Clean Chemistry, Inc. v. Enviro Tech Chemical Services, Inc.

This Inter Partes Review (IPR) involves a dispute between two operating companies in the industrial chemical and water treatment sectors. Clean Chemistry, Inc. ("Clean Chemistry"), the IPR petitioner and district court defendant, is a technology-forward organization specializing in water treatment and microbial control solutions, particularly known for its PeroxyMAX™ oxidant technology used in energy, food and beverage, and pulp and paper industries. Enviro Tech Chemical Services, Inc. ("Enviro Tech"), the IPR patent owner and district court plaintiff, is a prominent manufacturer and supplier of peracetic acid formulations and bromine-based biocides, serving a broad range of industries including food processing, water treatment, and oil & gas. The core of the dispute centers on Clean Chemistry's PeroxyMAX™ product and its manufacturing methods, which Enviro Tech alleges infringe its patents.

The asserted patent in this specific IPR, U.S. Patent No. 9,730,443 ("the '443 patent"), generally describes methods and compositions for generating non-equilibrium peracetic acid solutions on-site, involving the reaction of triacetin and aqueous hydrogen peroxide in water, followed by the addition of an alkali metal or earth alkali metal hydroxide. This IPR, filed before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB), stemmed from a patent infringement lawsuit initiated by Enviro Tech against Clean Chemistry in the U.S. District Court for the Western District of Texas, styled Enviro Tech Chemical Services, Inc. v. Clean Chemistry, Inc., No. 1:24-cv-01313, presided over by Judge Alan D. Albright. The Western District of Texas is a notable venue for patent litigation known for its expedited dockets.

This case is particularly notable due to the PTAB's discretionary denial of institution of the IPR, a decision influenced by the advanced stage of the parallel district court litigation. Clean Chemistry filed its IPR petition more than ten months after Enviro Tech initiated the district court case. By the time of the IPR decision, significant resources had already been expended in the district court, including claim construction briefing, exchange of infringement and invalidity contentions, and a Markman hearing. This discretionary denial highlights the PTAB's application of the Fintiv factors, which weigh against instituting an IPR when a co-pending district court case is well underway, emphasizing judicial efficiency and the investment made by the parties in the district court proceeding.

The patent infringement litigation underlying IPR2025-01459 is Enviro Tech Chemical Services, Inc. v. Clean Chemistry, Inc., Case No. 1:24-cv-01313, filed in the U.S. District Court for the Western District of Texas. The case is pending before Judge Alan D. Albright.

Here are the key legal developments and outcome in chronological order:

• 2024-05-20: Enviro Tech Chemical Services, Inc. (Enviro Tech) sent Clean Chemistry, Inc. (Clean Chemistry) a cease-and-desist letter, providing notice of its patents and requesting a license.
• 2024-10-29: Enviro Tech filed a patent infringement complaint against Clean Chemistry in the Western District of Texas. The complaint alleged infringement of U.S. Patent No. 9,730,443, U.S. Patent No. 8,546,449, U.S. Patent No. 9,737,072, and U.S. Patent No. 9,363,997.
• Initial Pleadings: Clean Chemistry filed an Answer to the Complaint.
• Motion to Dismiss: Clean Chemistry filed a Motion to Dismiss (ECF No. 13). This motion was subsequently denied by Judge Alan D. Albright, who found that Enviro Tech had stated plausible claims of infringement.
• 2025-08-26: Clean Chemistry filed a petition for Inter Partes Review (IPR) against U.S. Patent No. 9,730,443 (IPR2025-01459).
• 2025-08-26: Clean Chemistry also filed IPR2025-01458 challenging U.S. Patent No. 9,737,072.
• 2025-09-07: Clean Chemistry filed IPR2025-01472 challenging U.S. Patent No. 8,546,449.
• 2025-10-06: A Markman (claim construction) hearing was held in the district court litigation. The court subsequently provided preliminary claim constructions.
• Discovery Milestones: The parties exchanged infringement and invalidity contentions, and discovery requests.
• 2026-02-17: The Patent Trial and Appeal Board (PTAB) issued discretionary denials in related IPRs, specifically IPR2025-01458 and IPR2025-01472. These denials, and likely the one for IPR2025-01459 for patent 9730443 (which is also listed as "Discretionary Denial" in the case metadata), were based on the advanced stage of the parallel district court litigation, including the significant investment of resources, completed claim construction briefing, exchanged contentions and discovery, and a scheduled trial date. The district court case was not stayed pending the IPRs.
• 2026-12-28 (Week of): The district court case is scheduled for trial.

The overarching outcome of the parallel PTAB proceedings is that Clean Chemistry's petitions for inter partes review, including IPR2025-01459 for U.S. Patent No. 9,730,443, were met with discretionary denials by the PTAB. This means the PTAB declined to institute a trial on the validity of the challenged patents, leaving the issues of patent validity and infringement to be resolved in the ongoing district court litigation in the Western District of Texas. The court litigation remains active.

Here's an identification of the counsel of record representing Clean Chemistry, Inc., the plaintiff(s) in IPR2025-01459:

1. R. Andrew "Drew" Patty II

• Role: Lead Counsel
• Firm: Phelps Dunbar LLP
• Office Location: Baton Rouge, LA (also works from Raleigh offices)
• Experience: A partner in Phelps Dunbar's Intellectual Property and Cybersecurity Groups, Drew Patty leads the firm's Artificial Intelligence Working Group. He possesses 30 years of experience in transactional intellectual property matters and related litigation. His extensive chemical patent experience includes prosecution in areas such as oilfield chemicals, refinery catalysts, organometallic chemistry, and bromine chemistry. He also has experience with mechanical, electro-mechanical, business method, and software-based patent applications, and represents clients before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB). He is recognized as an "IP Star" for both patents and trademarks.

2. Daniel Knauss

• Role: Partner, Patent Litigator (likely lead counsel given firm's listing in PTAB order alongside R. Andrew Patty II)
• Firm: Cooley LLP
• Office Location: Not explicitly stated, but Cooley LLP is a global firm with multiple offices. His biography mentions litigating cases in federal courts of Delaware, California, and Texas, and his Lawline profile lists California as an admitted jurisdiction.
• Experience: An experienced trial lawyer and life sciences litigator, Daniel Knauss focuses on high-stakes patent, trade secret, and commercial disputes across various complex technologies. His life sciences expertise includes biosimilars, antibody drugs, agricultural tech, biofuels, cancer/antiviral medicines, and medical devices. He also handles cases for high-tech companies in autonomous vehicles, machine learning, and semiconductor design. Knauss has tried cases in U.S. district courts, the PTAB, the International Trade Commission (ITC), and handled appeals at the U.S. Court of Appeals for the Federal Circuit. He holds a PhD in microbiology and cancer biology and previously served as a patent agent and director of intellectual property at a medical diagnostics company.

3. Dustin Knight

• Role: Associate, Intellectual Property Litigator (likely supporting counsel)
• Firm: Cooley LLP
• Office Location: Not explicitly stated in the provided snippets.
• Experience: Dustin Knight is a skilled intellectual property litigator with extensive experience in high-stakes litigation in federal court, including the U.S. Court of Appeals for the Federal Circuit, and before the U.S. Patent and Trademark Office (USPTO). He has a proven track record in patent infringement, trade secret misappropriation, breach of contract, and antitrust matters, primarily assisting medical device and technology companies. Knight has successfully defended against IPR challenges at the PTAB and is recognized by Patexia as a top-ranked inter partes review (IPR) practitioner.

Enviro Tech Chemical Services, Inc. is represented by a team of attorneys from Eversheds Sutherland (US) LLP and its Head of Intellectual Property for the IPR and related district court litigation.

Here is the identified counsel of record:

• Ann G. Fort

  • Role: Lead Counsel (in co-pending district court litigation).
  • Firm: Eversheds Sutherland (US) LLP, Atlanta, GA.
  • Relevant Experience: Experienced litigation attorney with over 33 years of experience, including approximately 25 years litigating patent cases. She has been recognized pro hac vice by the PTAB in previous IPRs.

• Anna C. Halsey

  • Role: Lead Counsel (in related IPR2025-01458 and likely IPR2025-01459).
  • Firm: Eversheds Sutherland (US) LLP, Atlanta, GA.
  • Relevant Experience: Appointed as lead counsel for Patent Owner Enviro Tech Chemical Services, Inc. in related PTAB proceedings.

• Cameron C. Murphy

  • Role: Backup Counsel (in IPR2025-01459 and related IPRs).
  • Firm: Eversheds Sutherland (US) LLP, San Diego, CA.
  • Relevant Experience: Appointed as backup counsel for Patent Owner in related PTAB proceedings.

• Michael J. Behlen

  • Role: Backup Counsel (in IPR2025-01459 and related IPRs).
  • Firm: Eversheds Sutherland (US) LLP, San Francisco, CA.
  • Relevant Experience: Appointed as backup counsel for Patent Owner in related PTAB proceedings.

• Jennifer R. Sandlin

  • Role: Backup Counsel (pro hac vice in IPR2025-01459 and related IPRs).
  • Firm: Eversheds Sutherland (US) LLP.
  • Relevant Experience: Granted pro hac vice admission to represent Patent Owner as back-up counsel in these proceedings.

• Peter Pappas

  • Role: Counsel (listed among counsel for Patent Owner in IPR2025-01459 and related IPRs).
  • Firm: Eversheds Sutherland (US) LLP.
  • Relevant Experience: Listed as counsel for the Patent Owner in the PTAB proceedings.

• Chancellor Shafor

  • Role: Counsel (listed among counsel for Patent Owner in IPR2025-01459 and related IPRs).
  • Firm: Eversheds Sutherland (US) LLP.
  • Relevant Experience: Listed as counsel for the Patent Owner in the PTAB proceedings.

• Reagan Charney

  • Role: Head of Intellectual Property (in-house).
  • Firm: Enviro Tech Chemical Services, Inc.
  • Relevant Experience: Signed the Patent Owner's Power of Attorney in a related IPR as Head of Intellectual Property for Enviro Tech Chemical Services, Inc.