Los Angeles, CA. Nixon Peabody LLP is pleased to have represented G.W. Aru, LLC (GWA) in two recent wins in its patent infringement and false advertising dispute with W.R. Grace & Co.-Conn. (Grace).
GWA is an innovator in the petrochemical and petroleum refining catalyst industry, whose products include its patented Great FCC Promoter™ (GFP™), a novel and innovative CO to CO2 combustion promoter. GWA alleges in the litigation that Grace’s Optimized CP®P combustion promoter infringes GWA’s U.S. Patent 11,224,864 (‘864 patent) and that Grace’s commercial advertising and promotion for its combustion promoters is false in violation of the Lanham Act.
On December 20, 2023, the U.S. District Court for the District of Maryland granted GWA a preliminary injunction against false advertising by Grace. The Court found GWA is likely to succeed on the merits of certain of its false advertising claims, that it is likely to suffer irreparable harm in the absence of preliminary injunctive relief, that the balance of equities tips in its favor, and that a preliminary injunction is in the public interest.
According to the written order by Chief Judge James K. Bredar, the preliminary injunction enjoins Grace “from the continued dissemination of advertising or promotional materials containing the statement that ‘the advanced alumina used for [Grace’s] optimized CO promoters results in an even higher proportion of the metals residing on the outer surface of the particle.’”
The order goes on to state that the preliminary injunction further enjoins Grace “from making any statement substantially similar to the above statement, including any statement stating or implying that its combustion promoters have a higher proportion or majority of noble metals located at or toward the outer surface of the combustion promoter particle.”
The district court litigation is led by Nixon Peabody intellectual property partner Shawn Hansen.
In addition, on December 11, 2023, the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office (PTAB) declined to institute an inter partes review (IPR) of GWA’s ‘864 patent as requested by Grace and determined that Grace “has not provided sufficient information to demonstrate a reasonable likelihood that at least one challenged claim of the ‘864 patent is unpatentable.”
The opposition to Grace’s petition for IPR was led by Nixon Peabody intellectual property partner Ronald Eisenstein.
“The preliminary injunction—an extraordinary and drastic remedy that is never awarded as of right—is an important milestone in our ongoing effort to correct the misapprehensions in the market created by Grace’s false advertising. Our groundbreaking patented combustion promoter technology, GFP™, should not have to compete in the face of an industry giant’s false claims,” said GWA founder and president Guido Aru. “We are grateful to the Court for granting a preliminary injunction and to the PTAB for declining Grace’s patent challenge. According to analysis of PTAB data by Unified Patents, the PTAB institutes IPRs of some or all challenged patent claims in over 75% of IPR petitions. Their denial of Grace’s IPR petition is a testament to our patent’s validity and the innovative technology we have brought to the petroleum refining industry.”
“We are thrilled for GWA in these significant wins and look forward to continuing to vindicate their rights, as well as the strong public interest in preventing false advertising of products in the marketplace, in this litigation,” said Hansen.
In addition to Shawn Hansen and Ronald Eisenstein, the Nixon Peabody team includes partner Jennifer Hayes, counsel Joshua Pollack, associate Nicole Kling, associate Juliet DeFrancisco, associate Erin Huntington, all of the Intellectual Property practice, and partner Jennifer Squillario of the Labor and Employment practice.
