues
2024-03-05 U.S. Patent No. 11,919,823 issues
2024-04-03 Defendant sends Cease and Desist Letter to Plaintiff
2024-04-11 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 11,279,658 (as modified by Reexamination Certificate US 11,279,658 C1) - "Compositions for Improved Concrete Performance"

The Invention Explained

  • Problem Addressed: The patent's background describes the challenge of managing water content in concrete mixtures. While water is necessary for hydration (curing) and workability, excess water can create capillaries and voids as it evaporates, weakening the final structure. (’658 Patent, col. 1:11-24, col. 2:6-15).
  • The Patented Solution: The invention is a process for preparing concrete where a specific quantity of amorphous nanosilica is added to the concrete mix at a specific time: after the cement, sand, aggregate, and at least an initial portion of water have already been mixed together. (’658 Patent, col. 4:1-19). This timed addition allegedly immobilizes water to allow for more complete, extended hydration, thereby improving compressive strength and reducing shrinkage without impairing the mixture's workability. (’658 Patent, col. 14:5-20).
  • Technical Importance: The method purports to enable the production of stronger and more durable concrete using standard industrial-scale equipment, like Ready-mix trucks, even under challenging environmental conditions. (’658 Patent, col. 13:1-14).

Key Claims at a Glance

  • The complaint challenges claims as amended by the Reexamination Certificate, with independent claims 1 and 11 being central. (Compl. ¶41, ¶46).
  • Independent Claim 1 (as amended) recites a process for preparing a concrete installation, requiring:
    • Creating a concrete mix from components including dry cement, water, aggregate/sand, and a quantity of amorphous silica with a specified particle size (1-55 nm) and/or surface area (300-900 m²/g).
    • A limitation, added during reexamination, that "the amorphous silica is dispersed in the concrete mix without using a superplasticizer."
    • A specific sequence of adding water in at least an initial portion and a "tailwater" portion, with the silica being added to the mix at a defined stage relative to the water additions and agitation periods.
    • Pouring the resulting concrete mix.
  • The complaint seeks a declaration of non-infringement of the ’658 Patent generally, reserving the right to address any asserted claims. (Compl. ¶128).

U.S. Patent No. 11,919,823 - "Compositions for Improved Concrete Performance"

The Invention Explained

  • Problem Addressed: Similar to the ’658 Patent, this patent addresses the need to improve concrete's final properties by optimizing the role of water and introducing nanosilica, a process complicated by the tendency of nanosilica to increase water demand. (’823 Patent, col. 2:50-55).
  • The Patented Solution: The patent claims a process for preparing a concrete mixture, specifically in a "Ready-mix," where amorphous silica with the same particle size and surface area characteristics is added at a particular stage of the mixing sequence. (’823 Patent, Abstract). The core inventive concept remains the timed addition of nanosilica to a pre-wetted cementitious mix to enhance final concrete properties. (’823 Patent, col. 4:15-34).
  • Technical Importance: The technology claims to provide a practical method for improving the quality of large-scale concrete pours by enhancing strength and durability while maintaining workability. (’823 Patent, col. 13:1-20).

Key Claims at a Glance

  • The complaint notes the Cease and Desist letter identified at least Claim 1 of the ’823 Patent. (Compl. ¶33). Independent claims 1 and 13 are representative.
  • Independent Claim 1 recites a process for preparing a concrete mixture "in a Ready-mix," requiring:
    • Creating a mix with components including dry cement, water, aggregate/sand, and amorphous silica with the same size/surface area properties as the ’658 Patent.
    • A specific mixing sequence where water is added in an initial portion and a tailwater portion, and the amorphous silica is added to the "first mix" (the mix containing the initial water portion).
  • Independent Claim 13 recites a broader process for preparing a concrete "installation" (not limited to a Ready-mix) with a similar sequence of adding components.
  • The complaint seeks a declaration of non-infringement of the ’823 Patent generally. (Compl. ¶188).

III. The Accused Instrumentality

Product Identification

  • Plaintiff’s ULTRAFINISH 1L™ product. (Compl. ¶95).

Functionality and Market Context

  • ULTRAFINISH 1L™ is a concrete admixture that contains colloidal silica, sold to ready-mix concrete producers and other contractors. (Compl. ¶7, ¶95).
  • Plaintiff alleges that its product does not meet the patent's technical requirements, stating that third-party laboratory testing shows the silica in its product has an average particle size and a surface area that are both outside the ranges required by the claims of the patents-in-suit. (Compl. ¶97-100).
  • Critically, Plaintiff states that it "recommends to its customers... that a superplasticizer, namely, a polycarboxylate, be added to a concrete mix prepared with the ULTRAFINISH 1L™ product." (Compl. ¶101). This is positioned as a key distinguishing feature from the amended claims of the ’658 Patent.

IV. Analysis of Infringement Allegations

As this is a declaratory judgment action, the analysis summarizes the Plaintiff’s stated bases for non-infringement.

'658 Patent Infringement Allegations

Claim Element (from Independent Claim 1, as amended) Plaintiff's Alleged Non-Infringing Functionality Complaint Citation Patent Citation
a quantity of amorphous silica... wherein the average silica particle size is in the range of from 1 to 55 nanometers and/or wherein the surface area... is in the range of from about 300 to about 900 m²/g Plaintiff alleges its ULTRAFINISH 1L™ product contains amorphous silica with a particle size and surface area that fall outside of the claimed ranges, based on third-party testing. ¶97, ¶98, ¶136 US 11,279,658 C1, col. 2:48-53
wherein the amorphous silica is dispersed in the concrete mix without using a superplasticizer Plaintiff affirmatively recommends that its customers add a superplasticizer to concrete mixes prepared with its product, thereby teaching a method contrary to this limitation. ¶101, ¶135 US 11,279,658 C1, col. 2:54-56
[A process for the preparation of a concrete installation...] Plaintiff alleges it does not directly infringe because it only sells an admixture product and does not itself engage in the practice of preparing concrete installations. ¶129 US 11,279,658 C1, col. 1:36-38

Identified Points of Contention

  • Prosecution History Estoppel: The complaint argues that because the "without using a superplasticizer" and "essentially superplasticizer-free" limitations were added during reexamination to overcome prior art, Defendant is estopped from arguing that processes using a superplasticizer infringe, either literally or under the doctrine of equivalents. (Compl. ¶49, ¶140). The court will have to determine the scope and effect of this estoppel.
  • Technical Mismatch: A central factual dispute will be whether Plaintiff's ULTRAFINISH 1L™ product contains silica with the physical properties (particle size, surface area) recited in the claims. This will likely depend on competing expert analysis and lab testing. (Compl. ¶99, ¶100).
  • Indirect Infringement: Given that Plaintiff sells an admixture for others to use, the case against it would likely involve indirect infringement. Plaintiff's primary defense is that there can be no indirect infringement because there is no direct infringement by its customers, due to both the technical mismatch of the silica and, for the ’658 Patent, the recommended use of a superplasticizer. (Compl. ¶138, ¶139).

'823 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Plaintiff's Alleged Non-Infringing Functionality Complaint Citation Patent Citation
a quantity of amorphous silica, wherein the average particle size of the amorphous silica is in the range of from about 1 to about 55 nanometers and/or wherein the surface area... is in the range of from about 300 to about 900 m²/g Plaintiff alleges its ULTRAFINISH 1L™ product contains amorphous silica with a particle size and surface area that fall outside of the claimed ranges. ¶195, ¶196 col. 20:20-27
A process for the preparation of a concrete mixture in a Ready-mix Plaintiff argues it is not a direct infringer because it sells an admixture and does not itself perform the claimed process. ¶189 col. 19:66-67

Identified Points of Contention

  • Technical Mismatch: As with the ’658 Patent, the primary point of contention is a factual one regarding the physical characteristics of the silica in Plaintiff's product. (Compl. ¶197).
  • Indirect vs. Direct Infringement: Plaintiff's argument that it is not a direct infringer because it does not perform the claimed method shifts the focus to whether it induces or contributes to infringement by its customers. (Compl. ¶189, ¶190).

V. Key Claim Terms for Construction

Term 1 ('658 Patent): "without using a superplasticizer" / "essentially superplasticizer-free"

Context and Importance: These limitations were added to all claims of the ’658 Patent during reexamination to distinguish the invention from prior art. (Compl. ¶45, ¶46). As Plaintiff instructs its customers to use a superplasticizer, the construction of this term is dispositive for the infringement analysis of the ’658 patent. Practitioners may focus on this term because its interpretation is heavily constrained by the prosecution history.

Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party might argue that "using" requires the active, intentional addition of a superplasticizer as an integral step of the claimed process, and that its mere presence from another source might not meet this definition.
  • Evidence for a Narrower Interpretation: The complaint points to powerful intrinsic evidence for a narrow, bright-line definition. The Examiner, in the Reasons for Allowance, explicitly defined "essentially superplasticizer-free" to mean that "the superplasticizer is in trace amounts of less than about 0.1% based on the weight of the cement" and distinguished prior art containing 1.5% superplasticizer on this basis. (Compl. ¶48). This statement provides a specific numerical threshold that strongly supports a narrow construction.

Term 2 ('823 Patent): "a process for the preparation of a concrete mixture in a Ready-mix"

Context and Importance: This phrase in independent claim 1 limits the scope of the claim to a specific industrial context. The definition is important for determining the boundaries of the claimed process, as Plaintiff sells its product to ready-mix concrete producers. (Compl. ¶7).

Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patentee could argue the term covers any process utilizing the equipment and general sequence characteristic of a Ready-mix operation, even if certain parameters vary.
  • Evidence for a Narrower Interpretation: The specification provides detailed descriptions of industrial-scale processes, including specific timings for agitation in a Ready-mix truck and sequences for adding materials at a plant versus in transit. (’823 Patent, col. 11:4-65). This detailed disclosure of commercial embodiments may be used to argue for a construction limited to these specific, conventional Ready-mix operational methods.

VI. Other Allegations

  • Invalidity (35 U.S.C. §§ 102, 103): Plaintiff alleges both the ’658 and ’823 patents are invalid. The core of this allegation is that Defendant's predecessor-in-interest, SPI, engaged in public use and sales of products (E5® Internal Cure®) embodying the claimed invention more than one year before the patents' earliest effective filing dates. (Compl. ¶146, ¶205-206). A social media post from March 9, 2017, includes a picture of a sample concrete slab allegedly created using the "E5 Admixture" on the preceding Saturday, which Plaintiff asserts is prior art. (Compl. ¶68, ¶150; Ex. 10).
  • Unenforceability (Inequitable Conduct): Plaintiff alleges that the patents are unenforceable due to inequitable conduct. The basis is the alleged failure of the applicant (SPI) and its inventors to disclose the material prior art of their own pre-filing public uses and sales to the USPTO during both the original prosecution and the reexamination of the ’658 Patent, with an alleged intent to deceive the agency. (Compl. ¶169-177, ¶216-223).
  • False Marking (35 U.S.C. § 292): Plaintiff alleges Defendant falsely marks its E5® admixture "products" and "system" as patented, when the patents-in-suit only claim processes of using an admixture, not the admixture product or system itself. This is alleged to be for the purpose of deceiving the public and causing competitive injury. (Compl. ¶102-104, ¶233-236).
  • False Advertising (15 U.S.C. § 1125(a)): Plaintiff alleges Defendant falsely advertises that its E5® INTERNAL CURE® product provides "internal curing," despite its predecessor allegedly admitting to the USPTO in a trademark filing that the product "does not contain or execute internal curing." (Compl. ¶37, ¶86, ¶242-245).

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

  • A central issue will be one of patent validity and enforceability: can Plaintiff prove, by clear and convincing evidence, that Defendant's predecessor publicly used or sold products embodying the patented methods more than one year prior to the patents' effective filing dates, and if so, was the failure to disclose this activity to the USPTO an act of inequitable conduct intended to deceive the patent office?
  • For the ’658 Patent, a key issue will be one of claim scope after reexamination: does the limitation "without using a superplasticizer," added to overcome prior art, create a clear and inescapable bar to infringement, thereby precluding Defendant from capturing Plaintiff's recommended process under either literal infringement or the doctrine of equivalents?
  • A key evidentiary question for both patents will be one of technical fact: does the silica in Plaintiff’s ULTRAFINISH 1L™ product fall within the specific particle size and surface area ranges recited in the asserted claims, a dispute that will turn on the credibility of competing laboratory tests and expert witness testimony.