DCT
2:25-cv-01240
Zoomessence Inc v. McCormick & Co Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ZoomEssence, Inc. (Delaware)
- Defendant: McCormick & Company, Inc., FONA International, LLC, and FONA Technologies, LLC (Maryland)
- Plaintiff’s Counsel: Miller Fair Henry PLLC; Cadwalader, Wickersham & Taft LLP
- Case Identification: 2:25-cv-01240, E.D. Tex., 12/19/2025
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendant McCormick’s infringing acts within the district and its maintenance of a "regular and established place of business." The complaint asserts this physical presence is established through contractually secured, dedicated retail shelf space that McCormick allegedly controls, designs, and audits.
- Core Dispute: Plaintiff alleges that Defendants' TrueTaste® technology, a process for converting liquids to powders, infringes two patents covering low-temperature spray drying methods and the resulting high-retention powder products.
- Technical Context: The dispute centers on technology for drying heat-sensitive ingredients, such as food flavors, into powders at near-ambient temperatures to avoid the degradation and loss of volatile components common in traditional high-heat spray drying.
- Key Procedural History: The complaint details a history between the parties beginning in 2011, including non-disclosure agreements under which Plaintiff allegedly shared proprietary information. It alleges that after discussions ended, Defendants developed and launched the accused technology. The complaint also notes that Plaintiff previously sued a different competitor, International Flavors and Fragrances, Inc., for trade secret misappropriation, resulting in a settlement. Plaintiff alleges Defendants have been aware of the patents-in-suit since at least July 2017.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-27 | Earliest Priority Date for ’776 and ’527 Patents |
| 2011-03-XX | Defendant FONA first approaches Plaintiff ZoomEssence |
| 2011-10-XX | Parties enter into a Non-Disclosure Agreement (NDA) |
| 2013-03-XX | Parties’ initial collaboration ends |
| 2016-05-10 | U.S. Patent No. 9,332,776 issues |
| 2017-01-24 | U.S. Patent No. 9,551,527 issues |
| 2017-07-06 | ZoomEssence notifies FONA of the Asserted Patents |
| 2018-XX-XX | FONA re-engages with ZoomEssence for potential partnership |
| 2019-XX-XX | Parties execute a second NDA |
| 2020-11-XX | FONA launches accused TrueTaste® technology |
| 2020-12-30 | Defendant McCormick acquires FONA |
| 2025-03-XX | ZoomEssence alleges it learned of Defendants' reverse-engineering efforts |
| 2025-12-19 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,551,527 - "Methods and Apparatus For Low Heat Spray Drying"
The Invention Explained
- Problem Addressed: The patent’s background describes the problem of conventional spray drying, which uses high-temperature gas (typically around 200° C) to produce powders from liquids (Compl. ¶91; ’527 Patent, col. 2:23-28). This high heat can undesirably alter or degrade the active ingredients being dried, such as food flavors or pharmaceuticals, resulting in reduced quality and performance (’527 Patent, col. 2:30-42).
- The Patented Solution: The invention is a method for spray drying at temperatures below 100° C (’527 Patent, Abstract). It achieves this by starting with a specifically formulated slurry that has an unusually high viscosity (500-16,000 mPa-s) and a controlled water content (20-50 wt. %), which differs from typical low-viscosity, high-water slurries used in conventional processes (’527 Patent, col. 6:17-25). This specific slurry is atomized into droplets and dried with low-temperature air, allowing the water to evaporate without thermally damaging the encapsulated ingredient (’527 Patent, col. 1:24-41).
- Technical Importance: This low-heat approach enables the creation of powdered products that retain sensitive and volatile components, which would otherwise be lost or degraded in conventional high-heat processes (Compl. ¶92).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 of the ’527 Patent (Compl. ¶144). It also alleges infringement of "one or more claims" (Compl. ¶143).
- Independent Claim 1 requires:
- A method of spray drying an ingredient into a dried powder;
- Forming a slurry with water, a carrier (starch or modified starch), and an ingredient (e.g., foods, flavors, probiotics);
- The slurry must have a viscosity of 500 to 16,000 mPa-s and a water content of 20 to 50 wt. %;
- Atomizing the slurry into droplets;
- Introducing the droplets into a drying chamber; and
- Feeding air at a temperature less than 100° C into the chamber to dry the droplets into an encapsulated powder.
U.S. Patent No. 9,332,776 - "Methods and Apparatus For Low Heat Spray Drying"
The Invention Explained
- Problem Addressed: Like its continuation (’527 Patent), this patent addresses the degradation of active ingredients caused by the high temperatures of conventional spray drying (’776 Patent, col. 2:23-42).
- The Patented Solution: This patent claims the resulting product of a low-heat drying process, rather than the method itself. The invention is a spray-dried powder characterized by its high level of ingredient preservation (’776 Patent, Abstract). The key inventive concept is that the final powder retains a weight percentage of its "principle molecular types" that is "within about 5%" of the weight percentage in the initial, pre-dried ingredient (’776 Patent, Abstract; col. 4:14-20). The specification discloses that this result can be achieved through a low-heat process, optionally using electrostatic charging to facilitate drying without heat (’776 Patent, col. 6:40-48).
- Technical Importance: The invention provides a powder with superior ingredient integrity and stability, which is demonstrated by comparing the chemical composition of the final powder to the starting liquid ingredient (Compl. ¶96).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 of the ’776 Patent (Compl. ¶181). It also alleges infringement of "one or more claims" (Compl. ¶180).
- Independent Claim 1 requires:
- A spray dried powder comprising a plurality of dried particles;
- The particles contain a final active ingredient encapsulated within a carrier;
- The particles result from drying a slurry containing an initial active ingredient, a liquid solvent, and a carrier;
- The initial active ingredient includes principle molecular types of a food, flavor, fragrance, etc.;
- The final active ingredient corresponds to the initial active ingredient as modified by drying; and
- A weight percentage of at least one of the principle molecular types in the final active ingredient is within about 5% of the weight percentage of the corresponding types in the initial active ingredient.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Accused Products" as Defendants' "TrueTaste® Technology" and the resulting dried powder products (Compl. ¶¶12, 83). The complaint alleges this technology is implemented using Fluid Air's "PolarDry®" equipment, specifically Models 050 and 050+ (Compl. ¶¶81, 148).
Functionality and Market Context
- The complaint describes the accused TrueTaste® Technology as a "low-temperature liquid-to-powder conversion process" (Compl. ¶83). Based on marketing materials for the PolarDry® equipment, the complaint alleges the system uses an electrostatic drying process at temperatures between 35° C and 100° C (Compl. ¶157). The process is intended for use with a slurry comprising water, a carrier such as starch, and an active ingredient to create an encapsulated powder (Compl. ¶¶151, 154). The complaint alleges the TrueTaste® technology was a "key driver" of McCormick's $710 million acquisition of FONA (Compl. ¶123). A promotional video for TrueTaste® allegedly shows the PolarDry® equipment in operation (Compl. ¶147; p. 42).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,551,527 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| forming a slurry including water, a carrier, and the ingredient...wherein the carrier comprises at least one selected from the group consisting of starch and modified starch... | The PolarDry® system is intended for use with a slurry made of water, a carrier, and an active ingredient; the brochure specifies "starch" as the carrier. | ¶¶151, 154 | col. 6:7-10 |
| wherein the slurry has a viscosity in a range of from 500 to 16,000 mPa-s, and contains from 20 to 50 wt. % water | The complaint alleges the accused slurry contains 40%-50% water and that a slurry with this composition "inherently has viscosities in the claimed range." | ¶¶152, 153 | col. 6:20-25 |
| atomizing the slurry to generate a spray of liquid droplets of the slurry | The accused process atomizes the slurry, where "liquid droplets of the starting material...are atomized and sprayed." | ¶155 | col. 8:1-3 |
| introducing the spray of liquid droplets of the slurry into a drying chamber | The spray of droplets is fed into a drying chamber, as shown in a diagram of the PolarDry® system. The complaint includes a diagram of the PolarDry system which depicts a drying chamber (Compl. p. 46). | ¶155 | col. 5:40-43 |
| and feeding air at temperature less than 100° C. into the drying chamber to dry the liquid droplets... | The accused process dries droplets at a temperature range of 35° C–100° C, which is within the claimed range. A marketing graphic for the PolarDry system shows this operating temperature range (Compl. p. 47). | ¶157 | col. 3:9-12 |
- Identified Points of Contention:
- Technical Questions: A potential point of contention may be whether the allegation that the claimed viscosity is "inherently" met is sufficient. The complaint relies on brochures for the PolarDry® equipment to establish its operating parameters; it does not provide direct evidence of how Defendants actually operate the equipment to produce TrueTaste® products. The analysis may raise the question of whether Defendants' specific process parameters for their commercial products fall within all claimed ranges.
- Scope Questions: The complaint alleges infringement by a system that uses "electrostatic spray drying" (Compl. ¶146). While the ’527 Patent is a continuation of a parent that discusses electrostatic drying, Claim 1 of the ’527 Patent itself does not require an electrostatic step. This raises the question of whether other, un-recited aspects of the accused process could distinguish it from the claimed method.
U.S. Patent No. 9,332,776 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A spray dried powder, comprising: a plurality of dried particles...encapsulated within a carrier resulting from drying a slurry... | The TrueTaste® product is a dry powder made from a slurry using the PolarDry® equipment, which creates a "product [that] is a powder with the desired powder properties." A provided diagram illustrates the final particle as an active ingredient encapsulated in a carrier (Compl. p. 46). | ¶¶184, 186 | col. 12:36-41 |
| the initial active ingredient includes one or more constituent components...from which at least one of a desirable food, flavor, fragrance...is obtained | The accused process is used for ingredients including, but not limited to, food, cosmetics, biopharma, probiotics, and colors. | ¶187 | col. 12:41-46 |
| a weight percentage of at least one of the one or more principle molecular types in the final active ingredient is within about 5% of a weight percentage of the corresponding principle molecular types in the initial active ingredient. | The complaint alleges this limitation is met "as shown by data provided by FONA regarding the performance of TrueTaste® Technology." | ¶189 | col. 12:49-54 |
- Identified Points of Contention:
- Evidentiary Questions: The central limitation of Claim 1 is the high-retention requirement ("within about 5%"). The complaint alleges this element is met but explicitly bases the allegation on "data provided by FONA" that is not included in the pleading (Compl. ¶189). A primary question for the case will be whether this assertion, without supporting factual data in the complaint itself, is sufficient to state a plausible claim for infringement.
- Scope Questions: The proper construction of "within about 5%" will be critical. The parties may dispute how much variance from a strict 5% is permissible under the term "about."
V. Key Claim Terms for Construction
- The Term: "slurry" (from ’527 Patent, Claim 1)
- Context and Importance: The method of the ’527 Patent is defined by the specific properties of the claimed "slurry," including its high viscosity and low water content. Practitioners may focus on this term because Defendants could argue that their starting mixture, while a liquid, does not meet the specific, unconventional characteristics required by the patent's definition of "slurry," thereby avoiding infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a general definition, stating a slurry begins with a "liquid solvent, commonly water, containing dissolved or suspended components such as an emulsion" (’527 Patent, col. 2:32-35).
- Evidence for a Narrower Interpretation: The specification repeatedly contrasts the claimed slurry with those of the prior art, emphasizing its "unconventional" nature, particularly its high viscosity (greater than 300 mPa-s) and lower water content (e.g., about 30 wt. %) compared to conventional slurries (10-200 mPa-s and 50-70% water) (’527 Patent, col. 6:17-40). This suggests the term should be construed as being limited to slurries with these specific, distinguishing properties.
- The Term: "within about 5% of a weight percentage" (from ’776 Patent, Claim 1)
- Context and Importance: This term provides the quantitative benchmark for infringement of the product claim. The entire infringement question for the ’776 Patent may depend on whether the accused TrueTaste® powder meets this numerical limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification equates this limitation with the final ingredient being "essentially the same" as the initial ingredient, which could imply a more qualitative or flexible standard (’776 Patent, col. 12:50-54). The claim itself lists a hierarchy of potential ranges ("within about 5%, 4%, 3%, or 1%"), which might suggest "about 5%" is intended as a general upper bound.
- Evidence for a Narrower Interpretation: The patent includes experimental data in Figure 11, which graphically depicts the claimed invention's performance. The data line for the patented process (402) shows very little deviation from the original ingredient (400), while the conventional process (404) shows substantial deviation (’776 Patent, Fig. 11). A party could argue that "about 5%" must be interpreted in light of this embodiment, which demonstrates a high degree of fidelity, thus limiting the permissible range of "about."
VI. Other Allegations
- Indirect Infringement: The complaint alleges McCormick induces infringement by third parties, such as its customers and its equipment partner Fluid Air (Compl. ¶¶164, 166). The alleged inducing acts include publishing promotional literature, advertising infringing features on its website, offering "Flavor University" courses that discuss drying techniques, and providing instructions and technical support to customers and partners for using the accused technology (Compl. ¶¶165, 168, 173).
- Willful Infringement: The willfulness allegations are based on alleged pre-suit knowledge of the patents. The complaint asserts that Defendants knew of the patents since at least July 6, 2017, when ZoomEssence sent FONA a notice letter identifying the ’776 and ’527 Patents (Compl. ¶¶176, 203). It further alleges knowledge based on Defendants' monitoring of Plaintiff's patent portfolio and the citation of the Asserted Patents as prior art during the prosecution of Defendants' own patents (Compl. ¶176).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary sufficiency: Does the complaint's reliance on the accused equipment's marketing materials and its conclusory allegation regarding the "within about 5%" ingredient retention—which explicitly references data not included in the pleading—state a plausible claim for infringement, or does it present a factual gap that may be challenged early in the case?
- A second key question will be one of claim scope: The dispute may turn on whether the accused process uses a "slurry" that meets the specific high-viscosity and low-water limitations of the ’527 Patent, and whether the accused product demonstrates ingredient retention "within about 5%" of the starting material as required by the ’776 Patent, the interpretation of which will be a central point of contention.
- Finally, given the detailed history of negotiations, NDAs, and a prior notice letter alleged in the complaint, a central theme of the case will be knowledge and intent. The court will be asked to determine whether Defendants' development of the accused technology was an independent effort or constituted a deliberate and willful infringement and misappropriation based on information and patents known to them through their interactions with the Plaintiff.