Court File No.
`
`ONTARIO
`SUPERIOR COURT OF JUSTICE
`
`BETWEEN:
`
`UNIVERSITY OF WATERLOO
`
`and
`
`SALIENT ENERGY INC. and BRIAN ADAMS
`
`Plaintiff
`
`Defendants
`
`STATEMENT OF CLAIM
`
`TO THE DEFENDANT
`
`A LEGAL PROCEEDING HAS BEEN COMMENCED AGAINST YOU by the plaintiff.
`The claim made against you is set out in the following pages.
`
`IF YOU WISH TO DEFEND THIS PROCEEDING, you or an Ontario lawyer acting for
`you must prepare a statement of defence in Form 18A prescribed by the Rules of Civil Procedure,
`serve it on the plaintiffs lawyer or, where the plaintiff does not have a lawyer, serve it on the
`plaintiff, and file it, with proof of service in this court office, WITHIN TWENTY DAYS after this
`statement of claim is served on you, if you are served in Ontario.
`
`If you are served in another province or territory of Canada or in the United States of
`America, the period for serving and filing your statement of defence is forty days. If you are served
`outside Canada and the United States of America, the period is sixty days.
`
`Instead of serving and filing a statement of defence, you may serve and file a notice of
`intent to defend in Form 18B prescribed by the Rules of Civil Procedure. This will entitle you to
`ten more days within which to serve and file your statement of defence.
`
`IF YOU FAIL TO DEFEND THIS PROCEEDING, JUDGMENT MAY BE GIVEN
`AGAINST YOU IN YOUR ABSENCE AND WITHOUT FURTHER NOTICE TO YOU. IF
`YOU WISH TO DEFEND THIS PROCEEDING BUT ARE UNABLE TO PAY LEGAL FEES,
`LEGAL AID MAY BE AVAILABLE TO YOU BY CONTACTING A LOCAL LEGAL AID
`OFFICE.
`
`TAKE NOTICE: THIS ACTION WILL AUTOMATICALLY BE DISMISSED if it has
`not been set down for trial or terminated by any means within five years after the action was
`commenced unless otherwise ordered by the court.
`
`DER2018-00018
`Salient Exhibit 2001
`
`
`
`ONTARIO
`SUPERIOR COURT OF JUSTICE
`
`BETWEEN:
`
`UNIVERSITY OF WATERLOO
`
`and
`
`SALIENT ENERGY INC. and BRIAN ADAMS
`
`Plaintiff
`
`Defendants
`
`STATEMENT OF CLAIM
`
`TO THE DEFENDANT
`
`A LEGAL PROCEEDING HAS BEEN COMMENCED AGAINST YOU by the plaintiff.
`The claim made against you is set out in the following pages.
`
`IF YOU WISH TO DEFEND THIS PROCEEDING, you or an Ontario lawyer acting for
`you must prepare a statement of defence in Form 18A prescribed by the Rules of Civil Procedure,
`serve it on the plaintiffs lawyer or, where the plaintiff does not have a lawyer, serve it on the
`plaintiff, and file it, with proof of service in this court office, WITHIN TWENTY DAYS after this
`statement of claim is served on you, if you are served in Ontario.
`
`If you are served in another province or territory of Canada or in the United States of
`America, the period for serving and filing your statement of defence is forty days. If you are served
`outside Canada and the United States of America, the period is sixty days.
`
`Instead of serving and filing a statement of defence, you may serve and file a notice of
`intent to defend in Form 18B prescribed by the Rules of Civil Procedure. This will entitle you to
`ten more days within which to serve and file your statement of defence.
`
`IF YOU FAIL TO DEFEND THIS PROCEEDING, JUDGMENT MAY BE GIVEN
`AGAINST YOU IN YOUR ABSENCE AND WITHOUT FURTHER NOTICE TO YOU. IF
`YOU WISH TO DEFEND THIS PROCEEDING BUT ARE UNABLE TO PAY LEGAL FEES,
`LEGAL AID MAY BE AVAILABLE TO YOU BY CONTACTING A LOCAL LEGAL AID
`OFFICE.
`
`TAKE NOTICE: THIS ACTION WILL AUTOMATICALLY BE DISMISSED if it has
`not been set down for trial or terminated by any means within five years after the action was
`commenced unless otherwise ordered by the court.
`
`DER2018-00018
`Salient Exhibit 2001
`
`
`
`-2-
`
`Date
`
`JUN o s 2am
`
`Issued by
`
`/
`( Ingrid ~t~m• \
`Local Registrar
`·
`/
`
`85 Frederick Street
`Address of
`court office: Kitchener, ON N2H 0A 7
`
`TO:
`
`TO:
`
`Salient Energy Inc.
`199-151 Charles Street
`Kitchener, ON N2G 1H6
`
`Brian Adams
`228 Morenz Drive
`Mitchell, ON N0K lN0
`
`
`
`-3-
`
`CLAIM
`
`1.
`
`The Plaintiff claims:
`
`(a)
`
`a Declaration pursuant to section 97 of the Courts of Justice Act, R.S.O. 1990 c.
`
`C.43, as amended ("Courts of Justice Act') that the Plaintiff, the University of
`
`Waterloo ("UW"), is the sole owner of all right, title and interest in and to:
`
`(i)
`
`an invention or inventions relating to certain zinc ("Zn") ion battery
`
`technologies ( collectively the "Invention", which is more particularly
`
`described herein) that is or are, at least in part, more particularly described
`
`and/or claimed in the following US patent and other applications for patents:
`
`(1)
`
`US Patent No. 9,780,412 (the "US 412 Patent");
`
`(2)
`
`US Patent Application No. 15/513,914 (the "US 914
`
`Application");
`
`(3)
`
`Canadian Patent Application No. 2,962,296 (the "Canadian
`
`Application");
`
`(4)
`
`PCT Application No. PCT/CA2016/050613 (the "PCT
`
`Application"); and
`
`(5)
`
`US Provisional Patent Application No. 62/230,502 (the
`
`"Provisional Application");
`
`( collectively, the "Battery Patents")
`
`
`
`-4-
`
`(b)
`
`an Order directing the Defendants, Salient Energy Inc. ("Salient") and Dr. Brian
`
`Adams, to assign to UW all right, title and interest in and to:
`
`(i)
`
`the Invention;
`
`(ii)
`
`the US 412 Patent;
`
`(iii)
`
`the US 914 Application;
`
`(iv)
`
`the Canadian Application;
`
`(v)
`
`the PCT Application;
`
`(vi)
`
`the Provisional Application; and
`
`(vii)
`
`any and all other patent applications that claim priority to, or are a
`
`consequence of, the above, including any and all divisional and continuation
`
`app Ii cations;
`
`( c)
`
`an Order directing the Defendants to make all necessary corrections as may be
`
`required, including corrections regarding ownership of any of the foregoing Battery
`
`Patents, with all applicable patent offices;
`
`( d)
`
`an Order for a constructive trust on all assets, including technologies, of the
`
`Defendants as those assets relate to the subject matter of the Invention and/or the
`
`Battery Patents;
`
`( e)
`
`a Declaration that the Defendant Salient:
`
`(i)
`
`has been unjustly enriched at the expense of UW; and
`
`
`
`-5-
`
`(ii)
`
`has wrongfully misappropriated UW's business opportunities with respect
`
`to the Invention and the Battery Patents;
`
`(f)
`
`damages in the amount of $500,000;
`
`(g)
`
`punitive and/or exemplary damages in the amount of $100,000;
`
`(h)
`
`pre-judgment interest in accordance with section 128 of the Courts of Justice Act,
`
`(i)
`
`post-judgment interest in accordance with section 129 of the Courts of Justice Act;
`
`(j)
`
`the costs of this proceeding on a substantial indemnity basis, including all experts'
`
`fees, disbursements and applicable taxes; and
`
`(k)
`
`such further and other relief as this Honourable Court may deem just.
`
`THE PARTIES
`
`2.
`
`The University of Waterloo is a Canadian public research university with a main campus
`
`located in Waterloo, Ontario and a head office located at 200 University Avenue West,
`
`Waterloo, Ontario, N2L 3Gl.
`
`3.
`
`UW was incorporated as a university with the enactment of the University of Waterloo Act
`
`in 1959. Since then, UW has grown into a pre-eminent innovative Canadian university,
`
`with students at UW offered numerous opportunities to engage in co-op and research
`
`placements.
`
`4.
`
`UW is also a major driver of innovation in the Waterloo Region through its start-up
`
`incubator, Velocity. Velocity is the largest free start-up incubator in the world.
`
`
`
`-6-
`
`5.
`
`The Defendant Salient Energy Inc. is a corporation incorporated under the laws of Ontario
`
`with its primary place of business located at 199-151 Charles Street, Kitchener, Ontario,
`
`N2G 1H6. Salient was incorporated on October 6, 2016.
`
`6.
`
`Salient is in the business of marketing and selling Zn-Ion batteries as more particularly
`
`described and claimed in the Battery Patents. Salient is owned and operated by Mr. Ryan
`
`Brown ("Brown") and Dr. Brian Adams ("Adams").
`
`7.
`
`The Defendant Adams is an individual residing at 228 Morenz Drive, Mitchell, Ontario,
`
`N0K lN0. Adams is a named inventor on all of the Battery Patents.
`
`8.
`
`Brown and Adams are former students of UW. During their time at UW, both Brown and
`
`Adams worked in the lab of Dr. Linda F. Nazar ("the Nazar Lab") as a research assistant
`
`and graduate student, respectively, particularly during the time period of 2011-2016. The
`
`Nazar Lab's research focus encompasses complex material synthesis, physical and
`
`structural characterization, electrochemical testing, and electrode design for various energy
`
`storage batteries, including batteries based on divalent cations.
`
`DEVELOPMENT OF THE ZN-ION BATTERY TECHNOLOGIES
`
`9.
`
`In order to fund projects such as those leading to the Invention and the Battery Patents, the
`
`Nazar Lab relies at least in part on contracts with third parties. One such contract was
`
`entered into between UW and Argonne National Laboratory ("Argonne") on August 23,
`
`2013 through a Standard Research Subcontract (the "Subcontract"). The Subcontract was
`
`in full force and effect during all material times.
`
`
`
`-7-
`
`10.
`
`The Subcontract was a result of a larger agreement between the United States Department
`
`of Energy Joint Center for Energy Storage Research ("JCESR") and Argonne dated April
`
`15, 2012.
`
`11.
`
`It is UW policy that students who develop intellectual property ("IP") in the course of
`
`research retain ownership of the IP, except where research is sponsored research, in which
`
`case the applicable sponsored research contract governs the ownership of IP.
`
`12.
`
`Pursuant to the Subcontract between Argonne and UW, rights in intellectual property, or
`
`"Program IP" as defined in the Subcontract, vest with and are owned by UW while Argonne
`
`retains a right to license any resulting IP. The Subcontract defines "Program IP" as
`
`patentable inventions conceived, first actually reduced to practice, or first actually reduced
`
`to tangible form as a result of JCESR funding.
`
`13.
`
`In the course of their activities at UW, and with the support of JCESR funding, Dr. Linda
`
`Nazar ("Nazar"), Adams, and Dr. Dipan Kundu ("Kundu") conceived of the Invention and
`
`the subject matter described and claimed in the Battery Patents, and reduced the foregoing
`
`to practice.
`
`14.
`
`The Invention relates to Zn-ion battery technologies. By way of example and more
`
`particularly, the Invention relates to a low cost rechargeable Zn-ion battery based on a
`
`cathode comprised of nanostructured hydrated pillared vanadium oxides as robust
`
`materials for high rate and long term reversible Zn2+ ion intercalation storage at the
`
`cathode, that are coupled with a metallic Zn anode, and an aqueous electrolyte.
`
`
`
`THE BATTERY PATENTS
`
`-8-
`
`15.
`
`After the above-described conception and reduction to practice based on JCESR funding,
`
`Nazar, Adams and Kundu took steps to patent their developments through the UW
`
`Commercialization Office ("WATCO"). WATCO paid for and assisted with the filing of
`
`the Provisional Application, which is entitled "Electrode Materials for Rechargeable Zinc
`
`Cells and Batteries Produced Therefrom". The Provisional Application was filed on June
`
`8, 2015 by Nazar.
`
`16.
`
`Subsequently, the PCT Application was filed on May 31, 2016, and was published as WO
`
`2016/197236 on December 15, 2016. The PCT Application identified Nazar, Adams, and
`
`Kundu as co-applicants and co-inventors. On March 27, 2017, UW was named applicant
`
`for the PCT Application.
`
`17.
`
`The PCT Application was relied on to file several subsequent patent applications,
`
`including:
`
`(a)
`
`US Application No. 15/461,849, which was filed as a continuation of the PCT
`
`Application and issued as the US 412 Patent on October 3, 2017. The US 412
`
`. Patent lists both UW and Salient as owners based on assignments from Kundu
`
`and Adams to UW and Salient, respectively;
`
`(b)
`
`the US 914 Application, which was filed as a national entry of the PCT
`
`Application on March 23, 2017. This application remains pending. The US 914
`
`Application lists both UW and Salient as owners based on assignments from
`
`Nazar and Kundu to UW, and an assignment from Adams to Salient; and
`
`
`
`-9-
`
`( c)
`
`the Canadian Application, which was filed as a national entry of the PCT
`
`Application on March 23, 2017. This application remains pending. The
`
`Canadian Application lists UW as owner, and assignments from Nazar and Kundu
`
`to UW have been filed with the Canadian Intellectual Property Office in this
`
`regard.
`
`UW IS THE SOLE OWNER OF THE INVENTION AND THE BATTERY PATENTS
`
`18.
`
`The Subcontract covers the Invention and the subject matter described and claimed in the
`
`Battery Patents such that UW is the rightful owner of all Program IP, including the
`
`Invention and the Battery Patents.
`
`19.
`
`Notwithstanding the foregoing, since Salient' s incorporation on October 6, 2016, Salient
`
`has, without the license, consent or authorization of UW, wrongly marketed and
`
`commercialized products embodying the Invention and the subject matter described and
`
`claimed in the Battery Patents.
`
`20.
`
`At all material times, Adams and Salient were aware of the Program IP ownership
`
`stipulations provided for in the Subcontract.
`
`21.
`
`Additionally, Adams received funding from Argonne during and in relation to the
`
`development of the Invention and the subject matter described and claimed in the Battery
`
`Patents. This included travel grants to attend JCESR meetings that concerned proprietary
`
`and confidential divalent battery research, materials and supplies that were used to
`
`conceive of and reduce to practice the Invention and the subject matter described and
`
`
`
`-10-
`
`claimed in the Battery Patents, and contributions to Adams' salary prior to the filing of the
`
`Provisional Application.
`
`22.
`
`In particular, and by way of example, Adams was made aware of Argonne's IP ownership
`
`stipulations while attending a two-day meeting at JCESR on January 6-7, 2014. During
`
`the meeting, the IP ownership stipulations in relation to sponsored research, including the
`
`research in relation to the Invention and the subject matter described and claimed in the
`
`Battery Patents, were explained. At least as early as this date, Adams was aware of the fact
`
`that he would not retain ownership in what would ultimately become the Invention and the
`
`subject matter described and claimed in the Battery Patents, and he acknowledged and
`
`agreed to this.
`
`23.
`
`In addition, Adams was aware of his obligations to confirm such ownership status by way
`
`of executing any assignment documents or other legal instruments as may be required by
`
`UW, and he acknowledged and agreed to these obligations.
`
`24.
`
`Even if Adams did not acknowledge or agree (which is denied) as pleaded above, no further
`
`steps, acknowledgments or agreements from Adams were or are required for ownership to
`
`vest with UW in this regard.
`
`25.
`
`JCESR and Argonne do not dispute that UW is the rightful owner of all Program IP,
`
`including the Invention and the Battery Patents, pursuant to the Subcontract. Consistent
`
`with UW's ownership of all relevant IP, Nazar and Kundu have executed assignment
`
`agreements in favour of UW with respect to the Invention and the Battery Patents.
`
`
`
`-11-
`
`26.
`
`Notwithstanding the foregoing, and in a malicious, high-handed and reprehensible attempt
`
`to circumvent Adams' ownership obligations pertaining to the Invention and the Battery
`
`Patents, Salient encouraged and facilitated, and Adams did not object to or resist, Adams'
`
`wrongful execution of assignment agreements in favour of Salient. These steps were taken
`
`by Salient and Adams in an attempt to wrongly acquire an ownership interest in and exploit
`
`IP that solely belongs to UW, and that Salient was and is not entitled to commercialize.
`
`27.
`
`Adams has persistently refused to abide by and honour his obligations to acknowledge UW
`
`is the sole owner of the Invention and the Battery Patents, and to correspondingly execute
`
`assignment documents confirming the foregoing.
`
`SALIENT HAS BEEN UNJUSTLY ENRICHED
`
`28.
`
`Salient is now actively marketing and commercializing products embodying the Invention
`
`and the subject matter described and claimed in the Battery Patents, and seeking funding
`
`from third parties in order to further its business in this regard. In doing the foregoing,
`
`Salient is representing to the public that it has the necessary IP rights to engage in such
`
`marketing and commercialization, notwithstanding that this is not the case. As a result,
`
`Salient has mislead the public, and has done so at least for the purpose ofreceiving funding
`
`and business opportunities that Salient is not entitled to.
`
`29.
`
`UW and W ATCO have provided financial and institutional support to allow for and enable
`
`the development, patenting, and commercialization of the Invention and the Battery
`
`Patents. This was all done subject to UW policies and the Subcontract, which provided that
`
`UW shall retain any and all ownership rights in and to the Invention and the Battery Patents,
`
`and that Nazar, Kundu and Adams would confirm such ownership rights in favour ofUW
`
`
`
`-12-
`
`by executing any necessary assignment documents or other legal instruments as may be
`
`required by UW.
`
`30.
`
`In particular, WATCO financed the preparation and filing ofrelevant patent applications,
`
`and Salient benefited and continues to benefit from the support of UW's Velocity
`
`accelerator.
`
`31.
`
`As a result of and but for the wrongful activities described herein, Salient now retains and
`
`enjoys a benefit to which it is not entitled. Salient's calculated misappropriation ofUW's
`
`IP has deprived UW of a benefit to which it is entitled.
`
`32. With full knowledge of its lack of ownership entitlement to the Invention and the Battery
`
`Patents, Salient continues to market and commercialize products embodying the Invention
`
`and the subject matter described and claimed in the Battery Patents, and derive benefits to
`
`which it is not entitled. In particular, Salient has raised capital funding, and has derived
`
`business opportunities and revenues as a result of its wrongful activities described herein.
`
`The particulars of these opportunities and benefits are within the knowledge of Salient, but
`
`UW claims in respect of all wrongful opportunities and benefits.
`
`33.
`
`Pursuant to the Subcontract, UW is entitled to sole commercialization and out-licensing
`
`rights with respect to the Invention and the Battery Patents. Salient's wrongful activities as
`
`described herein have been malicious and high-handed, and have entirely deprived UW of
`
`opportunities and benefits that UW is entitled to.
`
`34.
`
`Accordingly, Salient has been unjustly enriched at the expense and to the detriment of
`
`UW, and Salient has wrongfully misappropriated UW's business opportunities with
`
`
`
`-13-
`
`respect to the Invention and the Battery Patents. In addition, in view of the malicious and
`
`high-handed conduct described herein, and the intentional and reckless disregard for
`
`UW's IP rights, UW is entitled to punitive damages.
`
`35.
`
`The Plaintiff proposes that this action be tried at Kitchener, Ontario.
`
`Date: June 5, 2018
`
`GOWLING WLG (CANADA) LLP
`Barristers & Solicitors
`Suite 2600
`160 Elgin Street
`Ottawa ON KIP 1C3
`
`Michael Crichton (LSO no. 48993G)
`michael.crichton@gowlingwlg.com
`Tel:
`613-786-0248
`Fax:
`613-788-3557
`
`Ben Pearson (LSO no. 72029A)
`ben.pearson@gowlingwlg.com
`Tel:
`613-786-8678
`Fax:
`613-563-9869
`
`Lawyers for the plaintiff
`
`
`
`UNIVERSITY OF WATERLOO
`Plaintiff
`
`-and-
`
`SALIENT ENERGY and BRIAN ADAMS
`Defendants
`
`Court File No.
`
`ONTARIO
`SUPERIOR COURT OF JUSTICE
`
`PROCEEDING COMMENCED AT
`WATERLOO REGION
`
`STATEMENT OF CLAIM
`
`GOWLING WLG (CANADA) LLP
`Barristers & Solicitors
`Suite 2600
`160 Elgin Street
`Ottawa ON KIP 1C3
`
`Michael Crichton (LSO no. 48993G)
`michael.crichton@gowlingwlg.com
`Tel:
`613-786-0248
`Fax:
`613-788-3557
`
`Ben Pearson (LSO no. 72029A)
`ben.pearson@gowlingwlg.com
`Tel:
`613-786-8678
`Fax:
`613-563-9869
`
`Lawyers for the Plaintiff
`
`
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