Los Angeles, CA. Nixon Peabody LLP is pleased to have represented G.W. Aru, LLC (GWA) in another significant win 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®), an innovative additive known as a combustion promoter used in certain petroleum refining processes. 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 all its combustion promoter products is false in violation of the Lanham Act. On December 17, 2024, U.S. District Judge James K. Bredar of the U.S. District Court for the District of Maryland granted partial summary judgment to GWA on substantial parts of its case.
As to false advertising, the court granted partial summary judgment that Grace’s comparative performance claims against GWA’s GFP®-PD—which asserted a 62% lower usage rate for CP®P, a 64% lower usage rate for Optimized CP®P, and an 11% reduction in afterburn for Optimized CP®P—are “literally false” and “deceptive as a matter of law.”
In addition, the court highlighted Grace’s corporate designee’s concession that “in at least one respect, the data [Grace’s claims relied on] showed that Optimized CPP performed 26% worse than baseline [i.e., GWA’s product], rather than 64% better.” The court further rejected Grace’s attempts to deflect blame to Valero, which provided the underlying data to Grace, stating, “Grace has not pointed to any authority (nor is the Court aware of any) that would absolve Grace of an independent responsibility to ensure the accuracy of its advertising claims, even if the data underlying those claims came from a third party.”
The court also granted partial summary judgment that all of Grace’s challenged advertisements were placed in interstate commerce and constitute commercial speech.
Regarding patent infringement, the court granted partial summary judgment that Optimized CP®P manufactured at Grace’s Valleyfield, Canada, facility and imported and sold in the United States meets four limitations of Claim 1 of the ‘864 patent—the bulk of the claim. The court further ruled that “no reasonable jury could find, by clear and convincing evidence, that the [‘864] patent fails to enable a [person of ordinary skill in the art] to make the full scope of the invention without undue experimentation.”
The court denied almost entirely Grace’s cross-motion for summary judgment, which asserted that the ‘864 patent is invalid either for indefiniteness or anticipation, and that Optimized CP®P does not infringe the ‘864 patent, ruling that genuine fact disputes precluded summary judgment (except as to a different Optimized CP®P product manufactured by Grace in Worms, Germany, which GWA is not accusing of infringement at this time).
The litigation is led by Nixon Peabody Intellectual Property partner Shawn Hansen. “We are grateful for the court’s favorable summary judgment rulings, which streamline the case significantly and will allow the jury to focus on the main issues in dispute, including the willfulness of Grace’s patent infringement and false advertising,” said Hansen. “We look forward to the trial scheduled to begin on May 27, 2025,” Hansen continued.
Mr. Guido Aru is the CEO of GWA and the inventor of the ‘864 and related patents. ”I, too, am grateful to the court for taking the time to understand this case and issue the favorable rulings it has. This is partial vindication for my company and my product. I am also very appreciative of my excellent legal team, led by Mr. Hansen, that is as determined as I am to see this case through to its rightful conclusion,” said Aru. “I look forward to presenting the full extent of Grace’s lies and unlawful actions at trial,” concluded Aru.
In addition to Hansen, the Nixon Peabody team includes partners Ronald Eisenstein and Jennifer Hayes, counsel Joshua Pollack, and associates Nicole Kling and Juliet DeFrancisco, all of the Intellectual Property practice, and partner Jennifer Squillario of the Labor and Employment practice.
