Indiana Intellectual Property Law News
Indianapolis, Indiana – Attorneys for Plaintiffs, SNI Solutions, Inc. of Geneseo, Illinois and Natural Alternatives, LLC of Lexington, Kentucky originally filed suit in the Central District of Illinois, that has since been transferred to the Southern District of Indiana, alleging that Defendants, Univar USA, Inc. (“Univar”) of
Downers Grove, Illinois and Road Solutions, Inc. of South Bend, Indiana infringed its rights in United States Patent No. 6,080,330 (the “‘330 Patent”) for “Anti-Freezing and Deicing Composition and Method”. Plaintiffs are seeking damages, attorneys’ fees, costs, and any other relief the court deems proper.
SNI Solutions allegedly develops, manufactures, and sells de-icing agents containing de-sugared sugar beet molasses (“DSBM”) including products covered by the ‘330 Patent (“Covered Products”). State and local governments allegedly utilize DSBM for road de-icing and commercial de-icing applications. Natural Alternatives claims it develops, manufactures, and sells DSBM and the Covered Products as it is the owner by assignment of the ‘330 Patent. SNI Solutions and Natural Alternatives claim they have maintained a licensing agreement for SNI to commercialize the ‘330 Patent since October 21, 2008.
According to the complaint, Univar is or was a direct competitor of the Plaintiffs for the sale of DSBM and that Univar intended at least some of the DSBM it sold was to be combined with materials covered by the ‘330 Patent. Plaintiffs claim that Univar entered into a Letter of Intent with Todd Bloomer, the inventor of the ‘330 Patent, for Univar’s manufacture, marketing, and sale of DSBM in April 2006. Univar allegedly distributed products throughout the United States and Canada advertising the products as being protected by the ‘330 Patent between April 2006 and October 2008.
Bloomer allegedly became dissatisfied with Univar’s delay in moving forward with a licensing agreement and sent two cease and desist letters terminating the Letter of Intent in October 2008. On or about November 19, 2008, Bloomer filed a lawsuit against Univar for patent infringement, trade secret misappropriation, and trademark infringement. Just a few days after the letters were allegedly sent, Univar filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for its de-icing product ICE BITE® and received Registration No. 3,643,035 (the “‘035 Mark”). In January 2009, Univar allegedly filed a second trademark application and received Registration No. 3,800,487 (the “‘487 Mark”) (the ‘035 Mark and ‘487 Mark are collectively the “ICE BITE® Trademarks”).
Per the complaint, Univar filed a reexamination of the ‘330 Patent with the USPTO on January 23, 2009 (“First Reexam”). The Bloomer lawsuit against Univar was allegedly dismissed without prejudice about one month after the Univar’s filing with the USPTO to allow completion of the First Reexam. Univar allegedly filed a second reexamination with the USPTO on or about January 21, 2011 (“Second Reexam”). Univar then allegedly filed a third reexamination with the USPTO on or about May 26, 2011 (“Third Reexam”). The Patent Trial and Appeal Board (“PTAB”) is said to have consolidated the First Reexam, Second Reexam, and Third Reexam into a single proceeding in November 2011. According to the complaint, the PTAB issued its decision holding claims 1-23 and 25-55 of the ‘330 Patent valid on or about February 22, 2017. SNI Solutions and Natural Alternatives claim that Univar has continued marketing and selling product comprising DSBM and other products infringing the ‘330 Patent despite the Bloomer lawsuit and the PTAB’s holding of the validity of the ‘330 Patent. As such, Plaintiffs are seeking damages for inducement to infringe the ‘330 Patent against both Univar and Road Solutions and infringement of the ‘330 Patent against Road Solutions.
The case was assigned to Chief Judge Jane E. Magnus-Stinson and Magistrate Judge Debra McVicker Lynch in the Southern District and assigned Case 1:19-cv-03071-JMS-DML.