UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF WISCONSIN, GREEN BAY DIVISION
`----------------------------------------------------------X
`ENCAP, LLC. :
`Plaintiff, :
` :
`v. :
` :
`THE SCOTTS COMPANY, LLC, :
` :
`THE SCOTTS MIRACLE-GRO COMPANY, LLC,
`:
`:
`:
`:
`:
`:
`:
`Defendants
`----------------------------------------------------------X
`
`CASE NO. 1:11-cv-00685-WCG
`JURY TRIAL DEMANDED
`
`and
`
`OMS INVESTMENTS, INC.,
`
`
`
`FIRST AMENDED COMPLAINT
`
`Plaintiff, ENCAP, LLC (“ENCAP”) by and through counsel alleges and
`
`complains against Defendants, THE SCOTTS MIRACLE-GRO COMPANY, LLC, THE
`
`SCOTTS COMPANY, LLC, and OMS INVESTMENTS, INC. (collectively, “SCOTTS
`
`MIRACLE-GRO”) as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff, ENCAP, LLC, is a company organized and existing under
`
`the laws of the State of Wisconsin, having a principal place of business at 3921 Algoma
`
`Road, Green Bay, WI 54311.
`
`2.
`
`Upon information and belief, THE SCOTTS MIRACLE-GRO
`
`COMPANY, LLC, Defendant, is a company organized and existing under the laws of the
`
`EXHIBIT A
`
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 1 of 19 Document 59
`
`SCOTTS EX. 1001
`
`
`EASTERN DISTRICT OF WISCONSIN, GREEN BAY DIVISION
`----------------------------------------------------------X
`ENCAP, LLC. :
`Plaintiff, :
` :
`v. :
` :
`THE SCOTTS COMPANY, LLC, :
` :
`THE SCOTTS MIRACLE-GRO COMPANY, LLC,
`:
`:
`:
`:
`:
`:
`:
`Defendants
`----------------------------------------------------------X
`
`CASE NO. 1:11-cv-00685-WCG
`JURY TRIAL DEMANDED
`
`and
`
`OMS INVESTMENTS, INC.,
`
`
`
`FIRST AMENDED COMPLAINT
`
`Plaintiff, ENCAP, LLC (“ENCAP”) by and through counsel alleges and
`
`complains against Defendants, THE SCOTTS MIRACLE-GRO COMPANY, LLC, THE
`
`SCOTTS COMPANY, LLC, and OMS INVESTMENTS, INC. (collectively, “SCOTTS
`
`MIRACLE-GRO”) as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff, ENCAP, LLC, is a company organized and existing under
`
`the laws of the State of Wisconsin, having a principal place of business at 3921 Algoma
`
`Road, Green Bay, WI 54311.
`
`2.
`
`Upon information and belief, THE SCOTTS MIRACLE-GRO
`
`COMPANY, LLC, Defendant, is a company organized and existing under the laws of the
`
`EXHIBIT A
`
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 1 of 19 Document 59
`
`SCOTTS EX. 1001
`
`
`
`State of Ohio, having a principal place of business at 14111 Scotts Lawn Road,
`
`Marysville, OH 43041.
`
`3.
`
`Upon information and belief, THE SCOTTS COMPANY, LLC,
`
`Defendant, is a company organized and existing under the laws of the State of Ohio,
`
`having a principal place of business at 14111 Scotts Lawn Road, Marysville, OH 43041.
`
`4.
`
`Upon information and belief, OMS INVESTMENTS, INC., Defendant,
`
`is a company organized and existing under the laws of the State of Delaware, having a
`
`principal place of business at 10250 Constellation Blvd., Los Angeles, CA.
`
`JURISDICTION AND VENUE
`
`5.
`
`This is a civil action seeking damages, injunctive relief and
`
`attorney’s fees for federal claims including patent infringement, and for state law claims
`
`including trade secret misappropriation and violation of a Confidentiality Agreement.
`
`6.
`
`The jurisdiction of this Court over the federal claims is proper
`
`pursuant to 28 U.S.C. §1331 (federal question) and §1338 (patent). This Court has
`
`jurisdiction over the state law claims pursuant to 28 U.S.C. §1367 (supplemental),
`
`because they form part of the same case or controversy as the federal claims, and also
`
`pursuant to 28 U.S.C. §1332 (diversity), because the plaintiff is citizen of a different
`
`state than any of the defendants and the amount in controversy exceeds $75,000.
`
`Venue is proper in this Court pursuant to 28 U.S.C. §1391 and §1400.
`
`7.
`
`This Court has personal jurisdiction over SCOTTS MIRACLE-GRO
`
`due to its continuous and systematic business relating to its products in the state of
`
`
`
`
`2
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 2 of 19 Document 59
`
`
`
`Wisconsin including the sale, offering for sale and/or advertisement of its products in
`
`Wisconsin.
`
`8.
`
`The SCOTTS Company, LLC manufactures and sells “EZ Seed®”
`
`Products, “Nature Scape Mulch” Product, “Expand ‘n Gro” Product, “LawnSoil” Product,
`
`“Turf Builder® and Green Max™ Fertilizer” Product, “Moisture Control Potting Mix”
`
`Product, and “Turf Builder®” Grass Seed Products that infringe technology platform
`
`patents that ENCAP is asserting in this action. The Court has personal jurisdiction over
`
`the SCOTTS Company, LLC., because the SCOTTS Company, LLC. advertises, offers for
`
`sale and/or sells the infringing “EZ Seed®” Products, “Nature Scape Mulch” Product,
`
`“Expand ‘n Gro” Product, “LawnSoil” Product, “Turf Builder® and Green Max™
`
`Fertilizer” Product, “Moisture Control Potting Mix” Product, and “Turf Builder®” Grass
`
`Seed Products in interstate commerce, including in the State of Wisconsin and in this
`
`District and continue to conduct this infringing activity in a continuous and systemic
`
`manner.
`
`9.
`
`The SCOTTS Miracle-Gro Company, LLC manufactures and sells “EZ
`
`Seed®” Products, “Magic Patch®” Products, “Flower Magic” Products and “Turf
`
`Builder®” Grass Seed Products that infringe technology platform patents that ENCAP is
`
`asserting in this action. The Court has personal jurisdiction over the SCOTTS Miracle-
`
`Gro Company, LLC, because the SCOTTS Miracle- Gro Company, LLC. advertises, offers
`
`for sale and/or sells the infringing “EZ Seed®” Products, “Magic Patch®” Products,
`
`“Flower Magic” Products and “Turf Builder®” Grass Seed Products in interstate
`
`
`
`
`3
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 3 of 19 Document 59
`
`
`
`commerce, including in the State of Wisconsin and in this District and continue to
`
`conduct this infringing activity in a continuous and systemic manner.
`
`10. OMS Investments, Inc. directs the manufacture, offer for sale, sale,
`
`and licensing of the “EZ Seed®” Products, “Magic Patch®” Products, “Flower Magic”
`
`Products, “Nature Scape Mulch” Product, “Expand ‘n Gro” Product, “LawnSoil” Product,
`
`“Turf Builder® and Green Max™ Fertilizer” Product, “Moisture Control Potting Mix”
`
`Product and “Turf Builder®” Grass Seed Products that infringe technology platform
`
`patents that ENCAP is asserting in this action. This Court has personal jurisdiction over
`
`OMS Investments, Inc. because OMS Investments, Inc. directs the offer for sale and
`
`sale of the “EZ Seed®” Products, “Magic Patch®” Products, “Flower Magic” Products,
`
`“Nature Scape Mulch” Product, “Expand ‘n Gro” Product, “LawnSoil” Product, “Turf
`
`Builder® and Green Max™ Fertilizer” Product, “Moisture Control Potting Mix” Product
`
`and “Turf Builder®” Grass Seed Products, in interstate commerce, including in the state
`
`of Wisconsin and in this district and continue to conduct this infringing activity in a
`
`continuous and systemic manner.
`
`BACKGROUND
`
`11.
`
`U.S. Patent, 6,209,259 (“the ‘259 patent”) was issued on April 3,
`
`2001 from application Serial No. 09/113,254 filed on July 10, 1998, entitled SEEDING
`
`TREATMENTS. The patent for this platform technology is assigned to ENCAP, LLC
`
`through an assignment dated July 12, 2000 and recorded at the United States Patent
`
`and Trademark Office at Reel 011258, Frame 0827. A true and correct copy of the ‘259
`
`patent is annexed hereto as Exhibit 1.
`
`
`
`
`4
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 4 of 19 Document 59
`
`
`
`12.
`
`U.S. Patent 7,412,878 (“the ‘878 patent”) was issued on August 19,
`
`2008 from application Serial No. 10/841,204 filed on May 6, 2004, entitled WATERING
`
`INDICATOR. The patent for this platform technology is assigned to ENCAP, LLC
`
`through assignments dated May 6, 2004 and recorded at the United States Patent and
`
`Trademark Office at Reel 015313, Frame 0691. A true and correct copy of the ‘878
`
`patent is annexed hereto as Exhibit 2.
`
`13.
`
`U.S. Patent 6,745,513 (“the ‘513 patent”) was issued on June 8,
`
`2004 from application Serial No. 09/821,128 filed on March 29, 2001, entitled
`
`AGGLOMERATED MULCH CARRIER. The patent for this platform technology is assigned
`
`to ENCAP, LLC through assignments dated March 23, 2001 and recorded at the United
`
`States Patent and Trademark Office at Reel 011673, Frame 0105. A true and correct
`
`copy of the ‘513 patent is annexed hereto as Exhibit 3.
`
`14.
`
` U.S. Patent 8,474,183 (“the ‘183 patent”) was issued on July 2,
`
`2013) from application Serial No. 09/769076 filed on January 1, 2001, entitled
`
`COLORED OR FRAGRANCED HORTICULTURAL/AGRICULTURAL PRODUCTS. The patent
`
`for this platform technology is assigned to ENCAP, LLC through assignments dated
`
`(January 25, 2001) and recorded at the United States Patent and Trademark Office at
`
`Reel/Frame 011491/0705. A true and correct copy of the patent is annexed hereto as
`
`Exhibit 4.
`
`15.
`
`ENCAP has invented and patented many novel platform
`
`technologies in the seed, mulch, water management, soil conditioners and fertilizer
`
`industries. ENCAP has expended millions of dollars in research and development and
`
`
`
`
`5
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 5 of 19 Document 59
`
`
`
`legal costs to develop and protect these platform technologies. ENCAP is a marketer of
`
`products in the Consumer and Commercial Lawn and Garden Industry, selling seed,
`
`mulch, fertilizer (and combinations thereof), water management, soil conditioning and
`
`related products based on these platform technologies.
`
`16.
`
`In early 2002, Personnel from The SCOTTS Company, LLC and
`
`SCOTTS Miracle-Gro Company, LLC, including Directors of Marketing, Production
`
`Managers, Brand Managers, Research and Development, and the Manager of the “Patch
`
`Master®” Product Line had several introductory confidential communications with
`
`persons at ENCAP, prior to the Confidential Information Memorandum being sent to and
`
`received by The SCOTTS Company, LLC and SCOTTS Miracle-Gro, LLC, inquiring about
`
`ENCAP’s platform technologies and whether they were protected by any patents. The
`
`SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC were interested to know
`
`how the seed coating in ENCAP’s encapsulated seed technology absorbed water.
`
`17.
`
`Personnel from The SCOTTS Company, LLC and SCOTTS Miracle-
`
`Gro Company, LLC stated to ENCAP at that time that they recognized the benefits of
`
`ENCAP’s products and related platform technologies over the pelleted mulch products in
`
`reducing seed segregation. SCOTTS’ representatives further stated that they were
`
`interested in exploring the possibility of having a premium line of seed, mulch and
`
`fertilizer patch products. SCOTTS’ representatives also stated that ENCAP’s Grass Repair
`
`Kit is a patch type product that offers many advantages over the puffy-bag and pellet
`
`products at that time.
`
`
`
`
`6
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 6 of 19 Document 59
`
`
`
`18.
`
`Shortly thereafter, ENCAP sent to The SCOTTS Company, LLC and
`
`SCOTTS Miracle-Gro Company, LLC at The SCOTTS Company, LLC and SCOTTS Miracle-
`
`Gro Company, LLC’s request, cases of ENCAP’s Grass Repair Kit, and ENCAP’s Mulch and
`
`Encapsulated Seed Products that were representative of ENCAP’s platform technology.
`
`The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC stated that they
`
`were going to test these products.
`
`19.
`
`In June of 2002, ENCAP, through its agents, Transactive Partners,
`
`Ltd., sent to The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC, a
`
`Confidential Information Memorandum. On the second page of the document, it was
`
`stated that the recipient of the Confidential Information Memorandum, The SCOTTS
`
`Company, LLC and SCOTTS Miracle-Gro Company, LLC, agrees herein, in consideration
`
`for the receipt of this document, not to reproduce, copy, use or transmit this document
`
`or the data contained herein, in whole or part, or to suffer such action by others for any
`
`other purpose except with written permission of Transactive Partners Ltd.
`
`20.
`
`The Confidential Information Memorandum stated that ENCAP had
`
`recently developed and protected innovative platform technologies in the horticultural
`
`and agricultural markets. ENCAP disclosed the problems and shortcomings related to
`
`the current product technologies offered at the time, and how ENCAP’s platform
`
`technologies and products were developed to be a novel and innovative solution to
`
`them.
`
`
`
`
`7
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 7 of 19 Document 59
`
`
`
`21.
`
`The Confidential Information Memorandum stated that in all cases,
`
`the platform technologies were intended to make life easier for both the consumer and
`
`the seed. SCOTTS MIRACLE-GRO called their current product, EZ Seed.
`
`22. One such innovative platform technology discussed is the process
`
`that allows ENCAP to encapsulate individual seeds with the precise amount of nutrients,
`
`conditioners, and mulch required to enhance the seeds’ ability to survive and thrive.
`
`The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC were told at this
`
`time that this technology was patented. (US Patent 6,209,259).
`
`23. ENCAP further disclosed its mulch technologies, which combine
`
`various mulching agents, soil conditioners, watering indicators (part of a pending
`
`patent application owned by ENCAP), asymmetric, interlocking granules for use as a
`
`seed cover and/or seed carrier. (US Patent 6,745,513).
`
`24.
`
`ENCAP disclosed to The SCOTTS Company, LLC and SCOTTS
`
`Miracle-Gro Company, LLC the ideas behind ENCAP’s encapsulated seed platform
`
`technology, which included creating a protective moisture-absorbing blanket that is
`
`around each seed. The moisture-absorbing blanket enhances the germination and
`
`establishment process by absorbing and holding water around each seed. Water
`
`softens and swells the seed. The seed encapsulation absorbs/retains dramatically more
`
`moisture than normal, un-encapsulated turf seed. ENCAP’s encapsulated seed was also
`
`shown by university studies to outperform the establishment of untreated seeds.
`
`25.
`
`ENCAP also provided confidential information to The SCOTTS
`
`Company, LLC and SCOTTS Miracle-Gro Company, LLC regarding the use of the color of
`
`
`
`
`8
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 8 of 19 Document 59
`
`
`
`the mulch as a watering indicator as taught in its platform technology. ENCAP disclosed
`
`to The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC that watering
`
`practices by consumers require the help of watering platform technologies to help the
`
`consumer know when, and how long, to water. The mulch is a light color when dry and
`
`a dark color when wet.
`
`26.
`
`ENCAP specifically referred to one of its watering platform
`
`technologies (Water-Me-Technology) as “THE SMART PRODUCT”. This technology helps
`
`tell the consumer when watering is needed based on a visual color indicator to the
`
`consumer. Five years after ENCAP disclosed these concepts to SCOTTS MIRACLE- GRO,
`
`SCOTTS MIRACLE-GRO trademarked the name WATER SMART in association with their
`
`soil amendments, fertilizer, and grass seed products.
`
`27.
`
`ENCAP also provided confidential information to The SCOTTS
`
`Company, LLC and SCOTTS Miracle-Gro Company, LLC regarding the use of a product
`
`that changes size to indicate when watering is needed. This watering indicator platform
`
`technology taught how a mulch product can be watered until a specific size change
`
`(increase) occurred.
`
`28.
`
`It was specifically stated by ENCAP in the Confidential Information
`
`Memorandum to The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC
`
`that the Encapsulated Seed platform technology was patented. It was also stated to
`
`The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC that the
`
`Agglomerated Mulch Carrier platform technology was patent pending and that the
`
`Colored or Fragrance Horticultural/Agricultural platform technology was patent pending.
`
`
`
`
`9
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 9 of 19 Document 59
`
`
`
`29.
`
`Transactive Partners received a signed a Confidentiality Agreement
`
`in June of 2002 on behalf of The SCOTTS Company, LLC and SCOTTS Miracle-Gro
`
`Company, LLC prior to Transactive Partners disclosing any of its confidential information
`
`to The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC on ENCAP’s
`
`behalf.
`
`30.
`
`In 2006, Wisconsin Governor Jim Doyle honored ENCAP with the
`
`Governor’s Small Business Technology Transfer Award for outstanding achievement
`
`moving a technological innovation from idea to commercialization. The award
`
`acknowledges ENCAP’s unique technology platforms and innovation advancement
`
`business model and its successful results. In November 2006, the Green Bay Chamber
`
`of Commerce awarded ENCAP its High Technology Manufacturer of the Year Award
`
`recognizing ENCAP for its innovative technology platforms. In 2007, ENCAP was named
`
`number 110 in Inc. Magazine’s prestigious “Inc. 500 list,” which charts America’s fastest
`
`growing privately held companies based, on sales growth of ENCAP’s platform
`
`technology products.
`
`31. During the initial discussions between The SCOTTS Company, LLC
`
`and SCOTTS Miracle-Gro Company, LLC and ENCAP in 2002, ENCAP provided its Grass
`
`Repair Kit to The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC. The
`
`Grass Repair Kit included mulch and seed in combination. SCOTTS currently is selling
`
`the “Patchmaster®” Lawn Repair Mix and Evergreen Lawn Repair Kit. Sellers and
`
`distributors of the SCOTTS Patchmaster Lawn Repair Mix and Evergreen Lawn Repair
`
`
`
`
`10
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 10 of 19 Document 59
`
`
`
`Kit products have been referring to this product as a “Repair Kit”, which is a trademark
`
`of ENCAP.
`
`32.
`
`ENCAP is known and recognized by Lawn and Garden industry
`
`leaders for its innovative expertise and problem solving abilities.
`
`FIRST CAUSE OF ACTION (PATENT INFRINGEMENT)
`
`33.
`
`Plaintiff, ENCAP hereby incorporates paragraphs 1-32 as if fully set
`
`forth herein.
`
`34.
`
`SCOTTS MIRACLE-GRO has been, is, and will continue infringing
`
`ENCAP’s ‘513 patent through its unauthorized manufacture, use, offers for sale and
`
`sales of its “EZ Seed®” products and Miracle-Gro “Patch Magic” products and threatens
`
`to, and will continue to, infringe the ‘513 patent, causing ENCAP great and irreparable
`
`injury and damage unless enjoined by this Court, said infringement being without
`
`consent of ENCAP.
`
`35.
`
`SCOTTS MIRACLE-GRO’s actions constitute a deliberate and willful
`
`infringement of U.S. Patent 6,745,513 and will continue unless enjoined by this Court.
`
`36.
`
`ENCAP has worked to improve and has improved the seed, mulch
`
`and fertilizer industry by designing, manufacturing and distributing innovative products
`
`and patenting the related platform technologies which help the environment with the
`
`use of an agglomerated/granulated mulch product as a seed carrier that is produced by
`
`an agglomeration technology. The mulch agglomerates used as a carrier for the seeds
`
`reduces segregation (unmixing) tendencies of seeds from the carrier product.
`
`
`
`
`
`
`11
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`
`
`
`SECOND CAUSE OF ACTION (PATENT INFRINGEMENT)
`
`37.
`
`Plaintiff, ENCAP hereby incorporates paragraphs 1-36 as if fully set
`
`forth herein.
`
`38.
`
`SCOTTS MIRACLE-GRO has been, is, and will continue infringing
`
`ENCAP’s ‘878 patent through its unauthorized manufacture, use, offers for sale and
`
`sales of its “EZ Seed®” products and Miracle-Gro “Patch Magic” products and threatens
`
`to, and will continue to, infringe the ‘878 patent, causing ENCAP great and irreparable
`
`injury and damage unless enjoined by this Court, said infringement being without
`
`consent of ENCAP.
`
`39.
`
`SCOTTS MIRACLE GRO’s actions constitute a deliberate and willful
`
`infringement of U.S. Patent 7,412,878 and will continue unless enjoined by this Court.
`
`40.
`
`ENCAP has worked to improve and has improved the seed, mulch
`
`and fertilizer industry by designing, manufacturing and distributing products which help
`
`the environment with the use of water absorbing/releasing materials (Indicators) to
`
`serve as the visual indicators for people to know when they are to start and stop
`
`watering their lawn.
`
`THIRD CAUSE OF ACTION (PATENT INFRINGEMENT)
`
`41.
`
`Plaintiff, ENCAP hereby incorporates paragraphs 1-40 as if fully set
`
`forth herein.
`
`42.
`
`SCOTTS MIRACLE-GRO has been, is, and will continue infringing
`
`ENCAP’s ‘259 patent through its unauthorized manufacture, use, offers for sale and
`
`sales of its Turf Builder® Grass Seed Products and threatens to, and will continue to
`
`
`
`
`12
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 12 of 19 Document 59
`
`
`
`infringe the ‘259 patent, causing ENCAP great and irreparable injury and damage unless
`
`enjoined by this Court, said infringement being without consent of ENCAP.
`
`43.
`
`SCOTTS MIRACLE-GRO’s actions constitute a deliberate and willful
`
`infringement of U.S. Patent 6,209,259 and will continue unless enjoined by this Court.
`
`44.
`
`ENCAP has worked to improve and has improved the seed, mulch
`
`and fertilizer industry by designing, manufacturing and distributing products which help
`
`the environment, by enhancing the control of moisture about the seed and thereby to
`
`assist in seed germination, release of plant nutrients into the soil, and in stabilizing
`
`moisture content in soil on which the encapsulated seed is placed.
`
`FOURTH CAUSE OF ACTION
`(MISAPPROPRIATION OF TRADE SECRETS)
`
`Plaintiff, ENCAP hereby incorporates paragraphs 1-44 as if fully set
`
`45.
`
`forth herein.
`
`46.
`
`ENCAP took reasonable efforts to maintain the Confidential
`
`Information described in the Confidential Information Memorandum and in
`
`conversations with The SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC
`
`as a trade secret.
`
`47.
`
`The information provided in the Confidential Information
`
`Memorandum and related conversations with The SCOTTS Company, LLC and SCOTTS
`
`Miracle-Gro Company, LLC regarding the encapsulated seed, mulch and watering
`
`technologies was not generally known to the public.
`
`48.
`
`The information provided in the Confidential Information
`
`Memorandum and related conversations with The SCOTTS Company, LLC and SCOTTS
`
`
`
`
`13
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`
`
`
`Miracle-Gro Company, LLC regarding the encapsulated seed, mulch and watering
`
`technologies conferred an economic benefit to ENCAP.
`
`49.
`
`SCOTTS MIRACLE-GRO never had permission to use any of the
`
`information that was provided to it by ENCAP through Transactive Partners.
`
`50. Nearly seven years after The SCOTTS Company, LLC and SCOTTS
`
`Miracle-Gro Company, LLC received ENCAP’s confidential and trade secret information,
`
`SCOTTS MIRACLE-GRO came out with its “EZ Seed®” Products, Miracle-Gro “Patch
`
`Magic” Products and “Turf Builder®” Grass Seed Products which upon information and
`
`belief use information which was provided to The SCOTTS Company, LLC and SCOTTS
`
`Miracle-Gro Company, LLC under confidentiality from ENCAP.
`
`51.
`
`The last communication from The SCOTTS Company, LLC and
`
`SCOTTS Miracle-Gro Company, LLC to ENCAP was on September 30, 2002 when The
`
`SCOTTS Company, LLC and SCOTTS Miracle-Gro Company, LLC told ENCAP they were
`
`running test plots and then they would do consumer testing.
`
`52.
`
`In 2009, SCOTTS MIRACLE-GRO began selling its “Turf Builder®”
`
`Grass Seed with Water Smart Technology. Upon information and belief, and after a
`
`reasonable investigation, SCOTTS Water Smart Technology is the same or highly similar
`
`technology that ENCAP disclosed to The SCOTTS Company, LLC and SCOTTS Miracle-
`
`Gro Company, LLC under confidentiality. Specifically, SCOTTS MIRACLE-GRO
`
`encapsulated their best seed in an absorbent coating that helps the seed to stay moist
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`and germinate faster than uncoated seeds. SCOTTS MIRACLE-GRO stated in their
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`literature that 50% of grass seed users told them that they were not successful at
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`14
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 14 of 19 Document 59
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`growing grass because they didn’t water frequently enough. SCOTTS MIRACLE-GRO
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`stated that they listened to their consumers and came up with a solution. They
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`wrapped their best seed in a super absorbing coating that helps seed to stay moist and
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`germinate faster than uncoated seed. In reality, SCOTTS MIRACLE-GRO
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`misappropriated this solution from ENCAP’s confidential technology.
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`53.
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`The Chief Financial Officer of SCOTTS MIRACLE-GRO, Dave Evans,
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`stated at Oppenheimer’s Ninth Annual Conference that the Turf Builder® Grass Seed
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`with Water Smart Technology was “game changing innovation”.
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`54.
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`SCOTTS MIRACLE-GRO calls their SCOTTS Turf Builder® Grass
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`Seed product “revolutionary”.
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`55.
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`In the 2010 SCOTTS MIRACLE-GRO Annual Report, it states the
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`introduction of EZ SEED® marked SCOTTS MIRACLE-GRO’s most successful new
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`product launch ever.
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`56.
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`SCOTTS MIRACLE-GRO misappropriated ENCAP’s trade secrets
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`under Wisconsin’s Uniform Trade Secret Act, Wis. Stats. §134.90 that were in the
`
`Confidential Information Memorandum and disclosed to The SCOTTS Company, LLC and
`
`SCOTTS Miracle-Gro Company, LLC through conversations with Transactive Partners
`
`Ltd.
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`57.
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`SCOTTS MIRACLE-GRO was unjustly enriched by using ENCAP’s
`
`trade secrets and ENCAP is entitled to all of SCOTTS MIRACLE-GRO’s profits from its use
`
`of the trade secrets.
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`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 15 of 19 Document 59
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`FIFTH CAUSE OF ACTION (PATENT INFRINGEMENT)
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`58.
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`Plaintiff, ENCAP hereby incorporates paragraphs 1-57 as if fully set
`
`forth herein.
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`59.
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`SCOTTS MIRACLE-GRO has been, is, and will continue infringing
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`ENCAP’s ‘183 patent through its unauthorized manufacture, use, offers for sale and
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`sales of its “EZ Seed®” products, “Patch Magic” products, “Flower Magic” products,
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`“Expand ‘n Gro” Product, and threatens to, and will continue to, infringe the ‘183
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`patent, causing ENCAP great and irreparable injury and damage unless enjoined by this
`
`Court, said infringement being without consent of ENCAP.
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`60.
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`SCOTTS MIRACLE GRO’s actions constitute a deliberate and willful
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`infringement of U.S. Patent 8,474,183 and will continue unless enjoined by this Court.
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`61.
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`ENCAP has worked to improve and has improved the seed, mulch
`
`and fertilizer industry by designing, manufacturing and distributing products which help
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`the environment with the use of water absorbing/releasing materials (Indicators) to
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`serve as the visual color indicators for people to know when they are to start and stop
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`watering their lawn.
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`
`
`
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`WHEREFORE, ENCAP prays for the following relief:
`
`A.
`
`That United States Patents 6,745,513, 7,412,878, 6,209,259 and
`
`8,474,183 be adjudged valid and enforceable;
`
`B.
`
`That SCOTTS MIRACLE-GRO be adjudged to have infringed United
`
`States Patents 6,745,513, 7,412,878, 6,209,259, and 8,474,183;
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`
`
`
`
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`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 16 of 19 Document 59
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`C.
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`That SCOTTS MIRACLE-GRO’s acts of infringement be adjudged to
`
`be willful and deliberate;
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`D.
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`That SCOTTS MIRACLE-GRO, its officers, agents, servants,
`
`employees and attorneys and any and all persons in active concert or participation with
`
`them be preliminarily and permanently enjoined and restrained from infringing United
`
`States Patents 6,745,513, 7,412,878, 6,209,259, and 8,474,183, including but not
`
`limited to by making, using, offering for sale and selling “EZ Seed®” Products, “Patch
`
`Magic” Products, “Magic Patch®” Products, “Flower Magic” Products, “Nature Scape
`
`Mulch” Product, “Expand ‘n Gro” Product, “LawnSoil” Product, “Turf Builder® and Green
`
`MaxTM Fertilizer” Product, “Moisture Control Potting Mix” Product, and “ and “Turf
`
`Builder®” Grass Seed Products;
`
`E.
`
`That SCOTTS MIRACLE-GRO be ordered to account for and pay to
`
`ENCAP the damage sustained by ENCAP due to SCOTTS MIRACLE-GRO’s infringement
`
`of United States Patents 6,745,513, 7,412,878, 6,209,259, and 8,474,183;
`
`F.
`
`That SCOTTS MIRACLE-GRO be ordered to pay pre-judgment and
`
`post-judgment interest on the damages awarded against it;
`
`G.
`
`That SCOTTS MIRACLE-GRO be ordered to account for and pay to
`
`ENCAP any profits or royalties for any convoyed sales of products;
`
`H.
`
`That ENCAP be awarded its costs and attorney’s fees pursuant to 35
`
`U.S.C. §285;
`
`
`
`
`17
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 17 of 19 Document 59
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`I.
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`An Order directing SCOTTS MIRACLE-GRO to deliver up to the
`
`Court for disposition all product and all advertising and promotional materials that are in
`
`violation of ENCAP’s rights;
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`J.
`
`An award to ENCAP of SCOTTS MIRACLE-GRO’s profits and
`
`ENCAP’s damages;
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`K.
`
`A trebling of the damages and profits awarded to ENCAP on
`
`account of SCOTTS MIRACLE-GRO’s willful infringement of ENCAP’s patents;
`
`L.
`
`An award to ENCAP of such punitive damages as are appropriate in
`
`view of the willful conduct on the part of SCOTTS MIRACLE-GRO;
`
`M.
`
`N.
`
`That ENCAP be adjudged to have trade secrets;
`
`That SCOTTS MIRACLE-GRO be found to have misappropriated
`
`ENCAP’s trade secrets;
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`O.
`
`An award to ENCAP for unjust enrichment for SCOTTS MIRACLE-
`
`GRO’s use of ENCAP’s trade secrets;
`
`P.
`
`That SCOTTS MIRACLE-GRO’s misappropriation of trade secrets be
`
`found to be willful and malicious and that ENCAP be awarded punitive damages in an
`
`amount not exceeding twice any compensatory award received by ENCAP for that
`
`misappropriation;
`
`Q.
`
`An award to ENCAP of its costs in this action including its
`
`reasonable attorney’s fees; and
`
`R.
`
`Such other and further relief as the Court may deem just and
`
`equitable under the circumstances herein.
`
`
`
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`18
`Case 1:11-cv-00685-WCG Filed 07/17/13 Page 18 of 19 Document 59
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`Dated this 2nd day of July, 2013.
`
`Respectfully submitted,
`
`
`
`
`
`
`s/T. Wickham Schmidt
`T. Wickham Schmidt, State Bar No. 1062002
`Law Firm of Conway, Olejniczak & Jerry, S.C.
`Attorneys and Counselors at Law
`231 South Adams Street Green
`Bay, WI 54305-3200
`TELEPHONE: (920) 437-0476
`FACSIMILE: (920) 437-2868
`
`
`Philip M. Weiss (PW 4505)
`WEISS & WEISS
`410 Jericho Turnpike, Suite 105
`Jericho, NY 11753
`TELEPHONE: (516) 739-1500
`
`
`Aaron Olejniczak, State Bar No. 1034997
`Andrus, Sceales, Starke & Sawall, LLP 100
`East Wisconsin Ave, Suite 1100
`Milwaukee, WI 53202
`TELEPHONE: (414) 271-7590
`FACSIMILE: (414) 271-5770
`
`Attorneys for Plaintiff
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`Case 1:11-cv-00685-WCG Filed
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