February 19th, 2019

AdvaCare 120 Sanitizer/Sour use patent claims rejected by US Patent Office

In early 2014, Ecolab Inc.’s Textile Care Division filed a suit against Gurtler Industries, Inc. claiming that Gurtler had infringed on Ecolab’s Patent No. 6,262,013: “Sanitizing Laundry Sour” issued on July 21, 2001. In response to the suit, Gurtler contended that the patent was invalid, and asked the US Patent & Trademark Office (USPTO) to open a reexamination of the patent claims. After a long and exhaustive reexamination and appeals process, on August 29, 2018, it was determined by the USPTO that the Ecolab patent was invalid; all original and amended claims in the patent were rejected as unpatentable.

Gurtler successfully defends itself from invalid Ecolab claims

Following the final action by the USPTO, Ecolab voluntarily dismissed their infringement suit against Gurtler. Greg Gurtler, President of Gurtler Industries said, “In a classic David and Goliath story, we have battled and won along every step of the process. We have defended our strong belief that Gurtler did not do anything wrong in this case. The Patent Office rejected Ecolab’s position four times, so it appears they agreed with Gurtler that the patent was invalid and ultimately, that we did nothing wrong. Gurtler is a highly ethical, family-run business and we will always vigorously defend ourselves when accused of not playing by the rules.”

Ecolab AdvaCare peracetic acid use patent found to be invalid

The Ecolab patent described the use of a peracetic acid (PAA) sanitizer that also acts as a neutralizer (sour) in the laundry process. Ecolab introduced a product, AdvaCare 120 Sanitizer/Sour, which refers to this patent on its label. Gurtler maintained that it did not infringe the patent claims. More so, Gurtler maintained that the applicability of PAA as a laundry sanitizer and bleach was a well-known technology prior to the filing of the Ecolab patent. After exhausting all the routes of appeal within the USPTO, Ecolab decided to appeal to the United States Court of Appeals for the Federal Circuit. However, in its case against Gurtler, Ecolab has moved to voluntarily dismiss all claims against Gurtler.

Gurtler Industries, Inc. is a leading manufacturer of advanced detergents and specialty chemicals for the commercial and institutional laundry industry. A privately held, family owned and operated business, Gurtler has grown into one of the largest specialists in the laundry chemical supply industry, offering a full line of processing chemicals, injection systems and personalized service across the US, Canada, Mexico, and Australia.

Background & Timeline:

February, 2014Complaint for patent infringement filed against Gurtler by Ecolab based on U.S. Pat. No. 6,262,013
October, 2014After fully reviewing the patent and similar patent teachings it is determined that there is reason to believe that the Ecolab patent is invalid. Accordingly, Gurtler files a patent reexamination request with the US Patent & Trademark Office (USPTO).
December, 2014USPTO grants the request for reexamination.
March, 2015USPTO issues a (non-final) decision that rejected all of Ecolab’s patent claims.
April, 2015Due to the rejection at the USPTO, the civil court case that Ecolab filed against Gurtler was put on hold, awaiting a final decision from the USPTO on the patent.
June, 2015Ecolab files a response to the rejection in the reexamination and submitted evidence and arguments that the original claims were patentable and added new claims.
July, 2015USPTO issues a (final) rejection of the Ecolab patent, both the original and the new claims.
September, 2015Ecolab appeals the rejection to the USPTO Patent Trial and Appeals Board.
April, 2016Gurtler presents additional information concerning the use of PAA in laundry processing that predated the Ecolab patent and files a second reexamination request of the Ecolab patent to the USPTO.
May, 2016USPTO grants a second reexamination of the patent.
September, 2016USPTO Patent Trial and Appeals Board affirms the rejection of all the Ecolab patent claims in the first reexamination case.
October, 2016The USPTO, in the second reexamination case issues a (non-final) rejection of the patent claims.
November, 2016Ecolab abandons the original claims in first reexamination and presents amended/new claims and asks the USPTO to merge the two reexaminations.
January 2017Ecolab abandons the original claims in second reexamination and presents amended/new claims and asks the USPTO to merge the two reexaminations.
January, 2017USPTO merges the two reexaminations.
May, 2017USPTO issues final rejection of all amended/new claims in Ecolab’s patent as unpatentable.
July, 2017Ecolab appeals the final rejection to the USPTO Patent Trial and Appeals Board.
August, 2018Patent Trial and Appeals Board affirms the rejection of all amended/new claims in Ecolab’s patent as unpatentable.
January, 2019Ecolab dismisses patent infringement claims against Gurtler from Federal Court.