Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 1 of 10 PageID #: 66
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF INDIANA
`NEW ALBANY DIVISION
`
`Civil Action No.
`4:13-cv-0142-TWP-WGH
`
`JURY TRIAL DEMANDED
`
`))))))))))
`
`CSP TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`CLARIANT PRODUKTE DEUTSCHLAND
`GMBH, CLARIANT CORPORATION, and
`CLARIANT PRODUCTION (FRANCE)
`S.A.S.,
`
`Defendants.
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff CSP Technologies, Inc. (“CSP”), by and through its undersigned counsel, alleges
`
`as follows:
`
`INTRODUCTION
`
`1.
`
`CSP comes before this Court again due to the Defendants’ Clariant Produkte
`
`Deutschland GmbH, Clariant Corporation and Clariant Production (France) S.A.S. (referred to
`
`herein collectively as “Defendants”) willful infringement of CSP’s patented technology relating to
`
`packaging for, among other things, the diagnostic test strip market.
`
`2.
`
`This Court previously determined that Defendants’ predecessors’ products for
`
`packaging of, for example, diagnostic test strips,
`
`infringed two of CSP’s patents.
`
`See
`
`4:03-cv-00003-SEB-WGH Doc. No. 606. After this Court found that CSP’s patents were valid
`
`and infringed by Defendants’ predecessors’ products, the parties settled the case and this Court
`
`entered a Consent Order, retaining jurisdiction and enjoining the Defendants’ predecessors from
`
`infringing the asserted patents in that case. See id. at Doc. No. 636, ¶ 10 (enjoining Süd-Chemie,
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF INDIANA
`NEW ALBANY DIVISION
`
`Civil Action No.
`4:13-cv-0142-TWP-WGH
`
`JURY TRIAL DEMANDED
`
`))))))))))
`
`CSP TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`CLARIANT PRODUKTE DEUTSCHLAND
`GMBH, CLARIANT CORPORATION, and
`CLARIANT PRODUCTION (FRANCE)
`S.A.S.,
`
`Defendants.
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff CSP Technologies, Inc. (“CSP”), by and through its undersigned counsel, alleges
`
`as follows:
`
`INTRODUCTION
`
`1.
`
`CSP comes before this Court again due to the Defendants’ Clariant Produkte
`
`Deutschland GmbH, Clariant Corporation and Clariant Production (France) S.A.S. (referred to
`
`herein collectively as “Defendants”) willful infringement of CSP’s patented technology relating to
`
`packaging for, among other things, the diagnostic test strip market.
`
`2.
`
`This Court previously determined that Defendants’ predecessors’ products for
`
`packaging of, for example, diagnostic test strips,
`
`infringed two of CSP’s patents.
`
`See
`
`4:03-cv-00003-SEB-WGH Doc. No. 606. After this Court found that CSP’s patents were valid
`
`and infringed by Defendants’ predecessors’ products, the parties settled the case and this Court
`
`entered a Consent Order, retaining jurisdiction and enjoining the Defendants’ predecessors from
`
`infringing the asserted patents in that case. See id. at Doc. No. 636, ¶ 10 (enjoining Süd-Chemie,
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 2 of 10 PageID #: 67
`
`Inc. along with “those in active concert or participation with them (including Süd-Chemie AG and
`
`Airsec S.A.)….”).
`
`3.
`
`Following the resolution of the aforementioned case, Defendants’ predecessors
`
`began selling packaging for diagnostic test strips again using CSP’s patented technology. On
`
`March 14, 2011, CSP filed suit in this Court charging Defendants’ predecessors with willful
`
`infringement of United States Patent No. 7,537,137. That case is currently pending in this Court
`
`before the Honorable Richard L. Young. CSP Technologies, Inc. v. Sud-Chemie AG, et al,
`
`11-cv-00029-RLY-WGH.
`
`4.
`
`On September 10, 2013, United States Patent No. 8,528,778, titled “Resealable
`
`Moisture Tight Container Assembly For Strips And The Like Having A Lip Snap Seal,” issued to
`
`CSP (the “778 patent”). Defendants are selling packaging for diagnostic test strips that infringes
`
`CSP’s 778 patent. Defendants’ willful infringement of CSP’s patent rights will cause CSP
`
`irreparable harm and substantial monetary damages. CSP seeks an injunction and treble damages
`
`for Defendants’ repeated refusal to respect CSP’s intellectual property rights.
`
`THE PARTIES
`
`5.
`
`CSP is a corporation organized under the laws of the State of Delaware and has a
`
`principal place of business at 960 W. Veterans Blvd., Auburn, Alabama.
`
`6.
`
`On information and belief, Clariant Produkte Deutschland GmbH is a German
`
`company with a principal place of business at Industriepark Hochst, Frankfurt, Germany, 65926.
`
`On information and belief, Süd-Chemie AG, a defendant in the litigations referred to in paragraphs
`
`2 and 3 above, was merged into Clariant on July 1, 2012.
`
`7.
`
`On information and belief, Clariant Corporation is a corporation organized under
`
`the laws of the State of New York with a principal place of business at 4000 Monroe Road,
`
`2
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 3 of 10 PageID #: 68
`
`Charlotte, North Carolina. On information and belief, Clariant Corporation also has multiple sales
`
`and manufacturing offices throughout the United States. On information and belief, Süd-Chemie
`
`Inc., a defendant in the litigations referred to in paragraphs 2 and 3 above, was merged into
`
`Clariant Corporation on December 31, 2012.
`
`8.
`
`On information and belief, Clariant Production (France) S.A.S., is a French
`
`company with a principal place of business at Rue Du Flottage, Trosly Breuil, Picardy, France. On
`
`information and belief, Airsec S.A.S., a defendant in the litigations referred to in paragraphs 2 and
`
`3 above, was merged into Clariant Production (France) S.A.S. on December 31, 2012.
`
`JURISDICTION AND VENUE
`
`9.
`
`10.
`
`This action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et seq.
`
`This Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§
`
`1331 and 1338(a).
`
`11.
`
`On information and belief, this Court has personal jurisdiction, general and
`
`specific, over Defendants because they have sufficient minimum contacts to establish personal
`
`jurisdiction in this district. Specifically, Defendants have availed themselves of the privilege of
`
`conducting activities within this judicial district, have systematic and continuous contacts with this
`
`judicial district and regularly transact business within this jurisdictional district because, for
`
`example, Defendants’ products are sold in this district and Defendants derive substantial revenues
`
`from sales in this district.
`
`12.
`
`For example, Defendants have placed their products, including products CSP
`
`accuses of infringement in this litigation, into the stream of commerce knowing and/or reasonably
`
`expecting that such products will be used, offered for sale, marketed, sold, distributed, and/or
`
`imported throughout the United States, including in this judicial district.
`
`3
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 4 of 10 PageID #: 69
`
`13.
`
`Clariant Corporation’s predecessor Süd-Chemie, Inc. has also previously initiated
`
`patent litigation in this district related to its packaging products that are used with, for example,
`
`diagnostic test strips.
`
`14.
`
`Although it is believed that the extent of Defendants’ contacts in this district are
`
`extensive, the extent of Defendants’ contacts in this district will be established after a reasonable
`
`opportunity for discovery.
`
`15.
`
`Venue is proper in this district under 28 U.S.C. §§ 1391 (b), (c) and (d) and 28
`
`U.S.C. § 1400(b).
`
`BACKGROUND
`
`16.
`
`CSP is an innovator in the field of plastic product packaging. For example, CSP
`
`develops, manufactures, distributes and sells innovative products that enhance the stability and
`
`shelf life of package contents, such as diagnostic test strips.
`
`17.
`
`The United States Patent and Trademark Office has granted numerous patents to
`
`CSP for its innovative work in the field of plastic product packaging. These patents include
`
`patents directed towards desiccant entrained polymers and other sealing technology incorporated
`
`into product packaging. These technologies are aimed at creating a moisture-free environment for
`
`packaged product.
`
`18.
`
`In addition to receiving patents on its innovative packaging technology, the United
`
`States Patent and Trademark Office also named one of CSP’s desiccant entrained polymers patents
`
`as the most outstanding new patent of the year in the area of chemistry and chemical engineering.
`
`19.
`
`Defendants are direct competitors of CSP in the field of product packaging for such
`
`things as diagnostic test strips.
`
`4
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 5 of 10 PageID #: 70
`
`20.
`
`On information and belief, Defendants have been unable to penetrate the market for
`
`packaging of diagnostic test strips without copying CSP’s patented technology.
`
`21.
`
`On September 10, 2013, the United States Patent and Trademark Office duly and
`
`legally issued United States Patent No. 8,528,778, titled “Resealable Moisture Tight Container
`
`Assembly For Strips And The Like Having A Lip Snap Seal” (the “778 patent”). A copy of the
`
`778 patent is attached hereto as Exhibit A.
`
`22.
`
`23.
`
`CSP owns all right, title and interest in the 778 patent.
`
`On information and belief, in order to enter the diagnostic test strip packaging
`
`market, Defendants were again forced to use CSP’s patented technology, e.g. technology covered
`
`by the 778 patent, to create moisture-free packaging for diagnostic test strips.
`
`24.
`
`Specifically, Defendants have engaged in and intend to engage in, the manufacture,
`
`distribution, marketing, offering for sale, sale and importation of vials for the packaging of
`
`diagnostic strips that infringe one or more claims of the 778 patent (referred to herein as “the
`
`accused vial products”).
`
`25.
`
`Defendants’ accused vial products include vials that incorporate Defendants’
`
`Advanced Desiccant Polymer (sometimes referred to as ADP®) and/or their 2AP® desiccant
`
`polymer technology. Defendants also sometimes refer to the accused vial products as Handy
`
`Active Tubes® or HAT Tubes®.
`
`26.
`
`For example, on information and belief, Defendants manufacture and have
`
`manufactured the accused vial products through Airsec S.A.S. and Clariant Production (France)
`
`S.A.S. On information and belief, Defendants then sell the accused vial products to at least
`
`LifeScan. LifeScan fills the accused vial products with its diagnostic test strips, including at least
`
`its One Touch Ultra Test Strips. LifeScan makes, uses, offers to sell, sells and/or imports its One
`
`5
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 6 of 10 PageID #: 71
`
`Touch Ultra Test Strips product (which incorporates the accused vial products) throughout the
`
`United States, including in this judicial district.
`
`27.
`
`On information and belief, Defendants know that LifeScan is importing and selling
`
`and intends for LifeScan to import and sell articles that incorporate the accused vial products in the
`
`United States.
`
`28.
`
`On information and belief, Defendants’ business unit responsible for making,
`
`using, marketing, offer for sale, selling and/or importing the accused vial products also has sales
`
`and manufacturing offices in the United States.
`
`29.
`
`Defendants’ accused vial products constitute a material part of the invention
`
`claimed in the 778 patent.
`
`30.
`
`On information and belief, Defendants had notice and knowledge of the application
`
`that led to the 778 patent prior to the filing of this suit. On information and belief, at least as of the
`
`filing of the complaint in this suit, Defendants have had notice and knowledge of the 778 patent
`
`and that their accused vial products infringe the 778 patent. On information and belief,
`
`Defendants’ intend to continue infringing activities despite this notice and knowledge.
`
`31.
`
`The accused vial products are not a staple article or commodity of commerce
`
`suitable for substantial noninfringing use.
`
`COUNT ONE
`PATENT INFRINGEMENT
`
`32.
`
`CSP incorporates by reference the allegations of paragraphs 1-31 above, as if fully
`
`alleged herein.
`
`33.
`
`In contravention of one or more subsections of 35 U.S.C. § 271, Defendants,
`
`without authority, have and are continuing to directly infringe, contributorily infringe and/or
`
`actively induce infringement of one or more claims of the 778 patent, either literally or under the
`
`6
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 7 of 10 PageID #: 72
`
`doctrine of equivalents, by, including but not limited to, making, using, offering to sell, selling or
`
`importing the accused vial products in or into the Unites States and/or causing the accused vial
`
`products to be made, used, offered for sale, sold in or imported into the United States.
`
`34.
`
`At least as of the filing of this suit, Defendants have actual notice of the 778 patent
`
`and are infringing the 778 patent with knowledge of CSP’s patent rights. The filing of this
`
`Complaint also constitutes notice to Defendants of the 778 patent under 35 U.S.C. § 287.
`
`35.
`
`36.
`
`Defendants’ infringing conduct described above is willful and deliberate.
`
`CSP has been damages by Defendants’ infringing activities and will continue to be
`
`so damaged unless enjoined by this Court.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, CSP respectfully requests entry of judgment in its favor and the following
`
`relief, including:
`
`A.
`
`That Defendants be adjudged to have infringed one or more claims of the 778
`
`patent;
`
`B.
`
`That Defendants and all related entities and their officers, agents, employees,
`
`representatives, servants, successors, assigns and all persons in active concert or participation with
`
`any of them, directly or indirectly, be preliminarily and permanently enjoined from making, using,
`
`offering to sell, selling or importing the infringing products in the United States or causing the
`
`infringing products to be made, used, offered for sale, sold in or imported into the United States;
`
`C.
`
`That Defendants account for damages sustained by CSP as a result of Defendants’
`
`infringement of the 778 patent, including both pre- and post- judgment interest and costs as fixed
`
`by this Court under 35 U.S.C. § 284;
`
`7
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 8 of 10 PageID #: 73
`
`D.
`
`That Defendants be adjudged the have willfully and deliberately infringed the 778
`
`patent and that the damages resulting from Defendants’ willful and deliberate violation of the
`
`patent laws be trebled pursuant to 35 U.S.C. § 284;
`
`E.
`
`That this case be declared an exception case within the meaning of 35 U.S.C. § 285
`
`and that CSP be awarded it reasonable attorneys’ fees;
`
`F.
`
`That CSP be awarded its costs, attorneys’ fees, and expenses incurred in this
`
`action pursuant to applicable state and federal laws; and
`
`G.
`
`That the Court grand CSP such other and further relief as the Court may deem just
`
`and proper.
`
`CSP demands a trial by jury on all issues so triable.
`
`JURY DEMAND
`
`8
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 9 of 10 PageID #: 74
`
`Dated: November 13, 2013
`
`Respectfully submitted,
`
`/s/ Abram B. Gregory
`Edward W. Harris, III (7485-49)
`Abram B. Gregory (25602-49)
`TAFT STETTINIUS & HOLLISTER LLP
`One Indiana Square, Suite 3500
`Indianapolis, Indiana 46204
`Tel: (317) 713-3500
`Fax: (317) 713-3699
`eharris@taftlaw.com
`agregory@taftlaw.com
`
`James R. Nuttall
`John L. Abramic
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Tel: (312) 577-1300
`Fax: (312) 577-1370
`jnuttall@steptoe.com
`jabramic@steptoe.com
`
`Attorneys for Plaintiff CSP Technologies, Inc.
`
`9
`
`
`
`Case 4:13-cv-00142-TWP-WGH Document 7 Filed 11/13/13 Page 10 of 10 PageID #: 75
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 13, 2013, I electronically filed the foregoing motion
`with the clerk of the court by using the CM/ECF system. Notice of this filing will be sent to the
`following parties by electronic mail and U.S. Mail.
`
`Jan M. Carroll
`BARNES & THORNBURG LLP
`11 South Meridian Street
`Indianapolis, IN 46204
`Email: Jan.carroll@btlaw.com
`
`Paul H. Berghoff
`Paula S. Fritsch
`Sean M. Sullivan
`J. Dan Smith
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`300 South Wacker Drive, 32nd Floor
`Chicago, IL 60606
`Email: berghoff@mbhb.com
`fritsch@mbhb.com
`sullivan@mbhb.com
`smith@mbhb.com
`
`/s/ Abram B. Gregory
`Abram B. Gregory
`
`1983052.1
`
`10
`
`
`
`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 1 of 12 PageID #: 4742
`
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF INDIANA
`NEW ALBANY DIVISION
`
`
`
`Civil Action No. 4:11-cv-00029-RLY-WGH
`
`
`
`JURY TRIAL DEMANDED
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Plaintiff,
`
`v.
`
`Defendants.
`
`
`CSP TECHNOLOGIES, INC.,
`
`
`
`
`SÜD-CHEMIE AG, SÜD-CHEMIE, INC.,
`AIRSEC S.A.S., CLARIANT PRODUKTE
`DEUTSCHLAND GMBH, CLARIANT
`CORPORATION,
`and
`CLARIANT
`PRODUCTION (FRANCE) S.A.S.
`
`
`
`
`
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`
`Plaintiff CSP Technologies, Inc. (“CSP”), by and through its undersigned counsel, alleges
`
`as follows:
`
`
`
`INTRODUCTION
`
`1.
`
`CSP comes before this Court again due to the Defendants’ Süd-Chemie AG,
`
`Süd-Chemie, Inc., Airsec S.A.S., Clariant Produkte Deutschland GmbH, Clariant Corporation and
`
`Clariant Production (France) S.A.S. (referred to herein collectively as “Defendants”) willful
`
`infringement of CSP’s patented technology relating to packaging for, among other things, the
`
`diagnostic test strip market. This Court previously determined that Defendants’ products for
`
`packaging of, for example, diagnostic test strips, infringed two of CSP’s patents. See
`
`4:03-cv-00003-SEB-WGH Doc. No. 606. After this Court found that CSP’s patents were valid
`
`and infringed by Defendants’ products, the parties settled the case and this Court entered a Consent
`
`Order, retaining jurisdiction and enjoining Defendants from infringing the asserted patents in that
`
`case. See id. at Doc. No. 636, ¶ 10 (enjoining Defendant Süd-Chemie, Inc. along with “those in
`
`
`
`
`
`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 2 of 12 PageID #: 4743
`
`
`active concert or participation with them (including Süd-Chemie AG and Airsec S.A.)….”). Now
`
`Defendants are selling packaging for diagnostic test strips again using CSP’s patented technology.
`
`Defendants’ willful infringement of CSP’s patent rights has caused CSP irreparable harm and
`
`substantial monetary damages. CSP seeks an injunction and treble damages for Defendants’
`
`repeated refusal to respect CSP’s intellectual property rights.
`
`THE PARTIES
`
`2.
`
`CSP is a corporation organized under the laws of the State of Delaware and has a
`
`principal place of business at 960 W. Veterans Blvd., Auburn, Alabama.
`
`3.
`
`On information and belief, Süd-Chemie AG is a Germany company with a
`
`principal place of business at Lenbachplatz 6, 80333 Munich, Germany. On information and
`
`belief, JP Morgan Chase, through its One Equity Partners affiliate, owns more than fifty (50)
`
`percent of Süd-Chemie AG.
`
`4.
`
`On information and belief, Süd-Chemie, Inc., a subsidiary of Süd-Chemie AG, is a
`
`corporation organized under the laws of the State of Delaware with a principal place of business at
`
`1600 West Hill Street, Louisville, Kentucky. Süd-Chemie, Inc. also has multiple sales and
`
`manufacturing offices throughout the United States.
`
`5.
`
`On information and belief, Airsec S.A.S., an affiliated sister company of
`
`Süd-Chemie AG, is a French company with a principal place of business at 6 rue Louise Michel,
`
`94600 Choisy-le-Roi, France.
`
`6.
`
`On information and belief, Clariant Produkte Deutschland GmbH (“Clariant”) is a
`
`German company with a principal place of business at Industriepark Hochst, Frankfurt, Germany,
`
`65926. On information and belief, Süd-Chemie AG was merged into Clariant on July 1, 2012.
`
`
`
`2
`
`
`
`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 3 of 12 PageID #: 4744
`
`
`7.
`
`On information and belief, Clariant Corporation is a corporation organized under
`
`the laws of the State of New York with a principal place of business at 4000 Monroe Road,
`
`Charlotte, North Carolina. On information and belief, Clariant Corporation also has multiple sales
`
`and manufacturing offices throughout the United States. On information and belief, Süd-Chemie
`
`Inc. was merged into Clariant Corporation on December 31, 2012.
`
`8.
`
`On information and belief, Clariant Production (France) S.A.S., is a French
`
`company with a principal place of business at Rue Du Flottage, Trosly Breuil, Picardy, France. On
`
`information and belief, Airsec S.A.S. was merged into Clariant Production (France) S.A.S. on
`
`December 31, 2012.
`
`JURISDICTION AND VENUE
`
`9.
`
`10.
`
`This action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et seq.
`
`This Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§
`
`1331 and 1338(a).
`
`11.
`
`On information and belief, this Court has personal jurisdiction, general and
`
`specific, over Defendants because they have sufficient minimum contacts to establish personal
`
`jurisdiction in this district. Specifically, Defendants have availed themselves of the privilege of
`
`conducting activities within this judicial district, have systematic and continuous contacts with this
`
`judicial district and regularly transact business within this judicial district because, for example,
`
`Defendants’ products are sold in this district and Defendants derive substantial revenues from
`
`sales in this district.
`
`12.
`
`For example, Defendants have placed their products, including products CSP
`
`accuses of infringement in this litigation, into the stream of commerce knowing and/or reasonably
`
`
`
`3
`
`
`
`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 4 of 12 PageID #: 4745
`
`
`expecting that such products will be used, offered for sale, marketed, sold, distributed and/or
`
`imported throughout the United States, including in this judicial district.
`
`13.
`
`Defendant Süd-Chemie, Inc. has also previously initiated patent litigation in this
`
`district related to its packaging products that are used with, for example, diagnostic test strips.
`
`14.
`
`Although it is believed that the extent of Defendants’ contacts in this district are
`
`extensive, the extent of Defendants’ contacts in this district will be established after a reasonable
`
`opportunity for discovery.
`
`15.
`
`Venue is proper in this district under 28 U.S.C. §§ 1391(b), (c) and (d) and 28
`
`U.S.C. § 1400(b).
`
`BACKGROUND
`
`16.
`
`CSP is an innovator in the field of plastic product packaging. For example, CSP
`
`develops, manufactures, distributes and sells innovative products that enhance the stability and
`
`shelf life of package contents, such as diagnostic test strips.
`
`17.
`
`The United States Patent and Trademark Office has granted numerous patents to
`
`CSP for its innovative work in the field of plastic product packaging. These patents include
`
`patents directed towards desiccant entrained polymers and other sealing technology incorporated
`
`into product packaging. These technologies are aimed at creating a moisture-free environment for
`
`the packaged product.
`
`18.
`
`In addition to receiving patents on its innovative packaging technology, the United
`
`States Patent and Trademark Office also named one of CSP’s desiccant entrained polymers patents
`
`as the most outstanding new patent of the year in the area of chemistry and chemical engineering.
`
`19.
`
`Defendants are direct competitors of CSP in the field of product packaging for such
`
`things as diagnostic test strips.
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`
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`4
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`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 5 of 12 PageID #: 4746
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`20.
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`On information and belief, Defendants have been unable to penetrate the market for
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`packaging of diagnostic test strips without copying CSP’s patented technology.
`
`I.
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`Defendants’ Prior Infringement Of CSP’s Patent Rights
`
`21.
`
`In and around 1995 and 1996, CSP developed patented technology relating to
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`polymers, namely desiccant entrained polymers, used in the packaging of, among other things,
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`diagnostic test strips.
`
`22.
`
`CSP’s desiccant entrained polymer technology created a moisture-absorbing
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`packaging material that was utilized for creating a moisture-free packaging environment for
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`products such as diagnostic test strips.
`
`23.
`
`In 1996 and 1998, CSP filed patent applications related to its innovative desiccant
`
`entrained polymers. Those patent applications issued as United States Patent Nos. 5,911,937 and
`
`6,214,255 in 1999 and 2001, respectively.
`
`24.
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`In or around October 1996, CSP began to offer to sell desiccant entrained polymer
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`packaging for use with diagnostic test strips to, among others, LifeScan, Inc., a Johnson & Johnson
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`Company (“LifeScan”).
`
`25.
`
`In 1996, Defendants were also interested in entering the United States market with
`
`respect to packaging for diagnostic test strips.
`
`26.
`
`Defendants were interested in entering the market for the packaging of diagnostic
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`test strips because Defendants believed that the market had potential for significant growth.
`
`27.
`
`Defendants first tried to develop their own moisture-absorbing polymer
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`technology. Defendants’ technology consisted of a combination of polymer(s), a desiccant
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`material, and fibers.
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`
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`5
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`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 6 of 12 PageID #: 4747
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`28.
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`Defendants’ technology was a failure and additionally the use of fibers was not
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`approved by the Food and Drug Administration.
`
`29.
`
`On information and belief, unable to develop their own polymer technology,
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`throughout the mid and late 1990s, Defendants engaged in extensive efforts to study and
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`eventually copy CSP’s innovative desiccant entrained polymer technology. For example,
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`Defendants obtained samples of and ran tested on CSP’s diagnostic test strip packaging.
`
`30.
`
`By at least February 2000, in light of the success of CSP’s innovative and patented
`
`polymer technology, Defendants concluded that to successfully remain in the market for
`
`packaging of diagnostic test strips, Defendants needed to incorporate desiccant entrained polymers
`
`into their product packaging.
`
`31. Moreover, in the summer of 2001, in light of the fact that Defendants’ customer(s)
`
`were switching over to CSP’s innovative product, Defendants determined that they needed to copy
`
`CSP’s patented desiccant entrained polymer technology.
`
`32.
`
`Defendants proceeded with their plan to market their copied polymer technology,
`
`sometimes referred to as 2AP®, with full knowledge that their polymer formulation infringed on
`
`CSP’s patent rights.
`
`33.
`
`In 2003 litigation between Defendant Süd-Chemie, Inc. and CSP was initiated in
`
`the Southern District of Indiana related to CSP’s patent rights in desiccant entrained polymers.
`
`34.
`
`In 2006, the Court found that CSP’s patents were valid and were infringed by
`
`Defendants’ products.
`
`35.
`
`In or about late 2006 and/or early 2007, Defendant Süd-Chemie, Inc. consented to
`
`the entry of an injunction against future infringement of certain claims of CSP’s desiccant
`
`
`
`6
`
`
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`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 7 of 12 PageID #: 4748
`
`
`entrained polymer patents, namely United States Patent Nos. 5,911,937 and 6,214,255, by
`
`Defendant Süd-Chemie, Inc., Defendant Süd-Chemie AG and Defendant Airsec S.A.S.
`
`II.
`
`Defendants’ Continued Infringement Of CSP’s Patent Rights
`
`36.
`
`On May 26, 2009, the United States Patent and Trademark Office duly and legally
`
`issued United States Patent No. 7,537,137, entitled “Resealable Moisture Tight Container
`
`Assembly For Strips And The Like Having a Lip Snap Seal” (“the 137 patent”). A copy of the 137
`
`patent is attached hereto as Exhibit A.
`
`37.
`
`38.
`
`CSP owns all right, title and interest in the 137 patent.
`
`On information and belief, in order to enter the diagnostic test strip packaging
`
`market, Defendants were again forced to use CSP’s patented technology, e.g., technology covered
`
`by the 137 patent, to create a moisture-free packaging for diagnostic test strips.
`
`39.
`
`Specifically, Defendants decided to manufacture, distribute, market, offer to sell,
`
`sell and import vials for the packaging of diagnostic test strips that infringe one or more claims of
`
`the 137 patent (referred to herein as “the accused vial products”).
`
`40.
`
`Defendants’ accused vial products include vials that incorporate Defendants’
`
`Advanced Desiccant Polymer (sometimes referred to as ADP®) and/or their 2AP® desiccant
`
`polymer technology. Defendants also sometimes refer to the accused vial products as Handy
`
`Active Tubes® or HAT® tubes.
`
`41.
`
`For example, on information and belief, Defendants manufacture and have
`
`manufactured the accused vial products through Defendant Airsec S.A.S. and Clariant Production
`
`(France) S.A.S. On information and belief, Defendants then sell the accused vial products to at
`
`least LifeScan. LifeScan fills the accused vial products with its diagnostic test strips, including at
`
`least its One Touch Ultra Test Strips. LifeScan makes, uses, offers to sell, sells and/or imports its
`
`
`
`7
`
`
`
`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 8 of 12 PageID #: 4749
`
`
`One Touch Ultra Test Strips product (which incorporates the accused vial products) throughout the
`
`United States, including in this judicial district.
`
`42.
`
`On information and belief, Defendants know that LifeScan is importing and selling
`
`and intends for LifeScan to import and sell articles that incorporate the accused vial products in the
`
`United States.
`
`43.
`
`On information and belief, Defendants’ business unit responsible for making,
`
`using, marketing, offering for sale, selling and/or importing the accused vial products also has
`
`sales and manufacturing offices in the United States.
`
`44.
`
`Defendants’ accused vial products constitute a material part of the invention
`
`claimed in the 137 patent.
`
`45.
`
`On information and belief, Defendants know of the 137 patent and know that their
`
`accused vial products infringe the 137 patent. For example, at least through conversations with
`
`CSP, Defendants knew of the 137 patent and their infringing activity before the filing of this
`
`Complaint. On information and belief, Defendants, infringing activities have proceeded despite
`
`this knowledge.
`
`46.
`
`The accused vial products are not a staple article or commodity of commerce
`
`suitable for substantial noninfringing use.
`
`
`
`COUNT ONE
`PATENT INFRINGEMENT
`
`47.
`
`CSP incorporates by reference the allegations of paragraphs 1-43 above, as if fully
`
`alleged herein.
`
`48.
`
`In contravention of one or more subsections of 35 U.S.C. § 271, Defendants,
`
`without authority, have and are continuing to directly infringe, contributorily infringe and/or
`
`
`
`8
`
`
`
`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 9 of 12 PageID #: 4750
`
`
`actively induce infringement of one or more claims of the 137 patent, either literally or under the
`
`doctrine of equivalents, by, including but not limited to, making, using, offering to sell, selling or
`
`importing the accused vial products in or into the Unites States and/or causing the accused vial
`
`products to be made, used, offered for sale, sold in or imported into the United States.
`
`49.
`
`Defendants had and have actual notice of the 137 patent and are infringing the 137
`
`patent with knowledge of CSP’s patent rights. The filing of this Complaint also constitutes notice
`
`to Defendants of the 137 patent under 35 U.S.C. § 287.
`
`50.
`
`51.
`
`Defendants’ infringing conduct described above is willful and deliberate.
`
`CSP has been damaged by Defendants’ infringing activities and will continue to be
`
`so damaged unless enjoined by this Court.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, CSP respectfully requests entry of judgment in its favor and the following
`
`relief, including:
`
`A.
`
`That Defendants be adjudged to have infringed one or more claims of the 137
`
`patent;
`
`B.
`
`That Defendants and all related entities and their officers, agents, employees,
`
`representatives, servants, successors, assigns and all persons in active concert or participation with
`
`any of them, directly or indirectly, be preliminarily and permanently enjoined from making, using,
`
`offering to sell, selling or importing the infringing products in the United States or causing the
`
`infringing products to be made, used, offered for sale, sold in or imported into the United States;
`
`C.
`
`That Defendants account for damages sustained by CSP as a result of Defendants’
`
`infringement of the 137 patent, including both pre- and post-judgment interest and costs as fixed
`
`by this Court under 35 U.S.C. § 284;
`
`
`
`9
`
`
`
`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 10 of 12 PageID #: 4751
`
`
`D.
`
`That Defendants be adjudged to have willfully and deliberated infringed the 137
`
`patent and that the damages resulting from Defendants’ willful and deliberate violation of the
`
`patent laws be trebled pursuant to 35 U.S.C. § 284;
`
`E.
`
`That this case be declared an exception case within the meaning of 35 U.S.C. § 285
`
`and that CSP be awarded it reasonable attorneys’ fees;
`
`F.
`
` That CSP be awarded its costs, attorneys’ fees, and expenses incurred in this
`
`action pursuant to applicable state and federal laws; and
`
`G.
`
`That the Court grand CSP such other and further relief as the Court may deem just
`
`and proper.
`
`JURY DEMAND
`
`CSP demands a trial by jury on all issues so triable.
`
`
`
`10
`
`
`
`Case 4:11-cv-00029-RLY-WGH Document 157 Filed 01/08/14 Page 11 of 12 PageID #: 4752
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`
`
`
`
`Dated: January 8, 2014
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ John L. Abramic
`Edward W. Harris, III (7485-49)
`Abram B. Gregory (25602-49)
`TAFT STETTINIUS & HOLLISTER LLP
`One Indiana Square, Suite 3500
`Indianapolis, Indiana 46204
`Tel: (317) 713-3500
`Fax: (317) 713-3699
`eharris@taftlaw.com
`agregory@taftlaw.com
`
`James R. Nuttall
`John L. Abramic
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Tel: (312) 577-1300
`Fax: (312) 577-1370
`jnuttall@steptoe.com
`jabramic@steptoe.
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