Ferox, LLC v. Conseal International, Inc.

175 F. Supp. 3d 1363, 2016 WL 1242165
CourtDistrict Court, S.D. Florida
DecidedMarch 30, 2016
DocketCase No. 14-60048-CIV-GAYLES
StatusPublished
Cited by7 cases

This text of 175 F. Supp. 3d 1363 (Ferox, LLC v. Conseal International, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ferox, LLC v. Conseal International, Inc., 175 F. Supp. 3d 1363, 2016 WL 1242165 (S.D. Fla. 2016).

Opinion

ORDER

DARRIN P. GAYLES, UNITED STATES DISTRICT JUDGE

THIS CAUSE comes before the Court on two Motions for Summary Judgment: one filed by Defendant/Counter-Plaintiff ConSeal International, Inc. (“ConSeal”), and Defendants Earth Eco Research, LLC (“Earth Eco”); Genesis Pure, Inc. (“Genesis”); and Green Foot Global, LLC (“Green Foot”) (collectively, the “Defendants”) [ECF No. 42], and one filed by Plaintiff/Counter-Defendant Ferox, LLC (“Fer-ox”) [ECF No. 45].

Ferox and ConSeal are both manufacturers of ferrocene-based fuel additive products that require registration with the Environmental Protection Agency (“EPA”). Ferox brought this action against ConSeal and the other Defendants (Con-Seal’s distributors) alleging infringement of U.S. Patent No. 7,959,693 (the “’693 Patent”), relating to certain fuel additive products containing a combination of ferro-cene and biphenyl. Ferox accuses ConSeal of manufacturing and selling products with the same chemical composition as a product of Ferox’s that is covered by the ’693 Patent (the “Accused Products”). In their Answer, the Defendants state that a 2009 agreement between ConSeal and Ferox regarding access to EPA-required health and safety testing data (Defs.’ Mot. Ex. 18, hereinafter the “Agreement”1) contained a license to ConSeal to manufacture its own [1366]*1366products of this specific chemical composition, which acts as a complete defense to Ferox’s claim of patent infringement. Con-Seal separately advanced a counterclaim for fraudulent inducement against Ferox, alleging that Ferox made false representations of fact to induce ConSeal to enter into the Agreement.

The Court has considered the briefs, the exhibits attached thereto, and the applicable law. For the reasons that follow, the Defendants’ motion shall be granted as to the license issue and Ferox’s motion shall be granted as to the fraudulent inducement counterclaim. The motions shall otherwise be denied.

1. BACKGROUND2

Ferox (and its predecessors) and Con-Seal have both been manufacturing and selling fuel additive products for several decades. More than a decade ago, W. Wesley Parish, a managing member of Ferox between 2008 and 2014, developed a particular fuel additive product that combines a fuel-soluble ferrocene (iron) compound with biphenyl, an inert carrier. Ferox filed a patent application on this invention in 2005, and on June 14, 2011, the U.S. Patent and Trademark Office issued the ’693 Patent to Parish and Michael D. Thompson. Ferox, LLC, is listed as the assignee of the Patent.

Ferrocene-based fuel additive products require EPA registrations before they can be manufactured and sold for gas and diesel on-road use. To obtain those registrations, applicants seeking to register an additive must provide specific health and safety effects data — referred to as “Tier 1 data” — under 40 C.F.R. Part 79. Obtaining sufficient data for fuel additive products is a lengthy and expensive process — lasting up to two years and costing somewhere between two million and five million dollars. That said, an applicant seeking a fuel additive registration is permitted to rely on another party’s Tier 1 data if that applicant meets certain requirements under 40 C.F.R. Part 79.

Econalytic Systems, Inc. (“Econalytic”), a third party, already possessed sufficient Tier 1 data. Prior to 2007, Ferox relied on Econalytic’s Tier 1 data to obtain EPA registrations for its fuel additive products. In or around 2007, Econalytic stopped selling ferrocene to Ferox, and Ferox was no longer entitled to rely on Econalytic’s Tier 1 data to obtain EPA registrations for its [1367]*1367fuel additive products. Ferox submitted a demand for arbitration in 2008, seeking a decision that would require Econalytic to either sell Ferox ferrocene or allow Ferox to rely on Econalytic’s Tier 1 data in exchange for appropriate reimbursement. In the interim, Ferox decided that obtaining its own Tier 1 data was not a good option due to the aforementioned cost and time requirements.

In Spring 2008, ConSeal’s principal, Steve Perry, began communicating with Parish. Ferox was aware that ConSeal was a manufacturer of ferrocene-based fuel additive products and was selling those additives to distributors. The two entities spoke about Econalytic’s Tier 1 data. During this time, Ferox developed the idea of purchasing permanent access to Econalytic’s Tier 1 data and began to communicate with Econlaytic regarding same.

ConSeal also needed access to Tier 1 data in order to sell fuel additive products. In an email from Parish to Perry, dated November 15, 2008, with the subject “Cost sharing,” Parish, in discussing the potential costs of accessing Econalytic’s Tier 1 data, wrote, “By the time we pay Econa-lytic Systems the $200,000 to access their Tier 1 submission, their Tier 2 data and test results for gasoline and diesel, this deal will have cost us more than $250,000. Please confirm that you are willing to split these costs.” Defs.’ Mot. Ex. 8. He further wrote, “The proposed payment schedule [between Ferox and Econalytic] is $25,000 upon execution of the agreement, $25,000 in 90 days, $50,000 at 12 months, $25,000 at 18 months, $50,000 at 24 months and $25,000 at 30 months for a total of $200,000.” Id. Two days later, Perry replied, “Our 50% is no problem so let me know when what and where.” Id. (all errors [sic] ).

John Hill, a Ferox principal, testified that ConSeal knew Ferox was entering into an agreement with Econalytic regarding access to the Tier 1 data. On December 9, 2008, Hill wrote an email to Perry, stating, “The way the agreement [between Ferox and Econalytic] is worded right now, if we were late on a payment [Jack Kracklauer, a principal of Econalytic] can cancel the agreement and notify the EPA and cancel our registration. I don’t think we would ever be late on a payment, but that is a lot to hold over our head, which is why I am hesitant unless I know that the money is there upfront.” Defs.’ Mot. Ex. 10; see also Defs.’ Mot. Ex. 7 (Hill Dep.) 19:14-20:11, 16:20-17:1. Perry responded: “Hey, I am on with Wes. Please don’t be concerned about the $. It’s not just words John. We’ve gone over what Jack wants, and I am in agreement with Wes.” Defs.’ Mot. Ex. 10.

As early as December 22, 2008, Ferox knew that it would need to pay only $185,000 to Econalytic in satisfaction of their agreement. No one from Ferox informed anyone from ConSeal that Parish’s initial estimate of $250,000 was different than the amount Ferox would ultimately pay to Econalytic.

Following several rounds of revisions, ConSeal and Ferox executed the final version of the Agreement on February 12, 2009. Section 4.1 of the Agreement provides:

Ferox hereby grants to ConSeal a perpetual, non-exclusive, irrevocable right to select, use and rely upon Ferox’s present and any future fuel additives based on Tier 1 Data for Ferox’s EPA-registered Iron Atypical Diesel Fuel Additives and Iron Atypical Gasoline Fuel Additives for private label manufacture, sale and distribution by ConSeal as “re[1368]*1368labeled additives” under the relabeling provisions of 40 CFR part 79.

Agreement § 4.1.

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Bluebook (online)
175 F. Supp. 3d 1363, 2016 WL 1242165, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ferox-llc-v-conseal-international-inc-flsd-2016.