Choosing to invalidate PeroxyChem's "038" patent in the recent infringement case brought against IET by PeroxyChem, IET files for "Summary Judgement" in Federal District Court.
PRLog - April 30, 2015 - PHILADELPHIA -- April 28, 2015: Innovative Environmental Technologies, Inc. (IET) files for “Summary Judgement”.
Michael Scalzi, President of IET, explains: “In the filing for a “Summary Judgement” by IET, we had several options: Non-Infringement and Invalidity of the Patent were a couple. On advice of our attorneys and the strength of the case, IET has filed for “Partial Summary Judgement” declaring the “038” patent unenforceable.”
“Defendant IET’s Motion for Partial Summary Judgment raises a narrow but central issue here — whether the Patent Act’s one-year “printed publication” bar precludes Peroxychem from pursuing claims against IET for alleged infringement of the ‘038 Patent.”
The ‘038 Patent describes a method for combining persulfates compounds and zero valent iron to treat organic chemical contamination of soil and groundwater. The ‘038 Patent’s co-inventors, Dr. Richard Brown and Dr. Philip Block, jointly authored an “abstract” of a technical paper on the same topic, titled: “Simultaneous Reduction and Oxidation: Combining Persulfate with Zero Valent Iron.” (the “ZVI Abstract”).
In July 2004, Dr. Brown published the ZVI Abstract to members of the “International Scientific Committee” of the “Third Annual Conference on Oxidation and Reduction Technologies for In-Situ Treatment of Soil and Groundwater” (“ORTs-3″). Himself one of 23 members of the Committee, Dr. Brown intended to present the findings disclosed in the ZVI Abstract at the ORTs–3 Conference, to be held in San Diego over four days in late October 2004.
Although widely distributing their ZVI Abstract in July 2004, Dr. Brown and Dr. Block delayed filing their provisional application for the ‘038 Patent until October 20, 2005. Under 35 U.S.C. § 102 and the cases applying that statute, the ZVI Abstract is a “printed publication” that fully disclosed to industry experts all claims and methods within the ‘038 Patent’s scope. Under § 102’s printed publication bar, the ZVI Abstract thus represents “prior art,” mandating that the Court enter summary judgment for IET on Peroxychem’s patent infringement claim.
The ‘038 Patent and Peroxychem’s Infringement Claim
On October 20, 2005, Dr. Brown and Dr. Block filed provisional application No. 60/728,626 with the Patent and Trademark Office, which identified FMC Corporation (Peroxychem’s predecessor) as the application’s assignee.’ On August 31, 2010, the PTO granted U.S. Patent No. 7,785,038.
According to ‘038 Patent’s “Abstract” section, the invention discloses an improved method and compositions for treating organic compounds present in soil, groundwater and other environments …. The method involves the use of a composition comprising a solid state, water soluble peroxygen compound and zero valent iron.” The ‘038 Patent further describes “the invention claimed” as “amethod of oxidizing a contaminant present in an environmental medium, said method comprising contacting the contaminant with a composition comprising a water soluble persulfate compound and zero valent iron wherein the persulfate compound is a dipersulfate."
In Count I of the First Amended Complaint, brought against defendant IET only, Peroxychem claims that IET infringed the ‘038 Patent “by practicing one or more of the methods claimed in the ‘038 Patent related to, inter alia, the treatment of organic compounds present in soil, groundwater and other environments.” As described by Peroxychem, the ‘038 Patent “teaches an improved method and compositions for treating organic compounds present in soil, groundwater and other environments. The method involves the use of a composition comprising a solid state, water soluble Peroxygen compound and Zero valent iron.”
Statement of Material Facts
The ‘038 Patent identifies Dr. Richard Brown and Dr. Philip Block as its co-inventors, and FMC Corporation as the ‘038 Patent’s assignee. [Exh. “1” (Cover Sheet)]. At some point in 2004, but certainly before July 12, 2014, Dr. Brown authored an abstract of a technical paper describing a combination of certain persulfate compounds, including sodium persulfate, and zero valent iron were effective in removing toxic organic chemicals from soil and groundwater.
By way of background, the ORTs-3 Conference, held in San Diego between October 24th and 28th, 2004, brought together environmental remediation experts from academia, research institutions, and industry to freely exchange information and developments about new remediation technologies. Like the other ORTs Conferences, ORTs-3 began with a request for “Abstracts” of papers on technical developments in the remediation field that would be presented by the Abstracts’ authors at the live sessions scheduled throughout the 4-day OTRs-3 Conference. [Exh. “3” (Declaration of John Haselow)].
On July 12, 2004, Dr. Brown sent an email to all Committee members confirming their earlier receipt of the Abstracts submitted by ORTs-3’s presenters. Among the Abstracts that he distributed to Committee members, Dr. Brown included the ZVI Abstract that he had co-authored with Dr. Block under the title: “Simultaneous Reduction and Oxidation: Combining Persulfate with Zero Valera, Iron.
Dr. Brown’s July 12, 2004 email also provided Committee members with “Instructions for Abstract Review.” His instructions began with a request that members review all Abstracts, including Abstracts assigned to Conference sessions other than sessions in which the reviewing member was participating. Dr. Brown explained that if a member found an Abstract assigned to another session of particular relevance to a topic of one of the reviewer’s assigned sessions, the member should contact the appropriate session chair to request that the presentation be transferred to his own session. [Exh. “7” (Dr. Brown’s “Instructions for Abstract Review”)].
In addition to asking members to create a list of all Abstracts assigned to their own Conference sessions, Dr. Brown requested that Committee members “create ordered [lists] (descending order of preference) of abstracts for the session. Session chair will send this list to Dick Brown, with copy to [ORTs-3 Sponsor and principal organizer] Hussain Al-Ekabi. I will make final assignment based on the slots available using the ordered list.”
Once finalized, the Conference program was published on both the ORTs–3 website and the website of Dr. Brown’s employer, ERM, Inc., which was an ORTs–3 Sponsor. [Exh. “8” (ORTs-3 and ERM websites)]. In addition to program and scheduling information, both websites published the full title of each presenter’s Abstract, including Dr. Brown’s “Simultaneous Reduction and Oxidation: Combining Persulfate with Zero Valent Iron.
More than one year before filing the ‘038 provisional application, Dr. Brown distributed the ZVI Abstract without restriction to the Scientific Committee’s members, each of whom possessed expertise in environmental remediation technologies.
On review of the ZVI Abstract, anyone skilled in the remediation field could make the invention claimed in the `038 Patent without further research or experimentation.
Indeed, the ‘038 Patent’s co-inventor, Dr. Philip Block, conceded that that the ZVI Abstract disclosed the invention PeroxyChem claims under the ‘038 Patent.
Later in his deposition, Dr. Block again agreed that “the invention under [P]atent ‘038 is about the improvement of treating contaminants with the combination of zero valent iron and persulfate … and that’s disclosed” in the ZVI Abstract. [Exh. “11” at 236:05 to 236:12].
Comparing the ZVI Abstract’s disclosures to the ‘038 Patent’s claimed invention, Dr. Block could not have credibly testified otherwise. As described in the `038 Patent’s “Abstract” section, the claimed invention claimed is simply a “method” for treating environmental contaminants that “involves the use of a composition comprising a solid state, water soluble peroxygen compound and zero valent iron.” As almost identically described in the ‘038 Patent’s “Summary of the Invention” section, “[t]he disclosed method used a composition describing one or more solid phase peroxygen compounds and zero valent iron under conditions sufficient to oxidize contaminants as VOCs, SVOCs, herbicides, and pesticides in contaminated soils and water.”
Conclusion
Distributed without restriction to academics, researchers, and industry representatives who were all experts in the environmental remediation field, the ZVI Abstract is a “printed publication” that was available more than one year before the provisional application’s filing date. The ZVI Abstract disclosed all important elements of the ‘038 patent, such that with that prior reference in hand, any person interested in the field could have made the invention without further research or experimentation.
Accordingly, this Court should declare the ‘038 Patent invalid under the one–year printed publication bar set forth in 35 U.S.C. § 102, and grant IET’s Motion for Partial Summary Judgment on Count I of Peroxychem’s First Amended Complaint.
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Innovative Environmental Technologies, Inc. (IET) files for "Summary Judgement" in PeroxyChem Litigation
April 30, 2015 at 09:23 AM EDT
