DCT
3:23-cv-00467
ALM Holding Co v. Hi Tech Asphalt Solutions Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: A.L.M. Holding Company (Wisconsin) and Ergon Asphalt & Emulsions, Inc. (Mississippi)
- Defendant: Hi-Tech Asphalt Solutions, Inc. (Virginia); Zydex Industries Private Limited (India); Zydex Inc. (North Carolina)
- Plaintiff’s Counsel: Patterson Thuente, P.A.
- Case Identification: 3:23-cv-00467, E.D. Va., 10/16/2023
- Venue Allegations: Venue is asserted in the Eastern District of Virginia because Defendant Hi-Tech Asphalt Solutions, Inc. is incorporated in Virginia, and because a substantial part of the events giving rise to the action, including alleged acts of infringement, occurred in the district.
- Core Dispute: Plaintiffs allege that Defendants’ ZycoTherm line of asphalt additives infringes patents related to "warm mix" asphalt compositions and methods, which allow for paving at lower temperatures.
- Technical Context: Warm mix asphalt technology enables the production and application of asphalt at significantly lower temperatures than conventional "hot mix" asphalt, providing reduced energy consumption, lower emissions, and safer working conditions.
- Key Procedural History: The patents-in-suit have a significant history. The ’725 Patent survived two separate ex parte reexaminations requested by third parties, resulting in the confirmation or amendment of all original claims and the addition of new claims. The ’466 Patent also survived an ex parte reexamination. The patents were previously asserted against Akzo Nobel and ArrMaz Custom Chemicals in the District of Delaware, which resulted in a claim construction order and, ultimately, both defendants taking royalty-bearing sublicenses. Plaintiffs allege they provided Defendants with notice of the patents-in-suit via a letter in September 2017.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-07 | Earliest Priority Date for ’725 and ’466 Patents |
| 2010-10-19 | U.S. Patent No. 7,815,725 Issued |
| 2011-07-19 | U.S. Patent No. 7,981,466 Issued |
| 2012-06-01 | Date of Material Safety Data Sheet for Accused ZT Product |
| 2013-04-01 | Reexamination Certificate C1 Issued for ’725 Patent |
| 2013-01-01 | Prior litigation filed against Akzo and ArrMaz |
| 2014-11-05 | Claim Construction Order issued in prior Delaware litigation |
| 2015-02-19 | Reexamination Certificate C1 Issued for ’466 Patent |
| 2015-03-03 | Reexamination Certificate C2 Issued for ’725 Patent |
| 2015-08-01 | ArrMaz takes sublicense in prior litigation settlement |
| 2015-10-01 | Akzo takes sublicense in prior litigation settlement |
| 2017-09-01 | Plaintiffs send notice letter to Defendants regarding patents-in-suit |
| 2017-10-01 | Defendant Zydex replies to notice letter |
| 2018-06-01 | Date of Safety Data Sheet for Accused SP Product |
| 2020-01-01 | Alleged infringing Virginia DOT projects begin |
| 2023-10-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,815,725 - "Warm Asphalt Binder Compositions Containing Lubricating Agents"
- Issued: October 19, 2010
The Invention Explained
- Problem Addressed: Traditional asphalt paving requires very high temperatures ("hot mix"), which consumes significant energy and creates emissions. The patent background notes that some prior "warm mix" solutions relied on injecting a foaming, aqueous (water-based) solution into the asphalt, which adds complexity to the process (’725 Patent, col. 1:15-24).
- The Patented Solution: The patent proposes a "functionally dry" or "essentially water-free" warm mix asphalt composition (’725 Patent, col. 2:26-28, 2:44-52). This is achieved by adding specific "lubricating agents"—such as non-aqueous surfactants, certain waxes, or acids—directly to the asphalt binder. These additives are described as having a "visco-lubricity" property that enables aggregate particles to be coated and compacted at temperatures 30-100° F lower than conventional methods, without requiring a water-based foaming process (’725 Patent, col. 2:32-44, 5:15-28).
- Technical Importance: This approach sought to deliver the energy, environmental, and safety benefits of warm mix asphalt while avoiding the process controls and potential moisture-related issues associated with aqueous-based foaming technologies (’725 Patent, col. 2:35-44).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 25 (’725 Patent, C1 col. 1:19-50, C1 col. 2:50-63; Compl. ¶¶ 41-42).
- Independent Claim 1 (as amended by Reexam C1) requires:
- A warm mix asphalt paving composition.
- Comprising a functionally dry, essentially water-free, non-foamed asphalt binder.
- The binder contains a lubricating additive (comprising a lubricating surfactant, non-surfactant, acid, or combination thereof).
- The binder is mixed with uncompacted aggregate.
- The composition is produced at and is at a warm mix temperature at least 30° F lower than a comparison composition without the additive.
- A specific limitation on wax content: if the additive is a lubricating wax, it must be 0.5 weight percent or less of the binder.
- Independent Claim 25 (added during Reexam C1) requires:
- A similar warm mix composition with a functionally dry, water-free, non-foamed binder.
- The lubricating additive is more specifically selected from a group including a lubricating surfactant, a lubricating non-surfactant other than those based on wax chemistry, a lubricating acid, or a combination.
- The composition is produced at and is at a warm mix temperature at least 30° F lower than a comparison composition.
U.S. Patent No. 7,981,466 - "Warm Mix Asphalt Binder Compositions Containing Lubricating Additives"
- Issued: July 19, 2011
The Invention Explained
- Problem Addressed: As a divisional of the ’725 Patent, the ’466 Patent addresses the same technical problem of reducing asphalt paving temperatures without relying on aqueous foaming systems (’466 Patent, col. 1:19-24).
- The Patented Solution: The ’466 Patent claims the methods of making and using the warm mix compositions. It recites specific process steps, such as adding a lubricating additive to a non-foamed binder, mixing the combination with aggregate at a temperature of 280° F or lower, applying the resulting paving material, and compacting it at a temperature of 260° F or lower (’466 Patent, col. 13:45-14:5).
- Technical Importance: By claiming the process, the patent provides a different form of protection than the composition claims of its parent, covering the actions of asphalt manufacturers and paving contractors who implement the technology.
Key Claims at a Glance
- The complaint asserts independent claims 1, 12, 17, and 20 (’466 Patent, col. 13:45-15:30; Compl. ¶¶ 47-50).
- Independent Claim 1 requires the steps of:
- Mixing a non-foamed asphalt binder with a specified lubricating additive and aggregate at 280° F or lower.
- Producing a heated paving material at a temperature 30-100° F lower than a comparison mix.
- Applying the heated material to a surface.
- Compacting the material at 260° F or lower.
- Independent Claim 20 requires the process steps of:
- Adding a lubricating substance (consisting of an antistripping agent) to a non-foamed asphalt binder to create a warm mix lubricated binder.
- Combining the lubricated binder with aggregate.
- Mixing, transferring, applying, and compacting the material.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the chemical additives ZycoTherm (“ZT”), ZycoTherm SP (“SP”), and ZycoTherm SP2 (“SP2”) (Compl. ¶37).
Functionality and Market Context
- The accused products are marketed and sold as additives for asphalt production. The complaint alleges they function both as "antistrip" agents (improving binder-aggregate adhesion) and as "warm mix additives" (Compl. ¶39).
- According to marketing materials cited in the complaint, the products enable a "temperature reduction up to 30°C (60°F) during mix production and field compaction," allow production at temperatures "as low as 135 °C (275 °F)," and permit compaction "up to temperatures of 98 °C (210 °F)" (Compl. ¶39).
- The complaint cites Material Safety Data Sheets (MSDS) and Safety Data Sheets (SDS) that identify the chemical composition of ZT as containing "hydroxyalkylalkylsilyl compounds" and SP as containing "alkoxyalkylsilyl compounds" (Compl. ¶38). The complaint alleges, on information and belief, that the products use "the same silane chemistry" (Compl. ¶38).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’725 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A warm mix asphalt paving composition comprising i) functionally dry, essentially water-free, non-foamed asphalt binder... | When used according to Defendants' instructions, the accused additives are added to a "functionally dry, essentially water-free, non-foamed asphalt binder." | ¶46 | col. 2:44-52 |
| ...containing ii) lubricating additive comprising lubricating surfactant, lubricating non-surfactant, lubricating acid or combination thereof... | The accused ZT, SP, and SP2 products are alleged to be "lubricating additives" and specifically "lubricating surfactants." This is supported by a Zydex document stating the product improves "lubrication" and a technical paper calling it a "surfactant-based silane additive." | ¶¶44-45 | col. 3:61-64 |
| ...mixed with iii) uncompacted aggregate to provide aggregate coated with binder and lubricating additive... | The accused additives are mixed with uncompacted aggregate as part of the standard asphalt production process allegedly induced by Defendants. | ¶46 | col. 2:49-52 |
| ...wherein the warm mix asphalt paving composition is produced at and is at a warm mix temperature at least 30° F. lower than a comparison temperature needed to produce a comparison paving composition... without the lubricating additive... | Marketing materials for the accused products claim a "temperature reduction up to 30°C (60°F)" and production temperatures "as low as 135 °C (275 °F)." | ¶¶39-40 | col. 2:40-44 |
’466 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of making bituminous paving comprising the steps of: (a) mixing a non-foamed asphalt binder composition and lubricating additive... with aggregate at a temperature of 280° F. or lower... | The complaint cites marketing materials for the accused products claiming they allow for production temperatures "as low as 135 °C (275 °F)," which is below the claimed 280° F threshold. | ¶39, ¶52 | col. 13:58-61 |
| ...to coat the aggregate and produce a heated paving material at a warm mix temperature at least 30-100° F. lower than a comparison production temperature... | Marketing materials are alleged to claim a "temperature reduction up to 30°C (60°F)." | ¶39 | col. 13:61-64 |
| (b) applying the heated paving material to a surface to be paved... | The complaint alleges Defendants induce this step through their marketing and distribution, which instructs end-users (paving contractors) on how to use the resulting asphalt. | ¶51, ¶72 | col. 14:1-3 |
| (c) compacting the applied paving material at a temperature of 260° F. or lower to form a paved surface. | Marketing materials for the accused ZT product are cited as claiming "consistent and easy compaction can be achieved up to temperatures of 98 °C (210 °F)," which is below the claimed 260° F threshold. | ¶39 | col. 14:4-5 |
Identified Points of Contention
- Scope Questions: A primary question will be whether the accused "alkoxyalkylsilyl compounds" fall within the scope of the claim term "lubricating surfactant." The complaint provides extrinsic evidence (a technical paper) to support this, but the patent's intrinsic evidence will be paramount. A related question is whether the accused products, marketed as "antistripping" agents, meet the definition of a "lubricating substance" or "lubricating additive" as those terms are used in the patents.
- Technical Questions: What evidence will be required to demonstrate that the accused products provide "lubrication" in the manner contemplated by the patent? The ’725 patent describes a "visco-lubricity" phenomenon characterized by a reduction in normal force during shear testing (’725 Patent, col. 5:15-28). The complaint alleges the products are "lubricating additives" based on testing and marketing claims, but does not explicitly map this to the patent's specific visco-lubricity test, suggesting a potential point of dispute over the mechanism of action.
V. Key Claim Terms for Construction
The Term: "lubricating surfactant" (’725 Patent, cl. 1; ’466 Patent, cl. 1)
Context and Importance: This term is central to the infringement allegations for key claims in both patents. Plaintiffs allege the accused silane-based products are "lubricating surfactants." The case may turn on whether this term, which appears to have a specific meaning in the context of the patent, can be construed to cover the accused chemistry. Practitioners may focus on this term because its construction will likely determine literal infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists broad categories of surfactants, including "cationic surface agents" which in turn include "non-nitrogenous sulfur or phosphorous derivatives" (’725 Patent, col. 4:5-9). This language may support an argument that the term is not limited to common soap-like molecules but extends to other chemical agents that modify surface properties.
- Evidence for a Narrower Interpretation: The specification provides specific examples of surfactants, such as ethoxylated tallow diamine (’725 Patent, col. 7:38-40), and distinguishes "lubricating surfactants" from "lubricating non-surfactant additives" like waxes (’725 Patent, cl. 1). Defendants may argue the term is limited to the classes of compounds explicitly exemplified or that it implies a specific lubricating mechanism distinct from the antistripping function for which the accused products are primarily known.
The Term: "functionally dry" / "essentially water-free" (’725 Patent, cl. 1)
Context and Importance: This limitation distinguishes the invention from prior art warm mix technologies that relied on water-based foaming. The viability of the infringement claim depends on demonstrating that the accused method of use does not involve a water-foaming process and meets this definition.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the term "does not mean and is not intended to refer to a warm mix composition that is completely free of water" and acknowledges that aggregate will contain moisture (’725 Patent, col. 2:47-52). This supports a reading that the term is relative, meaning simply avoiding the deliberate injection of water for foaming.
- Evidence for a Narrower Interpretation: The Detailed Description states that mix samples produced with a related process contained "approximately 0.5 wt %, or less, water" (’725 Patent, col. 2:25-26). A defendant could argue this phrase defines an upper limit for a composition to be considered "functionally dry."
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is predicated on Defendants' marketing materials, websites, brochures, and other instructions that allegedly direct and encourage customers (asphalt producers and paving contractors) to use the accused additives in an infringing manner (Compl. ¶¶ 65, 72). Contributory infringement is alleged on the basis that the accused additives are a material component of the patented compositions and methods, are especially made or adapted for this infringing use, and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶ 64, 71).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge. The complaint states that Plaintiffs sent a letter to Zydex and HTAS in September 2017 identifying the patents-in-suit and raising infringement concerns (Compl. ¶57). It is alleged that HTAS did not respond and Zydex did, thereby placing Defendants on notice of the patents. The continued sale of existing products and the subsequent launch of the SP and SP2 products after this date are asserted as evidence of willful infringement (Compl. ¶¶ 58, 61, 66, 73).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "lubricating surfactant," which in the patent is exemplified by chemistries like ethoxylated tallow diamines, be construed to cover the "alkoxyalkylsilyl compounds" that comprise the accused products? The outcome of this claim construction battle will be critical.
- A key evidentiary question will be one of technical mechanism: will Plaintiffs be required to prove that the accused additives function by the "visco-lubricity" mechanism detailed in the patent specification, or will proof of temperature reduction via a different "lubricating" or "antistripping" mechanism suffice to meet the claim limitations?
- A central question for damages will be willfulness: given the 2017 pre-suit notice letter, the prior litigation history involving the same patents, and Defendants' alleged continued and expanded sales, the court will have to determine whether any infringement was "objectively reckless," potentially leading to enhanced damages.