DCT

3:25-cv-00051

E5 Inc v. Premiere Concrete Admixtures LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:25-cv-00051, N.D. Ohio, 01/10/2025
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Ohio because the Defendant's principal place of business is in Pioneer, Ohio, within the district, and because Defendant allegedly conducts business and commits acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s "Ultrafinish 1L" concrete admixture, and the methods for its use, infringe two patents related to nano silica-based concrete formulations designed to improve curing and performance.
  • Technical Context: The technology involves using specific nano-scale amorphous silica particles, added to a concrete mix at a particular stage of the process, to control water retention, improve workability, and increase the final strength of the concrete.
  • Key Procedural History: The complaint details a significant history between the parties. Plaintiff alleges Defendant previously challenged the validity of the '658 Patent via an ex parte reexamination, which concluded with the USPTO confirming the patent's validity with minor amendments. Subsequently, the parties engaged in separate litigation initiated by Defendant, which was resolved via a confidential settlement agreement and dismissal in October 2024. That settlement included a covenant from Plaintiff not to sue for infringement by the "Ultrafinish 1L" product, provided it did not contain amorphous silica within specific particle size and surface area ranges. The current lawsuit is predicated on the allegation that Defendant is now selling a product that falls within those specific, carved-out ranges, thereby breaching the settlement's conditions and infringing the patents.

Case Timeline

Date Event
2018-03-09 Priority Date for '658 and '823 Patents
2022-03-22 '658 Patent Issued
2023-01-01 Accused Product "Ultrafinish 1L" Launch (approximate, "in 2023")
2023-06-01 Defendant files Request for Ex Parte Reexamination of '658 Patent
2023-12-12 Defendant sends letter regarding application for '823 Patent
2024-02-09 '658 Patent Reexamination Certificate Issued
2024-03-05 '823 Patent Issued
2024-04-03 Plaintiff sends Cease-and-Desist letter to Defendant
2024-04-11 Defendant files Declaratory Judgment action against Plaintiff
2024-10-18 Parties enter settlement agreement in prior litigation
2024-10-21 Prior litigation dismissed with prejudice
2025-01-10 Complaint Filed

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

U.S. Patent No. 11,279,658 - "Compositions for Improved Concrete Performance"

The Invention Explained

  • Problem Addressed: The patent describes the longstanding challenge in concrete formulation of balancing water content. Sufficient water is needed for workability and chemical hydration, but excess water, or water that evaporates too quickly, can lead to structural flaws like cracking, shrinkage, and reduced compressive strength (’658 Patent, col. 1:10-24, col. 2:9-16). Prior attempts to use silica additives to improve strength often exacerbated the problem by increasing the water demand of the mix (’658 Patent, col. 2:40-44).
  • The Patented Solution: The invention addresses this problem through a specific method: adding a small amount of amorphous silica with particular nano-scale size and high surface area characteristics to the concrete mix after the dry components (cement, sand, aggregate) have already been wetted with an initial portion of water (’658 Patent, Abstract; col. 4:1-9). This timing is presented as critical to immobilizing water for a more complete and extended hydration process, thereby improving strength and durability while reducing defects (’658 Patent, col. 5:1-11).
  • Technical Importance: This approach claims to enable the production of high-quality concrete even under adverse environmental conditions (e.g., high wind, low humidity) and to reduce the need for traditional, labor-intensive external curing methods (’658 Patent, col. 13:4-10).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 11 (Compl. ¶¶96-98).
  • Independent Claim 1 (as amended by reexamination) requires, in relevant part:
    • A process for preparing a concrete installation.
    • Creating a concrete mix with specific components: dry cement, water, aggregate/sand, and a quantity of amorphous silica with a particle size of 1-55 nm and/or a surface area of 300-900 m²/g.
    • The silica is dispersed without using a superplasticizer.
    • The process involves a specific sequence: combining an initial portion of water with cement and aggregate to form a "first mix."
    • The amorphous silica is then added to the "first mix" to form a "second mix."
    • A "tailwater" portion is added at a specific stage, and the mix is agitated for defined periods.
    • Finally, the concrete mix is poured to form an installation.
  • The complaint reserves the right to assert additional claims (Compl. ¶64).

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

The Invention Explained

  • Problem Addressed: The '823 Patent addresses the same technical problems as its parent, the '658 Patent, concerning water management and curing in concrete (’823 Patent, col. 1:19-35).
  • The Patented Solution: The described solution is also a method-based approach centered on the timed addition of nano-scale amorphous silica. The claims of the '823 Patent are specifically directed to a process for preparing a concrete mixture "in a Ready-mix," a common industry term for a cement mixing truck (’823 Patent, Claim 1; Compl. ¶114). The patent claims a specific sequence of combining materials within the Ready-mix to achieve the desired improvements in the final concrete product (’823 Patent, Abstract).
  • Technical Importance: The invention claims to provide a reliable method for producing high-performance concrete using standard industrial equipment like Ready-mix trucks, overcoming common field-level challenges related to mixing and environmental conditions (’823 Patent, col. 11:19-24).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 13 (Compl. ¶¶136-138).
  • Independent Claim 1 requires, in relevant part:
    • A process for preparing a concrete mixture "in a Ready-mix."
    • Creating a mix from components including dry cement, water, aggregate/sand, and amorphous silica with a particle size of 1-55 nm and/or a surface area of 300-900 m²/g.
    • A multi-step mixing process where an initial portion of water is combined with cement and aggregate to form a "first mix."
    • The amorphous silica is then added to the "first mix" to form a "second mix."
    • A "tailwater" portion is added, followed by specified agitation steps.
  • The complaint reserves the right to assert additional claims (Compl. ¶111).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Defendant's concrete admixture product sold under the name "Ultrafinish 1L" (Compl. ¶26).

Functionality and Market Context

  • Ultrafinish 1L is described as a colloidal silica admixture intended to be used in concrete preparation (Compl. ¶73). According to the complaint, Defendant’s instructions direct users to add the product to the concrete mix with the "final batch water" (Compl. ¶72).
  • The complaint alleges that Defendant markets Ultrafinish 1L as being functionally the "same" as Plaintiff's "Internal Cure" product but at a lower price, and that this marketing has led to Plaintiff losing customers (Compl. ¶28, 45, 57). The complaint further alleges that Premiere's marketing materials claim the product can improve concrete workability and "Eliminate topical curing" (Compl. ¶93, 94).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'658 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A process for the preparation of a concrete installation... Defendant's product, Ultrafinish 1L, is advertised and instructed for use in a process for preparing concrete installations. ¶67 col. 19:30-31
c) 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... On information and belief, Ultrafinish 1L contains amorphous silica with an average particle size and/or surface area within the claimed ranges, based on Defendant's alleged admissions and a request for supply of such a product. ¶73-74, 76-77 col. 7:11-16
wherein the amorphous silica is dispersed in the concrete mix without using a superplasticizer... On information and belief, Ultrafinish 1L does not include a superplasticizer and Defendant does not instruct users to add one. ¶82-83 col. 19:57-59
B) wherein the water of b) is added in...portions comprising an initial portion...and a tailwater portion; wherein the initial portion of water is combined with a) and...d) to form a first mix... Defendant's customers are directed to use Ultrafinish 1L in standard industry processes that involve adding water in portions to a mix of cement and aggregate. ¶87-89 col. 19:66 - col. 20:6
and wherein the amorphous silica is added to the first mix to form a second mix... Defendant instructs users to add Ultrafinish 1L (containing the amorphous silica) with the "final batch water," which the complaint alleges occurs after the formation of the "first mix." ¶87, 90 col. 20:3-6
D) pouring the concrete mix...to form a concrete installation; Defendant advertises Ultrafinish 1L for use in processes where the final concrete mixture is poured to form an installation. ¶94 col. 20:50-52

'823 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A process for the preparation of a concrete mixture in a Ready-mix... Defendant advertises Ultrafinish 1L for use in concrete installations involving "Ready-mix" cement mixing trucks. ¶114 col. 19:62-63
c) a quantity of amorphous silica, wherein the average particle size...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... Ultrafinish 1L allegedly contains amorphous silica with particle size and/or surface area meeting the claimed parameters. The complaint cites alleged admissions and a supply request from Defendant. ¶120-123 col. 28:22-29
B) wherein the water of b) is added in...portions comprising an initial portion...and a tailwater portion... Customers are directed to follow industry practices for Ready-mix trucks, which involve adding water in portions. ¶127-128 col. 29:1-3
wherein the initial portion of water is combined with a) and...d) to form a first mix; and wherein the amorphous silica is added to the first mix to form a second mix... Defendant instructs adding Ultrafinish 1L with "final batch water," which allegedly corresponds to adding the silica after the initial mix of cement, aggregate, and initial water is formed. ¶127, 132 col. 29:4-9

Identified Points of Contention

  • Scope Questions: The central issue arises from the prior settlement agreement. A primary question for the court will be one of evidentiary proof: does the accused Ultrafinish 1L product, as currently sold, actually contain amorphous silica with the specific particle size and/or surface area properties (1-55 nm; 300-900 m²/g) that fall within the infringement "carve-out" of the settlement's covenant not to sue (Compl. ¶43, 55)? The complaint's allegations on this point are based on "information and belief" and alleged "admissions" through marketing, which will likely be a heavily contested factual matter (Compl. ¶52, 74).
  • Technical Questions: A key technical question will be whether Defendant's instruction to introduce Ultrafinish 1L with "final batch water" (Compl. ¶72) satisfies the claims' specific, sequential limitations of forming a "first mix" and then adding the silica to it to form a "second mix." The interpretation of what constitutes a "first mix" versus a "second mix" in a real-world Ready-mix truck process will be critical. Further, the definition of "tailwater" may be disputed, as the complaint alleges that water added at a jobsite is not considered "tailwater," a distinction that could affect the infringement analysis (Compl. ¶93).

V. Key Claim Terms for Construction

  • The Term: "amorphous silica is added to the first mix to form a second mix"

    • Context and Importance: This sequence of process steps is the technological core of the asserted patents. Infringement hinges on whether the instructed use of Ultrafinish 1L meets this specific timing limitation. Practitioners may focus on this term because Plaintiff's theory of novelty and non-obviousness appears to rest heavily on the discovery that adding nanosilica after initial wetting yields unexpected results.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification repeatedly emphasizes the general principle that the silica should be added "after the combination of some or essentially all water and the dry ingredients" (’658 Patent, col. 4:1-9). This broader statement could be used to argue that any addition after initial wetting, regardless of precise "mix" definitions, falls within the claim's scope.
      • Evidence for a Narrower Interpretation: The claim language itself is highly structured, explicitly defining a "first mix" and a "second mix." The detailed examples and specific agitation timings provided in the specification could be used to argue that these terms refer to discrete, formally defined stages in a batch process, not just a general "before and after" timing (’658 Patent, col. 17:15-41).

  • The Term: "wherein the average silica particle size is in the range of from 1 to 55 nanometers and/or wherein the surface area of the silica particles is in the range of from about 300 to about 900 m²/g"

    • Context and Importance: The definition of this term is dispositive for the case due to the prior settlement agreement. The covenant not to sue was expressly conditioned on Defendant's product not having these characteristics (Compl. ¶43). Therefore, proving that the accused product meets this limitation is a prerequisite for Plaintiff's infringement claim to proceed.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The use of "and/or" is significant. This suggests that meeting either the particle size requirement or the surface area requirement is sufficient to meet the limitation. The complaint alleges this interpretation, and the fact that the same "and/or" language was allegedly used in the settlement agreement suggests the parties may have already contemplated this disjunctive meaning (Compl. ¶43, 52).
      • Evidence for a Narrower Interpretation: A defendant could argue that the term requires a specific relationship between size and surface area, or that in the context of the invention, both properties are required to achieve the claimed effect. The specification provides more preferred sub-ranges for both particle size (e.g., "less than about 10 nm") and surface area (e.g., "450-700 m²/gram"), which could be used to argue that the "and/or" should not be read so broadly as to cover combinations outside the technologically effective embodiment (’658 Patent, col. 7:14-16, col. 8:41-43).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b). The factual basis is Defendant's alleged advertising, marketing, technical data sheets, and other instructions that direct and encourage customers (e.g., ready-mix concrete producers) to use the Ultrafinish 1L product in a manner that performs the steps of the patented methods (Compl. ¶100, 140). The complaint also alleges contributory infringement under § 271(c), asserting that Ultrafinish 1L is a non-staple article of commerce with no substantial non-infringing uses when used as intended (Compl. ¶101, 141).
  • Willful Infringement: The complaint alleges that Defendant had knowledge of the patents and its infringement. The basis for this allegation is Defendant's prior actions, including filing an ex parte reexamination request against the '658 Patent on June 1, 2023, and sending a letter concerning the application for the '823 Patent on December 12, 2023 (Compl. ¶104, 144). Knowledge is also alleged based on the cease-and-desist letter Plaintiff sent on April 3, 2024, and the subsequent settlement negotiations (Compl. ¶105, 145).

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

  • A central issue will be one of evidentiary proof: can Plaintiff demonstrate through discovery and expert testing that Defendant's Ultrafinish 1L product, as sold after the prior settlement, contains amorphous silica with the specific particle size and/or surface area characteristics defined in the patent claims? The answer to this factual question appears to be a threshold issue for the entire infringement case, given the specific carve-out in the parties' prior agreement.
  • A second key issue will be one of claim construction and factual mapping: does Defendant's instruction to add its product with "final batch water" in a Ready-mix truck align with the patents' specific, sequential process of creating a "first mix" from initial water and dry components, and then adding silica to form a "second mix"? The court's interpretation of this sequence and its application to real-world industrial practices will be critical to determining infringement of the method claims.