DCT

6:24-cv-00494

Shellef Holdings Inc v. CRC Industries Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:24-cv-00494, W.D. Tex., 09/25/2024
  • Venue Allegations: Venue is alleged against CRC Industries based on its employees residing and working in the Western District of Texas. Venue is alleged against the other "Distributor Defendants" based on their operation of retail locations and fulfillment centers within the district.
  • Core Dispute: Plaintiff alleges that industrial degreasing products manufactured by CRC Industries and sold by all Defendants infringe a patent on non-flammable, non-azeotropic solvent compositions.
  • Technical Context: The technology addresses the need for effective industrial cleaning solvents that are non-flammable and more environmentally friendly than prior art solutions.
  • Key Procedural History: The complaint states Plaintiff notified CRC Industries of the patent in November 2023, followed by unsuccessful licensing discussions. It also notes that CRC Industries filed a declaratory judgment action for non-infringement and invalidity in the Eastern District of Pennsylvania in July 2024, which Plaintiff has moved to dismiss for lack of personal jurisdiction.

Case Timeline

Date Event
2014-10-24 U.S. Patent No. 9,816,057 Priority Date
2017-11-14 U.S. Patent No. 9,816,057 Issued
2023-11-17 Shellef sends notice letter to CRC Industries
2024-07-05 CRC Industries files declaratory judgment action in E.D. Pa.
2024-09-20 Shellef files motion to dismiss CRC's declaratory judgment action
2024-09-25 Complaint filed in W.D. Tex.

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

U.S. Patent No. 9,816,057 - NONFLAMMABLE COMPOSITION CONTAINING 1,2-DICHLOROETHYLENE

  • Issued: November 14, 2017

The Invention Explained

  • Problem Addressed: The patent addresses the problem that trans-1,2-dichloroethylene (t-DCE), while an effective cleaning solvent, is highly flammable. Previous methods to render t-DCE non-flammable relied on mixing it with compounds like hydrochlorofluorocarbons (HCFCs) and hydrofluorocarbons (HFCs), which are environmentally disfavored due to ozone depletion or high global warming potential (’971 Patent, col. 1:11-34; Compl. ¶51).
  • The Patented Solution: The invention is a non-azeotropic solvent composition that combines a high concentration of t-DCE with smaller amounts of hydrofluoroether (HFE) and/or n-propyl bromide (’971 Patent, Abstract). This combination is designed to suppress the flammability of t-DCE without forming a fixed-ratio azeotrope, thereby providing a versatile and powerful cleaning solution that is safer and more environmentally friendly (’971 Patent, col. 2:10-18, col. 3:14-24).
  • Technical Importance: The invention provides a formulation that leverages the cleaning power of t-DCE while mitigating its flammability, offering a safer alternative to prior t-DCE compositions for industrial degreasing applications (Compl. ¶¶53-54).

Key Claims at a Glance

  • The complaint asserts independent composition Claim 8 and dependent method Claim 9 (Compl. ¶69).
  • Independent Claim 8 requires:
    • A solvent composition comprising:
    • about 70 wt. % or more of trans-1,2-dichloroethylene (t-DCE); and
    • about 0.1 to about 20 wt. % of one or more of 1,1,2,2-tetrafluoroethyl 2,2,2-trifluoroethyl ether (HFE) and n-propyl bromide;
    • wherein the composition is non-azeotropic.
  • The complaint notes that Defendants infringe "one or more claims of the ’057 patent, including at least claims 8 and 9" (Compl. ¶69).

III. The Accused Instrumentality

Product Identification

The accused products are a line of industrial cleaning products manufactured by CRC Industries, including Cable Clean® Degreaser, T-Force® Degreaser MUO, Lectra Force Electrical Cleaner, Contact Cleaner 2000®, and others (Compl. ¶69).

Functionality and Market Context

The accused products are described as branded cleaners and degreasers for professional and industrial markets, such as automotive, electrical, and aviation (Compl. ¶55). The complaint alleges these products are sold nationwide through Distributor Defendants like Fastenal, Grainger, Motion Industries, and Rexel (Compl. ¶¶57-60). A screenshot from CRC's website shows a "Where to Buy" feature, which identifies Fastenal as a retail seller for an accused degreaser at a specific location in Waco, Texas, within the judicial district (Compl. p. 10). This visual evidence is used to support allegations of sales within the district (Compl. ¶26).

IV. Analysis of Infringement Allegations

'057 Patent Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
A solvent composition comprising: about 70 wt. % or more of trans-1,2-dichloroethylene (t-DCE); The complaint cites Safety Data Sheets (SDS) for accused products showing specified weight percentages of t-DCE. For example, the T-Force® Degreaser MUO is alleged to contain "60-70" percent t-DCE, and the Cable Clean® High Voltage Splice and Termination Cleaner is alleged to contain "80-90" percent. ¶¶72, 74 col. 4:8-13
and about 0.1 to about 20 wt. % of one or more of 1,1,2,2-tetrafluoroethyl 2,2,2-trifluoroethyl ether (HFE) and n-propyl bromide; The SDS for T-Force® Degreaser MUO, provided as a visual exhibit, specifies "20-30" percent of HFE-347PCF2 (Compl. p. 24). The SDS for the Cable Clean® product specifies "10-20" percent of the same compound (Compl. p. 26). ¶¶72, 74 col. 4:8-13
wherein the composition is non-azeotropic. The complaint alleges on "information and belief" that the accused products are non-azeotropic compositions. ¶¶72, 74 col. 4:14-18
  • Identified Points of Contention:
    • Scope Questions: A central dispute may arise over the term "about." The SDS for T-Force® Degreaser MUO lists t-DCE content as "60-70%" and HFE content as "20-30%" (Compl. p. 24). The lower bound for t-DCE ("60%") is below the claimed "70 wt. % or more," and the upper bound for HFE ("30%") is above the claimed "about 0.1 to about 20 wt. %." The infringement analysis will question whether the term "about" can bridge these numerical gaps, or if Plaintiff must rely on the doctrine of equivalents.
    • Technical Questions: The complaint alleges that the accused compositions are "non-azeotropic" on "information and belief" (Compl. ¶¶72, 74). This suggests a potential factual dispute that will require discovery and expert analysis to determine the physical properties of the accused products. For certain products containing a propellant (e.g., Lectra Force Electrical Cleaner), the complaint argues the propellant gasifies upon use, leaving behind an infringing formulation (Compl. ¶86). This raises the question of whether the "composition" should be measured in the can or as applied to the surface.

V. Key Claim Terms for Construction

  • The Term: "about"

    • Context and Importance: The construction of "about" is critical for determining literal infringement. Several accused products have SDS-listed concentration ranges whose boundaries fall outside the patent's recited numerical limits (e.g., "60-70%" t-DCE vs. "about 70 wt. % or more"). Practitioners may focus on this term because its scope could be case-dispositive for several products.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification uses "about" frequently in connection with weight percentages, including in ranges like "about 70 wt. % to about 99 wt. %" (’971 Patent, col. 2:50-51), which may suggest the patentee intended some flexibility rather than strict numerical cutoffs.
      • Evidence for a Narrower Interpretation: The patent provides tables with test results for specific compositions (e.g., 85% t-DCE, 15% HFE) that were found to be non-flammable, while others (e.g., 91% t-DCE, 9% HFE) were found to be flammable (’971 Patent, col. 3:39-44, Table 1). A party could argue these data points establish a narrow boundary of operability around the claimed values, limiting the scope of "about."

  • The Term: "non-azeotropic"

    • Context and Importance: This negative limitation is a core element of the asserted claims. Its definition will be key to determining whether the accused products, which are mixtures of solvents, fall within the claim scope. The allegation is made on "information and belief," signaling it as a likely area of factual and expert dispute.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent defines "Non-azeotropic" as referring to "mixtures that do not maintain substantially the same composition in the liquid phase and in the vapor phase at the boing [sic] point of the mixture" (’971 Patent, col. 3:16-19). Plaintiff may argue that any meaningful fractionation upon boiling meets this definition.
      • Evidence for a Narrower Interpretation: The patent's background distinguishes the invention from prior art "azeotropic mixtures" that "maintain substantially the same composition in the liquid phase and in the vapor phase" (’971 Patent, col. 1:22-25). A defendant could argue that its products are quasi-azeotropic or exhibit minimal fractionation, and thus do not meet the "non-azeotropic" requirement as understood in the context of the patent.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants direct and encourage end-users and distributors to use and sell the accused products for their intended degreasing purpose (Compl. ¶¶93-94). Contributory infringement is specifically alleged for products containing propellants, arguing they have no substantial non-infringing use because the intended "cold cleaning" use necessarily results in direct infringement after the propellant gasifies (Compl. ¶¶86, 89, 92).
  • Willful Infringement: Willfulness against CRC Industries is alleged based on pre-suit knowledge stemming from a November 17, 2023 notice letter (Compl. ¶96). Willfulness against the Distributor Defendants is alleged based on knowledge acquired "at least as of the filing and service of this complaint" (Compl. ¶97).

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

  • A core issue will be one of definitional scope: can the term "about," as used in Claim 8, be construed broadly enough to read on compositions whose specified ingredient percentages fall outside the claim's explicit numerical boundaries, such as a product containing "60-70%" of a component limited to "about 70 wt. % or more"?
  • A second central issue will be one of compositional identity: for products delivered via an aerosol can with a propellant, is the legally relevant "composition" the mixture inside the can, or is it the liquid formulation that is actually applied to a surface after the propellant has gasified, as the complaint alleges?
  • Finally, a key evidentiary question will be one of physical properties: the complaint alleges on "information and belief" that the accused products are "non-azeotropic." The case may depend on factual development and expert testimony to establish whether the accused chemical mixtures exhibit the fractionation behavior required by this claim limitation.