Solenis Technologies v. Buckman Laboratories

CourtDistrict Court, W.D. Tennessee
DecidedJuly 19, 2024
Docket2:23-cv-02413
StatusUnknown

This text of Solenis Technologies v. Buckman Laboratories (Solenis Technologies v. Buckman Laboratories) is published on Counsel Stack Legal Research, covering District Court, W.D. Tennessee primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Solenis Technologies v. Buckman Laboratories, (W.D. Tenn. 2024).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TENNESSEE WESTERN DIVISION

) SOLENIS TECHNOLOGIES, L.P., ) SOLENIS SWITZERLAND GMBH, and ) SOLENIS LLC, ) ) Plaintiffs, ) ) v. ) Civ. No. 2:23-cv-02413-JPM-tmp ) JURY TRIAL DEMANDED BUCKMAN LABORATORIES, INC., ) BUCKMAN LABORATORIES ) INTERNATIONAL, INC., and ) BULAB HOLDINGS, INC., ) ) Defendants. ) )

ORDER GRANTING MOTION TO DISMISS

Before the Court is Defendants Bulab Holdings, Inc. (“Bulab’s”), Buckman Laboratories, Inc., and Buckman Laboratories International, Inc.’s (collectively, “Defendants’” or “Buckman’s”) Motion to Dismiss and accompanying Memorandum, filed on November 6, 2023. (ECF No. 25.) Plaintiffs Solenis Technologies, L.P., Solenis Switzerland GmbH, and Solenis LLC (collectively, “Plaintiffs” or “Solenis”) filed a Response in Opposition on December 4, 2023. (ECF No. 32.) Defendants filed a Reply in Support of their Motion to Dismiss on December 18, 2023. (ECF No. 33.) For the reasons discussed below, Defendants’ Motion is GRANTED. I. BACKGROUND A. Factual Background Solenis Technologies, L.P. is a Delaware limited partnership that owns U.S. Patent No. 7,785,676 (“the ‘676 Patent”), U.S. Patent No. 8,222,343 (“the ’343 Patent”), and U.S. Patent No. 8,703,847 (“the ’847 Patent”) (collectively, the “Asserted Patents”). (ECF No. 1 at ¶ 2.) Solenis Technologies, L.P. granted an exclusive license of the Asserted Patents to Solenis Switzerland

GmbH, a Swiss corporation, which then granted an exclusive license to Solenis LLC, a Delaware limited liability company. (Id. at ¶¶ 3-4.) The Complaint alleges that Buckman Laboratories, Inc. and Buckman Laboratories International, Inc. are both subsidiaries of Bulab. (Id. at ¶ 8.) All three Defendants are Tennessee corporations based in Memphis, Tennessee. (Id. at ¶¶ 5-7.) The Asserted Patents are all titled “Glyoxalation of Vinylamide Polymer.” (Id. at ¶¶ 14- 16.) The ’676 Patent claims methods for preparing cellulose-reactive functionalized polyvinylamide adducts to, inter alia, improve strengthening agents for paper and paperboard. (Id. at ¶ 20.) Vinylamide polymers, including a class which is modified with gyoxal or cellulose reactive agents to be thermosetting, are often used as paper strengthening agents. (ECF No. 1-4 at PageID 52.) Prior methods of generating thermosetting vinylamide polymer produced a water-

soluble gel over time, led to high concentrations of volatile organic compounds that restricted the product’s use, produced adducts with a limited shelf-life, and left about half the original glyoxal unused. (Id.). Claim 1 of the ’676 Patent claims a method that both reduces these side effects and improves the strengthening effect on paper products. (Id. at PageID 52, 60.) Claim 1 of the ‘343 Patent claims a “paper or board comprising a cellulose reactive functionalized polyvinylamide adduct” where the adduct is prepared by a process akin to that in the ’676 Patent. (ECF No. 1-3 at PageID 49.) Claim 12 claims a method for increasing the wet or dry strength thereof by adding the adduct to “an aqueous slurry of cellulosic fibers” or “spraying, coating or applying” the adduct onto a wet web, paper, or board. (Id. at PageID 49-50.) Claims 1 and 2 of the ‘847 Patent claim methods for preparing an adduct similar to those in the other Asserted Patents, but with specific ranges for either the molecular weight of the vinylamide polymer or the molar ratio of amide to cellulose reactive agent. (ECF No. 1-2 at PageID 38.) Claims 8-18 claim variations of a “glyoxalated-polyvinylamide thermosetting

polymer composition[.]” (ECF No. 1-2 at PageID 38-39.) Solenis commercializes and exploits technology for generating gyloxalated polyacrylamide (“GPAM”), including under the Hercobond® brand. (ECF No. 1 at ¶ 21.) The Complaint alleges that Buckman makes, markets, and sells GPAM products and GPAM- generating services, including under the Bubond® brand, in part through technologies claimed in the Asserted Patents. (Id. at ¶ 22.) The Complaint alleges Buckman’s GPAM-generating equipment directly infringes the Asserted Patents and was tested in a way that also infringes the Asserted Patents. (Id. at ¶23.) On May 13, 2022, Solenis sent Buckman a letter regarding its on-site GPAM generation in Reading, PA, using equipment based on technology obtained from Applied Chemicals International Group AG (“ACAT”). (ECF No. 25-2 at PageID 144.)1 Solenis asserted that on-site

GPAM generation with ACAT technology could not be viably produced without infringement of at least one of four patents (collectively the “Hercobond® Patents”), three of which are the Asserted Patents. (Id.)2 It asked Buckman to provide assurances that it would abate any infringing activity. (Id. at PageID 145.) On November 4, 2022, Solenis warned Buckman that if it did not agree to refrain from unauthorized use of the Hercobond® Patents by November 17, 2022, Solenis would assume that

1 The discussed letters are referenced by the Complaint but not attached to it. (ECF No. 1 at ¶¶ 24-30.) Buckman instead submits these letters in support of this motion. See infra III.A. 2 This letter identifies the fourth Hercobond® Patent as U.S. Patent No. 9,644,320. (ECF No. 25- 2 at PageID 144.) meant Buckman could not or would not do so. (ECF No. 25-8 at PageID 162.) The letter also said Solenis’ “President Americas” would send a separate copy to Buckman’s CEO. (Id.) The Complaint asserts that this letter also asked for information concerning Buckman’s on-site GPAM generation. (ECF No. 1 at ¶ 27).

On November 23, 2022, Buckman requested more information so it could review Solenis’ allegations. (ECF No. 25-3 at PageID 147.) It asked for clarification on a limitation the Asserted Patents share, where an adduct has a maximum viscosity “measured using a BROOKFIELD viscometer at a speed of 60 rpm and a temperature of 25 degrees C[.]” (Id.; ECF No. 1 at ¶ 28.) Buckman did not mention on-site GPAM generation activities. (ECF No. 1 at ¶ 28.) On April 24, 2023, counsel for Solenis replied that it believed the Asserted Patents were “likely to be highly relevant to processes that Buckman” made, used, offered to sell, or sold in the United States. (ECF No. 1 at ¶ 29; ECF No. 25-4 at PageID 149.) The letter also stated that the nature of the Asserted Patents’ claims and of Buckman’s activities made it impossible for Solenis to determine if such activities fell within the scope of those claims. (ECF No. 25-4 at PageID 149.)

The letter again asked Buckman for information about its processes to the extent necessary to make such a determination by May 15, 2023. (Id.) On May 15, 2023, Buckman asked Solenis to respond to the questions posed on November 23, 2022, so Buckman could conclude its due diligence and move forward with this matter. (ECF No. 25-5 at PageID 152-3.) The Complaint asserts that to date, Buckman failed to provide relevant information in response to the April 2023 request, and remained unresponsive until the Complaint was filed. (ECF No. 1 at ¶¶ 30-31.) B. Procedural Background Solenis filed its Complaint on July 7, 2023. (ECF No. 1.) The Complaint asserts that Buckman’s GPAM generation activities at third-party facilities infringe the Asserted Patents, but acknowledges that Solenis “is unaware of any analytical technique or means to ascertain conclusively whether Buckman’s GPAM generation activities, processes, or resulting products

infringe any claim of the Asserted Patents.” (Id. at ¶¶ 32-33.) Solenis seeks to use the judicial process to obtain the necessary information to confirm the infringement. (Id. at ¶ 34.) The Complaint also alleges direct infringement of Claims 1 and 8 of the ’847 Patent (Id. at ¶¶ 37-38); induced infringement of the same by providing equipment for GPAM generation and encouraging third parties to use it in an infringing manner (Id.

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