The Use of Zero Valent Iron (ZVI) with Emulsified Vegetable Oil (EVO)

CHICAGO, Ill. (April 6th, 2010) — The purpose of this release is to state our position concerning the use of zero valent iron (ZVI) in conjunction with emulsified vegetable oil (EVO) and similar carbon amendments for remediation of halogenated organic compounds (VOCs) in groundwater. We are aware of considerable confusion and speculation in the industry concerning our intellectual property (IP) rights in this respect, and this letter is meant to provide clarification.

Adventus IP rights that pertain to these applications include patents owned by the University of Waterloo and others which are licensed exclusively to Adventus. In particular, U.S. Patent No. 5,266,213 (30 November 1993) consists of providing a permeable body of metal in the path of flowing groundwater containing halogenated contaminants (Claim 1 of the patent).  This body of metal can comprise, among other configurations, iron placed by injection methods (Claim 6).  Therefore, any process that cleans halogenated organic contaminants from groundwater in an aquifer that employs a “body of metal” (any metal, shape and size) through which the aquifer’s water passes, likely infringes U.S. Patent No. 5,266,213.  Projects involving, for example, iron plus liquid organic carbon sources (e.g., lactate or molasses), iron plus bacterial inocula, iron plus solid carbon, or iron plus other amendments, still must obtain a license from us for the use of this technology. 

The second patent which pertains to EVO-ZVI applications is U.S. Patent No. 5,534,154 (9 July 1996), dealing with combinations of iron plus sorbent materials to affect remediation of groundwater contaminants. The reader is directed specifically to independent claim 15 of this patent, which describes an apparatus for treating contaminated water, including placing in the path of flowing contaminated groundwater 'a body of metal particles' and 'a body of an adsorbent material, of the type of which is capable of absorbing the said at least one contaminant'. Given that the sorption of VOCs by EVO is well-recognized, we believe that combinations of EVO plus ZVI clearly fall within the scope of this patent.

One area of confusion regards the relationship of Adventus IP to U.S. Patent Nos. 6,664,298 and 7,037,946 assigned to the National Aeronautics and Space Administration (NASA), often referred to as 'Emulsified Zero Valent Iron' (EZVI) technology.  We have discussed this issue with NASA, who indicated that EZVI is viewed as a means of degrading 'DNAPL pools':

There is a widely held misconception that if the Patent Office issues a patent on an integrated process, the Patent Office has approved the integrated process as not infringing an original patent. In fact, most patents issued are improvement patents pursuant to which the commercial exploitation infringes a pre-existing patent. When the two patents are not co-owned, royalties must be paid to the original patent holder when someone operates under an independent improvement patent (assuming as in this case the patent owner is willing to grant such licenses). Another misconception is that only the manufacturer is liable for patent infringement: under the law, anyone in the supply chain is liable to the patent holder (although they may have upstream indemnification from a manufacturer).

Here, NASA's patents are product patents directed to the material itself and not to the method that the material is used. Therefore, depending on the method that the EZVI is applied, U.S. Patent Nos. 5,266,213 and 5,534,154 may well be infringed. Indeed, NASA has assured us that it warns its licensees that "the licensee does not have the legal right to infringe any valid patent while practicing the licensed patent".  Moreover, NASA stated that NASA "has the moral obligation to clearly warn that our licensees perform the necessary due diligence to make sure their practice of NASA's patent would not constitute infringement of another patent.  Each licensee is free to take or reject a licensee from another party."

Our understanding is that most applications of EZVI to date have been small-scale pilot projects that have indeed focused on DNAPL source areas. However, given the above, calling dissolved phase VOC treatment an 'EZVI' application does not avoid Adventus' IP rights.

Lastly, in our view the use of a given grain size of ZVI (e.g. nano-scale) does not in and of itself avoid Adventus IP. The Adventus patents make no specific distinction with respect to the grain size of material to be used, and indeed suggest maximizing the reactive surface area of the metal.

Many firms with their own proprietary or patented bioremediation amendments, emplacement/injection methods, and/or specific project needs have already respected our intellectual property rights and signed license agreements with us. These firms have not found the license terms onerous, and have indeed benefited from our technical input on their projects, which is provided as part of the license agreement.

In closing, Adventus is committed to enforcing its IP rights.  It is unfair to the licensees who do respect patent law, and thus obtain a license, to be at a cost disadvantage to those who abuse our IP.  We remain willing to grant reasonable licenses under our U.S. Patents to suppliers of EVO or other carbon amendments who wish to add ZVI to their product, to consultants, to installation contractors, and to end users

Contacts: 

About Adventus Group – Environmental Biotechnologies for the 21st Century

Adventus Group provides a growing portfolio of leading environmental remediation technologies, including patented offerings from Adventus Americas Inc. and EnviroMetal Technologies Inc. Our business model supports site owners, environmental engineers, consultants, regulators, and the academic community by providing unbiased design, and selection of the most cost-effective remediation strategies. Our proprietary portfolio includes:

• In Situ Chemical Reduction (ISCR^™) technologies:
• DARAMEND^® for soils, sludges and sediments;
• EHC^® portfolio of injectable amendments for groundwater;
• EHC-A^® liquid formulation for wells and other networks;  
• EHC-M^® for immobilization of soluble metal impacts;
• A-SOX^™ canister delivery system;
• ZVI PRBs and related groundwater treatment innovations;
• ZVI-Clay for in situ source zone treatment;  
• EHC-O^®  oxygen releasing compound for in situ hydrocarbon treatment;  
• O-SOX^™ canister delivery system;
• ISGS^™ in situ geochemical stabilization of DNAPL;  
• AquaBlok^® for in situ sub-aqueous capping and treatment of sediments;  
• AquaBlok+^™ for capping and treatment of impacted sediments;  
• HoleBlok+^™ down-well, low-permeability sealant;
• mGCW^™ microbiologically enhanced Groundwater Circulation Wells;  
• Modeling Services for optimization of remedial designs and strategies.  

The Adventus scientific team is a recognized practice leader, with over 500 Abstracts published within the industry. Through March 2010, we have successfully treated over 8,000,000 metric tons of soil impacted by hazardous wastes — and millions of gallons of groundwater — at over 1,000 sites around the globe.

The Adventus family of companies is always seeking strategic partnerships with complementary remediation biotechnologies, and qualified international licensees in numerous countries. For more information contact Michael Mueller at mike.mueller@adventusgroup.com or visit us online at www.AdventusGroup.com or www.eti.ca.