IP Law Daily, PATENT—3d Cir.: Cleaning products manufacturer not entitled to sue alleged infringers of hand hygiene company's patents, (Jul 22, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

A patent license agreement unambiguously required an affirmative written communication authorizing enforcement, and the patent owner never provided one.

The U.S. Court of Appeals for the Third Circuit affirmed the dismissal of a contract dispute between a cleaning and hygiene products manufacturer and a hand hygiene products company over the right to enforce licensed patents. The court held that the parties' patent license agreement unambiguously required an affirmative written communication from the patent owner before the licensee could sue alleged infringers, and that a 2022 letter relied upon by the licensee expressly disclaimed any such election. The appellate court also upheld the denial of leave to amend the complaint, concluding that any amendment would be futile (Ecolab Inc. v. SC Johnson Professional Group Ltd., No. 25-2033 (3d Cir. Jul. 20, 2026)).

Background. Appellants Ecolab Inc. and Ecolab USA Inc. manufacture cleaning, sanitation, and hygiene products for commercial and institutional customers. Appellees SC Johnson Professional Group Limited, formerly known as Deb Group Limited, and Deb IP Limited develop and license intellectual property relating to hand hygiene and skin-care products. The parties had previously resolved patent litigation through a patent license agreement and a later amendment to that agreement.

The dispute arose from the parties' patent license agreement. Under a 2013 agreement, Deb granted Ecolab a non-exclusive, royalty-bearing license to manufacture and sell certain patented hand sanitizer and skin-care products. The agreement also gave Ecolab a conditional right to enforce Deb's patents against third-party infringers if Deb elected not to do so. A 2022 amendment clarified that no action, inaction, or silence would constitute such an election and that only an "affirmative written communication" from Deb to Ecolab's designated counsel could trigger Ecolab's enforcement rights.

Ten days after the 2022 amendment became effective, Ecolab asserted that Deb had already provided the required affirmative written communication. Deb rejected that position and later sent a three-page letter dated December 1, 2022. In that letter, Deb stated that it had concluded certain licensed patents would be subject to invalidity challenges based on obviousness-type double patenting after September 29, 2024, but also expressly stated that it had not made, and was not making, an election under Section 4.1 of the license agreement.

Ecolab nevertheless sued, asserting claims for declaratory relief, breach of contract, breach of the implied covenant of good faith and fair dealing, and tortious interference. The district court dismissed the first amended complaint for failure to state a claim and denied leave to file a second amended complaint as futile. Ecolab appealed.

Contract interpretation. The Third Circuit agreed that the agreement was unambiguous under Delaware law. Reading the 2013 agreement together with the 2022 amendment, the court concluded that Ecolab could enforce the licensed patents only if Deb affirmatively elected not to enforce them through a written communication. The amendment also made clear that Deb had no affirmative obligation to enforce its patents and that no action, inaction, or silence could be treated as an election.

Relying on Delaware contract principles, including Manti Holdings, LLC v. Authentix Acquisition Co., 261 A.3d 1199 (Del. 2021), the court emphasized that unambiguous contractual language must be enforced according to its plain meaning.

No election. The court found that the December 1, 2022, letter did not satisfy the contractual requirement. Although Ecolab relied on Deb's statement that all claims of certain patents were "subject to an invalidity challenge" after September 29, 2024, the court concluded that this language merely acknowledged the possibility of legal challenges and did not amount to an election not to enforce the patents.

More importantly, the same letter expressly stated that Deb "has not, and does not in this letter, take a position on its rights and obligations under Section 4.1" and that it "did not make an election under Section 4.1." Those express disclaimers foreclosed Ecolab's argument that the letter triggered its contractual enforcement rights.

Alternative arguments. Ecolab's argument that Deb could not simultaneously decide not to enforce its patents while withholding Ecolab's right to enforce them was also found unpersuasive. Even assuming Deb's discussion of patent validity implied that it would not pursue future enforcement, the agreement expressly required an affirmative written communication electing not to enforce the patents. The contract further provided that no implicit conduct or omission could substitute for that written election.

The court refused to rewrite the parties' bargain based on Ecolab's policy arguments. Quoting Nemec v. Shrader, 991 A.2d 1120 (Del. 2010), the panel observed that parties are free to enter both good and bad contracts, and courts may not revise unambiguous agreements simply because one party later considers the bargain unfavorable.

Disposition. Because Deb never provided the required written affirmative communication under the license agreement, Ecolab's contractual right to enforce the licensed patents never vested. The Third Circuit therefore affirmed the dismissal of all claims and upheld the district court's denial of leave to amend, concluding that the proposed amendments would not cure the legal deficiencies in the complaint. The panel did not reach the separate question of which alleged infringers Ecolab could have sued had its enforcement rights vested.

The Case is No. 25-2033.

Judge: Scirica, A.

Attorneys: William B. Farney (Farney Daniels, PC) for Ecolab Inc. Dominick T. Gattuso (Heyman Enerio Gattuso & Hirzel) for SC Johnson Professional Group Ltd.

Companies: Ecolab Inc. SC Johnson Professional Group Ltd.

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