Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 1 of 14 PageID #: 149
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
GEMAK TRUST,
Plaintiff,
Civil Action No. 1:18-CV-01855-RGA v.
JURY TRIAL DEMANDED RECKITT BENCKISER LLC,
Defendant.
PLAINTIFF’S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
Plaintiff GEMAK Trust (“GEMAK” or “Plaintiff”) files this First Amended Complaint
for Patent Infringement against Reckitt Benckiser LLC (“Reckitt” or “Defendant”)1, and allege
as follows:
THE NATURE OF THE ACTION
1. This is a civil action arising out of Reckitt’s infringement of United States Patents
Nos. 6,787,514 (“the ’514 Patent”) and 6,486,116 (“the ʼ116 Patent”) (collectively, “the Patents- in-Suit”) in violation of the Patent Laws of the United States, 35 U.S.C. § 1 et seq.
THE PARTIES
2. Plaintiff GEMAK Trust is established under the laws of New Zealand, with an address at 7 California Drive, Wakefield Europort, Castleford, West Yorks, United Kingdom,
WF10 5QH.
1 Plaintiff reserves the right to join Reckitt Benckiser Group plc, should facts be developed during discovery indicating its involvement in infringing activities. 1
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 2 of 14 PageID #: 150
3. On information and belief, Defendant Reckitt Benckiser LLC is a corporation organized and existing under the laws of Delaware, having a principal place of business at
Morris Corporate Center IV, 399 Interpace Parkway, P.O. Box. 225, Parsippany, New Jersey
07054-0225.
JURISDICTION AND VENUE
4. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
1338(a).
5. This Court has personal jurisdiction over Reckitt because, among other things,
Reckitt has directly infringed, contributed to the infringement of, and/or actively induced infringement of the Patents-in-Suit within this judicial district.
6. This Court also has personal jurisdiction over Reckitt because Reckitt is incorporated in the State of Delaware and is, thus, a resident of the State.
7. On information and belief, Reckitt also conducts business in this judicial district, including offering to sell, selling, and importing infringing products in this district.
8. Upon further information and belief, Reckitt is amenable to litigating in this forum based on Reckitt’s conduct in another litigation in this District. In Civil Action No. 1:15- cv-00915-RGA (D.I. 8), Reckitt did not object to personal jurisdiction in this District.
9. Upon further information and belief, Reckitt has waived any challenge to personal jurisdiction in this District under Federal Rule of Civil Procedure 12(h)(1). See D.I. 9 (failing to assert a lack of personal jurisdiction defense in its first 12(b)(6) motion).
10. Venue is proper in this Court under 28 U.S.C. § 1400(b), because, among other reasons, Reckitt is incorporated in Delaware, and thus it resides in this District.
2
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 3 of 14 PageID #: 151
11. Upon further information and belief, Reckitt has waived any challenge to improper venue in this District under Federal Rule of Civil Procedure 12(h)(1). See D.I. 9
(failing to assert an improper venue defense in its first 12(b)(6) motion).
BACKGROUND
12. While working in the industrial chemical and laundry industry in the late 1990s, inventor Gerald Thomas Hinton conceived of, developed, and patented a new detergent composition and monodose presentation—a water-dissolvable sachet or packet that included detergent percarbonate beads encapsulated by a specific blend of chemical compounds.
13. Reckitt is a manufacturer of automatic dishwasher detergent products and laundry products, including monodose detergent products.
14. Reckitt is a dominant player in the dishwasher detergent industry with its Finish® line of monodose dishwasher detergent products. Reckitt claims that “[h]ousehold names such as Lysol, Vanish, Finish and Air Wick are at the top of their markets.” See Ex. 1. Reckitt also claims that “80% of [its] unrivaled portfolio of leading brands are either 1 or 2 in their categories” including Finish®. Id. In its 2017 annual report, Reckitt reported that “Finish is No.
1 worldwide in automatic dishwashing.” See Ex. 2.
15. On information and belief, Reckitt makes, uses, sells, offers for sale, and imports monodose dishwasher detergent products including those described in detail below. On the
Material Data Safety Sheets for certain monodose Finish® dishwasher detergent products,
Reckitt Benckiser LLC is identified as the distributor.
A. The Infringing Products
16. Reckitt manufactures, sells, offers to sell, and imports monodose detergent products, marketed under the trade name Finish®, that infringe one or more claims of the
3
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 4 of 14 PageID #: 152
Patents-in-Suit. Reckitt’s Finish® Powerball-Max-in-1 and Finish® Quantum Max (“Infringing
Products”) are two representative examples of Reckitt’s infringing products.
17. Attached as Exs. 3-4 and 5-6 are photographs that fairly and accurately depict the
product labels for Finish® Powerball-Max-in-1 and Finish® Quantum Max, respectively.
18. Attached as Exs. 7 and 8 are Product Information Sheets for Finish® Powerball-
Max-in-1 and Finish® Quantum Max, respectively. On information and belief, Reckitt is not required to, and does not, list every chemical compound present in its product on the product’s
Product Information Sheet.
19. Attached as Exs. 9 and 10 are Safety Data Sheets for Finish® Powerball-Max-in-
1 and Finish® Quantum Max, respectively. On information and belief, Reckitt is not required to, and does not, list every chemical compound present in its product on the product’s Safety Data
Sheet.
20. The Infringing Products are dishwashing detergent products. See, e.g., Exs. 3-6.
21. The Infringing Products comprise a granulated percarbonate compound, specifically sodium percarbonate. See, e.g., Exs. 9 and 10.
22. Certain of the Infringing Products are in tablet form. See, e.g., Exs. 3-6.
23. On information and belief, the Infringing Products comprise a percarbonate, specifically sodium percarbonate, and a blend encapsulating the percarbonate. On information and belief, the existence of a percarbonate and a blend encapsulating the percarbonate will be demonstrated by either documents in Reckitt’s possession, custody, or control, or testing of the
Infringing Products, or both.
24. On information and belief, the blend encapsulating the percarbonate in the
Infringing Products contains a nonionic surfactant. Exhibits 7 and 8 show that the two
4
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 5 of 14 PageID #: 153
representative Infringing Products contain alcohol polyglycolether, a nonionic surfactant. See, e.g., Exs. 7 and 8. On information and belief, the existence of a nonionic surfactant in the blend
encapsulating the percarbonate will be demonstrated by either documents in Reckitt’s
possession, custody, or control, or testing of the Infringing Products, or both.
25. On information and belief, the blend encapsulating the percarbonate in the
Infringing Products also contains a sulfate, specifically sodium sulfate. On information and
belief, the existence of a sulfate in the blend encapsulating the percarbonate will be demonstrated
by either documents in Reckitt’s possession, custody, or control, or testing of the Infringing
Products, or both.
26. On information and belief, the blend encapsulating the percarbonate in the
Infringing Products also contains carboxymethyl cellulose. On information and belief, the
existence of carboxymethyl cellulose in the blend encapsulating the percarbonate will be
demonstrated by either documents in Reckitt’s possession, custody, or control, or testing of the
Infringing Products, or both.
27. On information and belief, the Infringing Products also contain sodium
metasilicate. On information and belief, the existence of sodium metasilicate in the Infringing
Products will be demonstrated by either documents in Reckitt’s possession, custody, or control,
or testing of the Infringing Products, or both.
28. On information and belief, the Infringing Products do not contain a zeolite. On
information and belief, the lack of a zeolite in the Infringing Products will be demonstrated by
either documents in Reckitt’s possession, custody, or control, or testing of the Infringing
Products, or both.
5
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 6 of 14 PageID #: 154
29. On information and belief, the Infringing Products do not contain a perborate. On
information and belief, the lack of a perborate in the Infringing Products will be demonstrated by either documents in Reckitt’s possession, custody, or control, or testing of the Infringing
Products, or both.
30. On information and belief, the Infringing Products do not contain a phosphate.
On information and belief, the lack of a phosphate in the Infringing Products will be demonstrated by either documents in Reckitt’s possession, custody, or control, or testing of the
Infringing Products, or both.
31. The Infringing Products comprise 1% to 15% percarbonate. See, e.g., Exs. 9 and
10.
32. On information and belief, the Infringing Products are capable of being stored in a water-soluble PVA film packaging for at least nine months, and, when stored in PVA film, the
PVA film is 20-80 microns thick.
33. The Infringing Products also contain a perfume. See, e.g., Exs. 7 and 8.
34. The Infringing Products also contain an enzyme. See, e.g., Exs. 7 and 8.
B. The Patents-In-Suit
35. On September 7, 2004, the ’514 Patent, titled “Detergent compositions
comprising an encapsulated percarbonate compound,” was duly and legally issued by the United
States Patent Office (“USPTO”) to inventor Gerald Thomas Hinton. A true and correct copy of
the ’514 Patent is attached to this complaint as Exhibit 11.
36. On November 26, 2002, the ʼ116 Patent, titled “Detergent,” was duly and legally
issued by the USPTO to inventor Gerald Thomas Hinton. A true and correct copy of the ʼ116
Patent is attached to this complaint as Exhibit 12.
6
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 7 of 14 PageID #: 155
37. Gerald Thomas Hinton is the sole inventor of the inventions described and
claimed in the ʼ514 Patent and the ’116 Patent.
38. GEMAK Trust, as assignee, owns the entire right, title, and interest in the ʼ514
Patent and the ’116 Patent.
39. This is an action to stop Reckitt from making, using, offering to sell, or selling the
Infringing Products in the United States, or importing them into the United States, without a license, and to recover damages for Reckitt’s past infringement of at least the following patent claims: claims 1-4, and 8 of the ʼ514 Patent and claims 1-3, 5-7, and 11-13 of the ʼ116 Patent.
COUNT I (Infringement of the ’514 Patent Under 35 U.S.C. § 271(a), (b), and/or (c))
40. Paragraphs 1-39 above are re-alleged and incorporated by reference, as if fully set
forth herein.
41. The United States Patent and Trademark office duly and properly issued the ʼ514
Patent on September 7, 2004. The ʼ514 Patent was duly assigned to GEMAK Trust, which is the
assignee of all right, title, and interest in and to the ʼ514 Patent. Each and every claim of the
ʼ514 Patent is valid and enforceable.
42. As set forth above, and in violation of 35 U.S.C. § 271, Reckitt has directly
infringed the ʼ514 Patent by, among other things, making, using, offering for sale, selling, and/or
importing into the United States its Infringing Products in a manner that infringes at least claims
1-4 and 8 of the ʼ514 Patent.
43. The Infringing Products are marketed and sold by Reckitt as dishwasher detergents. See, e.g., Exs. 2-6. As such, Reckitt specifically intends for customers who purchase the Infringing Products to use the Infringing Products as dishwasher detergents.
7
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 8 of 14 PageID #: 156
44. On information and belief, there are no non-infringing uses of these Infringing
Products. All claims of the ’514 Patent require that the granulated percarbonate compound be
“for use in detergent products.” Ex. 11. The Infringing Products are marketed and sold by
Reckitt as dishwasher detergents. See, e.g., Exs. 2-6. On information and belief, the Infringing
Products have no use other than as detergents. See, e.g., Exs. 2-6.
45. Reckitt has been and now is contributing to the infringement of and/or actively inducing the infringement of the ’514 Patent by others by, among other things, distributing or offering for sale monodose detergent products that teach third parties to use said monodose detergent products in a manner that directly infringes the ’514 Patent. The labels of the
Infringing Products specifically instruct customers how to use the Infringing Products as dishwasher detergents. See, e.g., Exs. 4 and 6.
46. By its actions, Reckitt has caused injury and is liable for infringement of the ʼ514
Patent pursuant to 35 U.S.C. § 271. By its actions, Reckitt’s infringement of the ʼ514 Patent has caused damage, and continues to cause damage, in an amount to be determined at trial.
COUNT II (Reckitt’s Willful Infringement of the ’514 Patent)
47. Paragraphs 1-46 above are re-alleged and incorporated by reference, as if fully set forth herein.
48. Defendant Reckitt has willfully infringed the ’514 Patent.
49. On information and belief, Reckitt is a sophisticated company in the detergent industry who keeps apprised of relevant patents (either alone or through the activities of its related companies), and thus would have been on notice of the ’514 Patent since its issuance on
September 7, 2004.
8
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 9 of 14 PageID #: 157
50. On information and belief, Reckitt was aware of the ’514 Patent because Reckitt
is the current assignee of one or more patents directed to cleaning products that cites patents
relating to monodose detergent products listing Gerald Thomas Hinton as the inventor. See, e.g.,
U.S. Pat. No. 7,507,699B2 (“the ’699 Patent”).
51. On information and belief, Reckitt was further aware of the ’514 Patent because
during the prosecution of the Reckitt ’699 Patent, the Reckitt prosecuting attorney Andrew
Parfomak submitted an IDS to the Patent Office on June 18, 2004 listing among other things
(1) WO 00/02980, which is the PCT publication number of the ’116 Patent, also listing Hinton as
the inventor and (2) an international search report for the PCT application upon which the ’699
Patent was based that cited PCT Pub. No. WO 00/02980. Reckitt’s agent Mr. Parfomak further
submitted a copy of WO 00/02980 and the associated search report, which itself refers to WO
98/30670, the publication number of the ’514 Patent’s parent PCT application.
52. On information and belief, Reckitt further knew or should have known about the
’514 Patent because either Reckitt or its related companies created or received patent prosecution documents reflecting Hinton patent filings related to the ’514 Patent.
53. On information and belief, Reckitt was further aware of the ’514 Patent because
Mr. Hinton approached an unknown Reckitt entity in the 2004-2006 time frame, and he discussed both the nature of his products and the patent protection for his products with that entity. On information and belief, that entity communicated (either directly or indirectly) with the defendant Reckitt about the nature of Hinton’s products and his patents, including Mr.
Hinton’s U.S. patents.
54. Reckitt has engaged in infringing behavior with knowledge of the ʼ514 Patent which has been duly issued by the USPTO, and is presumed valid.
9
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 10 of 14 PageID #: 158
55. On information and belief, Reckitt has known that its actions constituted and
continue to constitute infringement of the valid ʼ514 Patent at least as of November 21, 2012.
Despite having notice of the ʼ514 Patent, Reckitt has continued its infringing activities. Reckitt
engaged in such activities despite an objectively high likelihood that its actions constituted
infringement of the ’514 Patent. Reckitt knew and should have known that its actions would
cause direct and indirect infringement of the ’514 Patent. As such, Reckitt has willfully
infringed the ʼ514 Patent.
COUNT III (Infringement of the ’116 Patent Under 35 U.S.C. § 271(a), (b), and/or (c))
56. Paragraphs 1-55 above are re-alleged and incorporated by reference, as if fully set
forth herein.
57. The United States Patent and Trademark office duly and properly issued the ʼ116
Patent on November 26, 2002. The ʼ116 Patent was duly assigned to GEMAK Trust, which is
the assignee of all right, title, and interest in and to the ʼ116 Patent. Each and every claim of the
ʼ116 Patent is valid and enforceable.
58. As set forth above, and in violation of 35 U.S.C. § 271, Reckitt has directly
infringed the ʼ116 Patent by, among other things, making, using, offering for sale, selling, and/or
importing into the United States its Infringing Products in a manner that infringes at least claims
1-3, 5-7, and 11-13 of the ʼ116 Patent.
59. The Infringing Products are marketed and sold by Reckitt as dishwasher detergents. See, e.g., Exs. 2-6. As such, Reckitt specifically intends for customers who purchase the Infringing Products to use the Infringing Products as dishwasher detergents.
60. On information and belief, there are no non-infringing uses of these Infringing
Products. All claims of the ’116 Patent require “a detergent composition.” Ex. 12. The
10
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 11 of 14 PageID #: 159
Infringing Products are marketed and sold by Reckitt as dishwasher detergents. See, e.g., Exs. 2-
6. On information and belief, the Infringing Products have no use other than as detergent
compositions. See, e.g., Exs. 2-6.
61. Reckitt has been and now is contributing to the infringement of and/or actively
inducing the infringement of the ’116 Patent by others by, among other things, distributing or
offering for sale monodose detergent products that teach third parties to use said monodose
detergent products in a manner that directly infringes the ’116 Patent. The labels of the
Infringing Products specifically instruct customers how to use the Infringing Products as
dishwasher detergents. See, e.g., Exs. 4 and 6.
62. By its actions, Reckitt has caused injury and is liable for infringement of the ʼ116
Patent pursuant to 35 U.S.C. § 271. The acts of infringement set forth above will cause GEMAK
Trust irreparable harm for which GEMAK Trust has no adequate remedy at law. Unless such
infringing acts are enjoined by this Court, GEMAK Trust will continue to suffer additional
irreparable injury.
63. By its actions, Reckitt’s infringement of the ʼ116 Patent has caused damage, and
continues to cause damage, in an amount to be determined at trial.
COUNT IV (Reckitt’s Willful Infringement of the ’116 Patent)
64. Paragraphs 1-63 above are re-alleged and incorporated by reference, as if fully set
forth herein.
65. Defendant Reckitt has willfully infringed the ’116 Patent.
66. On information and belief, Reckitt is a sophisticated company in the detergent
industry who keeps apprised of relevant patents (either alone or through the activities of its
11
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 12 of 14 PageID #: 160
related companies), and thus would have been on notice of the ʼ116 Patent since its issuance on
November 26, 2002.
67. On information and belief, Reckitt was aware of the ʼ116 Patent because Reckitt
is the current assignee of one or more patents directed to cleaning products that cites patents
relating to monodose detergent products listing Gerald Thomas Hinton as the inventor. See, e.g.,
U.S. Pat. No. 7,507,699B2 (“the ʼ699 Patent”).
68. On information and belief, Reckitt was further aware of the ’116 Patent because
during the prosecution of the Reckitt ’699 Patent, the Reckitt prosecuting attorney Andrew
Parfomak submitted an IDS to the Patent Office on June 18, 2004 listing among other things
(1) WO 00/02980, which is the PCT publication number of the ’116 Patent and (2) an
international search report for the PCT application upon which the ’699 Patent was based that
cited PCT Pub. No. WO 00/02980, as well as to the ’116 Patent itself. Reckitt’s agent Mr.
Parfomak further submitted a copy of WO 00/02980.
69. On information and belief, Reckitt further knew or should have known about the
’116 Patent because either Reckitt or its related companies created or received patent prosecution documents reflecting Hinton patent filings related to the ’116 Patent.
70. On information and belief, Reckitt was further aware of the ’116 Patent because
Mr. Hinton approached an unknown Reckitt entity in the 2004-2006 time frame, and he
discussed both the nature of his products and the patent protection for his products with that
entity. On information and belief, that entity communicated (either directly or indirectly) with
the defendant Reckitt about the nature of Hinton’s products and his patents, including Mr.
Hinton’s U.S. patents.
12
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 13 of 14 PageID #: 161
71. In any event, Reckitt has actual notice of the ’116 Patent from the filing of this
case.
72. Reckitt has engaged in infringing behavior with knowledge of the ʼ116 Patent
which has been duly issued by the USPTO, and is presumed valid.
73. On information and belief, Reckitt has known that its actions constituted and
continue to constitute infringement of the valid ʼ116 Patent at least as of November 21, 2012.
Despite having notice of the ʼ116 Patent, Reckitt has continued its infringing activities. Reckitt
engaged in such activities despite an objectively high likelihood that its actions constituted
infringement of the ’116 Patent. Reckitt knew and should have known that its actions would
cause direct and indirect infringement of the ’116 Patent. As such, Reckitt has willfully
infringed the ʼ116 Patent, and continues to do so today.
JURY TRIAL DEMAND
Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff hereby demands a trial by
jury of all issues so triable.
PRAYER FOR RELIEF
Wherefore, Plaintiff respectfully requests that this Court enter judgment:
A. declaring that Reckitt has infringed United States Patent Nos. 6,787,514 and
6,486,116;
B. permanently enjoining Reckitt and its officers, agents, employees,
representatives, successors, and assigns, and any others acting in concert
with them, from infringing U.S. Patent No. 6,486,116;
C. declaring that Reckitt’s infringement of the Patents-in-Suit has been willful;
13
Case 1:18-cv-01855-RGA Document 12 Filed 02/19/19 Page 14 of 14 PageID #: 162
D. awarding Plaintiff damages resulting from Reckitt’s infringement adequate
to compensate for that infringement;
E. awarding Plaintiff treble damages as a result of Reckitt’s willful
infringement;
F. declaring that this be an exceptional case within the meaning of 35 U.S.C.
§ 285;
G. awarding Plaintiff its costs in this action, together with reasonable
attorney’s fees and pre-judgment and post-judgment interest; and
H. granting Plaintiff such other relief, including other monetary and equitable
relief, as this Court deems just and proper.2
FISH & RICHARDSON P.C. By: /s/ Susan E. Morrison Susan E. Morrison (#4690) Kelly Allenspach Del Dotto (#5969) 222 Delaware Avenue, 17th Floor Wilmington, DE 19899 (302) 652-5070 [email protected]; [email protected]
John S. Goetz 601 Lexington Avenue, 52nd Floor New York, NY 10022 (212) 641-2277 [email protected]
Attorneys for Plaintiff GEMAK Trust
2 A redline of the changes made to this amended complaint pursuant to Federal Rule of Civil Procedure 15 is provided as Exhibit 13. 14