DCT
5:10-cv-00422
W Neudorff GmbH KG v. Woodstream Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: W. Neudorff GmbH KG (Germany)
- Defendant: Woodstream, Corp. (Pennsylvania) and Safer, Inc. (Delaware)
- Plaintiff’s Counsel: Fisher & Phillips LLP; Nutter McClennen & Fish LLP
- Case Identification: 5:10-cv-00422, E.D. Pa., 01/29/2010
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Pennsylvania because Defendants are located, conduct business, and have allegedly infringed in the district.
- Core Dispute: Plaintiff alleges that Defendants’ slug and snail bait, which contains Sodium Ferric EDTA as an active ingredient, infringes a patent related to ingestible mollusc poisons using ferric edetate.
- Technical Context: The technology concerns chemical compositions for molluscicides (poisons for slugs and snails) that are designed to be palatable and lethal to pests while posing a reduced toxicity risk to non-target species like pets and wildlife.
- Key Procedural History: The complaint details significant pre-suit communications, including letters from Plaintiff to Defendant in 2005 and 2009 putting Defendant on notice of the patent-in-suit. The complaint also alleges that during the EPA registration process for the accused product, Defendant unsuccessfully attempted to rename its active ingredient to distinguish it from the ingredient listed on its approved label, an event that may be central to the dispute over the chemical's identity.
Case Timeline
| Date | Event |
|---|---|
| 1994-08-25 | ’870 Patent Priority Date (Application Filing) |
| 1995-08-01 | ’870 Patent Issue Date |
| 2005-06-14 | Plaintiff sends first letter to Defendant regarding the ’870 Patent |
| 2009-06-22 | Plaintiff sends second letter to Defendant regarding the ’870 Patent |
| 2009-08-31 | Defendant responds to Plaintiff, disputing the chemical identity |
| 2010-01-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,437,870 - "Ingestible Mollusc Poisons"
- Patent Identification: U.S. Patent No. 5,437,870, issued August 1, 1995.
The Invention Explained
- Problem Addressed: The patent’s background section describes the need for an effective mollusc poison that is palatable to slugs and snails but does not pose a significant toxic threat to the environment, crops, or non-pest animals like pets, a major drawback of then-common molluscicides like metaldehyde (ʼ870 Patent, col. 1:15-24; col. 2:15-30).
- The Patented Solution: The invention is a molluscicide composition that is readily ingested by molluscs. One embodiment described in the detailed description is a composition comprising a single active ingredient—a pre-formed iron chelate like "ferric edetate"—combined with an inert bait material that is edible to molluscs (’870 Patent, col. 2:60-68). This formulation is lethal to molluscs but its constituent parts are noted as being less harmful to the broader environment.
- Technical Importance: This approach provided a method for controlling pest molluscs that was potentially safer for domestic animals and wildlife compared to broadly toxic chemical alternatives (’870 Patent, col. 2:25-30).
Key Claims at a Glance
The complaint alleges infringement of "one or more claims" without specifying which ones (Compl. ¶26). Based on the allegations regarding a single active ingredient, Claim 8 appears to be the most relevant independent claim.
- Independent Claim 8 (as corrected by Certificate of Correction):
- A terrestrial mollusc stomach poison composition, comprising:
- an effective amount of an active ingredient selected from the group consisting of ferric edetate and a ferric hydroxyethyl derivative of edetic acid; and
- an inert carrier material edible to molluscs.
- The complaint does not explicitly reserve the right to assert dependent claims, but this is standard practice.
III. The Accused Instrumentality
Product Identification
- Dr. T.’s Nature Products® Slug & Snail Killer, a granular bait product (Compl. ¶11).
Functionality and Market Context
- The accused product is a granular pesticide designed to be ingested by slugs and snails (Compl. ¶11). The complaint alleges, based on the product label, website, and Material Safety Data Sheet (MSDS), that its key functional component is the active ingredient "Sodium Ferric EDTA," present at a concentration of 6.00% by weight (Compl. ¶¶13, 15, 17). This ingredient is combined with a carrier material to form a bait that attracts and is consumed by the target pests (Compl. ¶11, 21).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
- Claim Chart Summary: The following table summarizes the infringement allegations for the most relevant independent claim, based on the facts presented in the complaint.
’870 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A terrestrial mollusc stomach poison composition, comprising: an effective amount of an active ingredient selected from the group consisting of ferric edetate and a ferric hydroxyethyl derivative of edetic acid; | The Accused Product is a mollusc poison containing 6.00% by weight of the active ingredient Sodium Ferric EDTA. The complaint asserts that Sodium Ferric EDTA is a "ferric edetate" within the meaning of the patent. | ¶10, ¶11, ¶13, ¶15 | col. 2:60-68 |
| and an inert carrier material edible to molluscs. | The Accused Product is a "granular bait product." Defendant's own pre-suit correspondence allegedly admitted that the product contains "an inert carrier material edible to the mollusc." | ¶11, ¶21 | col. 3:26-36 |
- Identified Points of Contention:
- Scope Questions: The central dispute appears to be definitional. Does the term "ferric edetate" as used in the patent encompass the "Sodium Ferric EDTA" compound that Defendant identifies as the active ingredient in its product? The complaint alleges they are equivalent (Compl. ¶10), while Defendant's pre-suit letter explicitly argues they are different chemical substances (Compl. ¶21).
- Technical Questions: What chemical evidence will be used to establish the identity of the accused ingredient? The complaint raises the question of whether Defendant’s alleged attempt to change the ingredient's name with the EPA, and the EPA's subsequent refusal, constitutes evidence that "Sodium Ferric EDTA" is the correct and accepted chemical name for the substance at issue (Compl. ¶¶22-24).
V. Key Claim Terms for Construction
- The Term: "ferric edetate"
- Context and Importance: The construction of this term is critical to the infringement analysis. The entire dispute may hinge on whether the accused ingredient, "Sodium Ferric EDTA," falls within its scope. Practitioners may focus on this term because Defendant has already staked out a non-infringement position based on its interpretation of the term's chemical meaning (Compl. ¶21).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses "ferric edetate" as a single active ingredient and identifies commercial sources, including "Lohmann ferric edetate" and a product from the "Hampshire Chemical Unit of W. R. Grace & Co." under the mark Hamp-Ene® (’870 Patent, col. 3:15-24). Plaintiff may argue that the term should be construed to cover the range of chemical structures sold under these names, which may include sodium-containing variants. The patent also lists "sodium salts" of edetic acid as a precursor in an alternative embodiment, which may suggest that sodium is a contemplated component in related chelates (’870 Patent, col. 3:66-68).
- Evidence for a Narrower Interpretation: The patent does not provide a specific chemical formula for "ferric edetate." Defendant may argue that in the absence of a specific definition, the term should be given a precise, limiting chemical meaning that excludes their "Sodium Ferric EDTA" or "Fe(OH)EDTA" compound (Compl. ¶21). They might argue that the distinction in the patent between the two-component system (using salts) and the single-component system (using "ferric edetate") implies the terms are mutually exclusive.
VI. Other Allegations
- Indirect Infringement: The complaint focuses on allegations of direct infringement through the manufacture, use, sale, and offer for sale of the accused product composition (Compl. ¶11). It does not contain specific factual allegations to support separate claims of induced or contributory infringement.
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the ’870 patent (Compl. ¶30). The factual basis for this allegation includes letters sent by Plaintiff to Defendant on June 14, 2005, and June 22, 2009, which allegedly provided notice of the patent and its relevance to products containing ferric EDTA salts (Compl. ¶¶19, 20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "ferric edetate" be construed to cover the "Sodium Ferric EDTA" that is the active ingredient in the accused product? The outcome will likely depend on expert chemical testimony and evidence regarding the commercial products identified in the patent's specification.
- A key evidentiary question will be one of estoppel or admission: what legal weight, if any, will be given to the history of Defendant's interactions with the EPA? The court will have to consider whether Defendant's ultimate decision to seek registration for its product with the active ingredient listed as "Ferric Sodium EDTA," after allegedly failing to prove it was a different substance, prevents it from now arguing the two are chemically distinct for the purposes of patent infringement.