DCT
3:24-cv-00033
Topsoe, Inc. v. Casale US, Inc.
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Topsoe, Inc. (Texas)
- Defendant: Casale US, Inc. (Texas); Casale SA (Switzerland)
- Plaintiff’s Counsel: Reed Smith LLP; Morrison & Foerster LLP
- Case Identification: 3:24-cv-00033, S.D. Tex., 05/02/2024
- Venue Allegations: Venue is alleged to be proper as Defendant Casale US, Inc. is a Texas corporation with its principal place of business in the district, and because Defendants allegedly committed acts of unfair competition and patent enforcement in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's patent related to low-carbon ammonia production is unenforceable due to alleged inequitable conduct during prosecution, and asserts related claims of unfair competition and false advertising.
- Technical Context: The technology concerns processes for producing "blue" or low-carbon ammonia by modifying conventional synthesis methods to reduce carbon dioxide (CO2) emissions, a key goal for sustainability in the chemical industry.
- Key Procedural History: The complaint alleges that Defendant Casale asserted the patent-in-suit against Plaintiff Topsoe and one of its customers. This assertion occurred after an opposition was filed against the patent's European counterpart, raising questions of validity based on prior art. Subsequently, Casale initiated an ex parte reexamination of the U.S. patent at the USPTO, which is currently ongoing. The USPTO found a "substantial new question of patentability" affecting all claims.
Case Timeline
| Date | Event |
|---|---|
| 1988-05-01 | Topsoe-designed IFFCO ammonia plant Unit 1 commissioned in India |
| 2009-12-03 | Topsoe presents paper on its technology at FAI Annual Seminar |
| 2014-01-01 | Casale begins revamp project on Topsoe-designed IFFCO plant |
| 2017-02-15 | Earliest Priority Date for ’168 Patent |
| 2019-08-13 | U.S. application leading to ’168 Patent filed |
| 2022-03-29 | ’168 Patent issues |
| 2022-06-08 | Opposition filed against European counterpart to ’168 Patent |
| 2022-11-01 | Casale allegedly communicates with Topsoe customer re: ’168 Patent |
| 2023-02-16 | Casale files request for supplemental examination of ’168 Patent |
| 2023-06-28 | USPTO orders ex parte reexamination of ’168 Patent |
| 2024-05-02 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,286,168 - "PROCESS FOR THE SYNTHESIS OF AMMONIA WITH LOW EMISSIONS OF CO2IN ATMOSPHERE"
- Issued: March 29, 2022
The Invention Explained
- Problem Addressed: Conventional ammonia synthesis plants are a significant source of CO2 emissions, largely from the combustion of natural gas in furnaces used to heat the process reformers (Compl. ¶55; ’168 Patent, col. 1:41-45).
- The Patented Solution: The patent describes a process to reduce these emissions by modifying the fuel source. After natural gas is converted into a "synthesis gas" and treated to remove most of the CO2, the resulting hydrogen-rich gas stream is split. A portion, termed the "fuel fraction," is diverted and used as fuel in the plant's furnaces. Because this fuel is primarily hydrogen, its combustion produces water instead of CO2, thereby lowering the plant's overall emissions. The remaining "process fraction" continues on to the ammonia synthesis loop (Compl. ¶53; ’168 Patent, Abstract, col. 3:5-9).
- Technical Importance: This approach offers a method for decarbonizing ammonia production, a highly energy-intensive and critical industrial process, by repurposing an internal process stream as a cleaner fuel source (’168 Patent, col. 2:5-9).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 21 as central to the dispute (Compl. ¶¶119-120).
- Independent Claim 1 (as amended in reexamination) recites a process for ammonia synthesis comprising:
- Converting desulphurized natural gas and steam into a synthesis gas in a conversion section including an autothermal reformer.
- Treating the synthesis gas (via shift reaction and CO2 separation) to obtain a CO2-depleted synthesis gas.
- Separating a part of the CO2-depleted synthesis gas as a fuel fraction.
- The separation includes a "split" of the CO2-depleted gas into a first (fuel) stream and a second (process) stream.
- Critically, the claim requires "said first and second streams having the same composition".
- Independent Claim 21 (cancelled in reexamination) recited a method for revamping an existing ammonia plant comprising:
- Providing a flow of enriched air or oxygen as an oxidant to the secondary reformer.
- Separating a part of the synthesis gas, downstream of decarbonation, for use as a fuel fraction.
- Allocating the remaining process fraction for ammonia conversion.
- Feeding the fuel fraction to at least one furnace.
- The complaint does not explicitly reserve the right to assert dependent claims, as it seeks to have the entire patent declared unenforceable (Compl. ¶101).
III. The Accused Instrumentality
Product Identification
- The dispute centers on Plaintiff Topsoe's own "SynCOR™" low-carbon or "blue" ammonia process technology (Compl. ¶34, ¶82).
Functionality and Market Context
- The complaint states that Casale has accused Topsoe’s SynCOR™ process of infringing the ’168 Patent (Compl. ¶82). The accusation is based on a schematic diagram of the SynCOR™ process, which Casale allegedly asserted was "self-evident" of infringement (Compl. ¶¶84-85). A diagram from a 2022 Topsoe paper shows the SynCOR process, including a step where a process stream is split, with a portion labeled "Fuel" being directed to a "Fired heater" (Compl. ¶84).
- Topsoe alleges that its low-carbon ammonia technology, including the feature of splitting a synthesis gas stream to be used as fuel, has been in commercial use and publicly described for decades, predating Casale's patent filing (Compl. ¶¶37, 39, 46). For example, a simplified diagram from a 2009 Topsoe presentation shows a "Syngas" stream being split, with a portion labeled "Excess syngas" being routed as "Fuel" back to the reformer (Compl. ¶127).
IV. Analysis of Infringement Allegations
The following table summarizes Casale's infringement allegations against Topsoe's SynCOR™ process, as described in the complaint.
’168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A process for synthesis of ammonia from natural gas, the process comprising: conversion of a charge of desulphurized natural gas and steam...into a synthesis gas...in a conversion section | The SynCOR™ process starts with natural gas and produces synthesis gas through autothermal reforming (ATR) and other steps. | ¶84 | col. 18:39-44 |
| treatment of said synthesis gas including at least a shift reaction of the carbon monoxide into CO2, and subsequent separation of CO2 from the gas, thus obtaining a CO2-depleted synthesis gas | The SynCOR™ process diagram shows steps for high and low temperature shift, followed by a "CO2 removal" unit. | ¶84 | col. 18:45-48 |
| separation of a part of said CO2-depleted synthesis gas as fuel fraction, wherein said fuel fraction is fed as fuel to at least one furnace | After CO2 removal, the SynCOR™ process diagram shows a stream splitting, with one part designated as "Fuel" and directed to a "Fired heater". | ¶84 | col. 18:49-53 |
| wherein said separation of the fuel fraction includes the split of said CO2-depleted synthesis gas into at least a first stream and a second stream, said first and second streams having the same composition | Topsoe alleges its prior art process, which it claims is embodied in SynCOR™, splits the synthesis gas into two streams of the same composition, a feature it alleges Casale misappropriated. | ¶53, ¶126 | col. 18:53-56 |
| wherein the first stream forms the fuel fraction and the second stream is process gas intended for the synthesis of ammonia. | In the SynCOR™ diagram, the "Fuel" stream goes to the heater, while the other stream proceeds toward the "Ammonia conversion" unit. | ¶84 | col. 18:56-57 |
- Identified Points of Contention: The core of the case is not a typical technical dispute over infringement, but a foundational challenge to the patent's enforceability.
- Priority and Originality: The central question is one of inventorship and timing. Topsoe alleges that its own publicly disclosed technology and commercial processes, dating back to at least 2009, already included the key features of the ’168 Patent, particularly the splitting of a synthesis gas stream of the same composition to be used as fuel (Compl. ¶¶37, 46, 126). This raises the question of whether the claimed invention was actually novel and non-obvious at the time of filing.
- Prosecution History and Materiality: A key issue will be the arguments Casale made to the USPTO. The complaint alleges Casale overcame a prior art rejection by arguing that the "distinguishing feature" of its invention was splitting the gas into two streams "having the same composition" (Compl. ¶123). This raises the question of whether Topsoe's alleged prior art, which Casale allegedly knew about and failed to disclose, was material to the examiner's decision to allow the claims (Compl. ¶133, ¶134).
V. Key Claim Terms for Construction
- The Term: "said first and second streams having the same composition"
- Context and Importance: This phrase appears to be the lynchpin of the patent grant. According to the complaint, Casale successfully argued to the USPTO that this specific feature distinguished its invention from the prior art of record, leading the examiner to withdraw an obviousness rejection (Compl. ¶55, ¶125). Therefore, the definition of this term and whether it was disclosed in the alleged undisclosed prior art is critical to Topsoe's inequitable conduct claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide significant support for a broad interpretation. The language is specific. A party might argue it means any split that occurs without an intervening chemical or physical separation process that would alter the composition, such as a membrane or absorption unit.
- Evidence for a Narrower Interpretation: The specification explicitly states that as a result of splitting a process flow, "the fuel fraction and the remaining part of the gas...have the same composition" (’168 Patent, col. 3:7-9). This suggests a straightforward, literal interpretation: the two resulting streams are chemically identical at the point of the split.
VI. Other Allegations
- Inequitable Conduct: This is the central allegation of the first count, rather than a secondary claim of indirect or willful infringement.
- Topsoe alleges that Casale, its inventors (Baratto and Ostuni), its CTO (Filippi), and its attorneys knew of material prior art but deliberately withheld it from the USPTO with an intent to deceive (Compl. ¶¶102, 149).
- The allegedly withheld prior art includes Topsoe's 2009 FAI conference paper and presentation, and knowledge of Topsoe's technology installed at the IFFCO fertilizer plant, which Casale itself helped revamp (Compl. ¶¶112, 126-128).
- The complaint alleges this withheld art was highly material because it disclosed the very feature—splitting a synthesis gas stream of the same composition for use as fuel—that Casale argued was its novel, distinguishing invention (Compl. ¶¶133-134).
VII. Analyst’s Conclusion: Key Questions for the Case
- Inequitable Conduct: The primary issue is factual and state-of-mind dependent: can Topsoe prove by clear and convincing evidence that Casale's inventors and attorneys had pre-filing knowledge of specific, material Topsoe prior art, and that they deliberately withheld this information from the USPTO with the specific intent to deceive the patent examiner?
- Prior Art Materiality: A crucial technical question is whether the alleged prior art, such as Topsoe's 2009 FAI paper and the IFFCO plant design, actually taught the critical limitation of splitting a CO2-depleted synthesis gas into two streams "having the same composition." The case may turn on whether this exact feature was unambiguously disclosed in the prior art that Casale allegedly concealed.
- Unfair Competition: Separate from the patent's enforceability, a key question for the Lanham Act claim is whether Casale’s communications to a Topsoe customer, in which it asserted a patent that it allegedly knew was procured through inequitable conduct and was already facing validity challenges in Europe and the U.S., constituted false or misleading commercial statements made in bad faith.