Case 2:12-cv-05562-CDJ Document 5 Filed 06/14/13 Page 1 of 6
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA
H.C. STARCK GMBH,
Plaintiff, Civil Action No. 12-5562 v.
NINGXIA NONFERROUS METALS IMPORT JURY TRIAL DEMANDED AND EXPORT CORPORATION and
NINGXIA ORIENT TANTALUM INDUSTRY CO., LTD.,
Defendants.
FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
Pursuant to Rule 15(a)(1) of the Federal Rules of Civil Procedure, Plaintiff H.C. Starck
GmbH (“Starck”) hereby amends its Complaint and for its First Amended Complaint against
Defendants Ningxia Nonferrous Metals Import and Export Corporation and Ningxia Orient
Tantalum Industry Co., Ltd. (collectively, “Ningxia” or the “Ningxia Defendants”), states and alleges the following:
Introduction
1. This is an action for patent infringement and for an injunction against Ningxia for infringement of United States Letters Patent No. 6,193,779 ("the Starck Patent"), relating to tantalum powders with specific properties, to anodes with particular characteristics, and to methods for producing such tantalum powders. Plaintiff Starck also seeks increased damages for
Ningxia’s willful infringement of the Starck patent. This action arises under 35 U.S.C. §§ 271,
281-85 et seq.
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The Parties
2. Plaintiff Starck is a German corporation, having a principal place of business at
Im Schleeke 78-91, 38642 Goslar, Germany. As part of its business, Starck is a leading global supplier of refractory metals (that are resistant to heat and wear), including tantalum powder.
3. On information and belief, as part of its business, Defendant Ningxia is an importer into the United States of refractory metals, including tantalum powder. Upon information and belief, Defendant Ningxia Orient Tantalum Industry Co., Ltd is a company organized under the laws of the People’s Republic of China with its principal place of business at
No. 119, Yejin Road, Dawukou district, Shizuishan City, Ningxia Hui Autonomous Region,
China. Upon information and belief, Defendant Ningxia Nonferrous Metals Import and Export
Corporation is a corporation organized under the laws of the People’s Republic of China. Upon information and belief, Ningxia Nonferrous Metals Import and Expert Corporation is located in
Ningxia, China, with offices at Yejin Road, Dawukou district, Shizuishan City, Ningxia, China and/or Innovation Park, Yinchuan High-tech Area, Ningxia Hui Autonomous Region, China.
Jurisdiction and Venue
4. This is an action arising under the patent laws of the United States, 35 U.S.C. §§
101 et seq. This Court has subject matter jurisdiction pursuant to 35 U.S.C. §271 et seq. and 28
U.S.C. §§ 1331 and 1338 because Ningxia has committed acts of patent infringement within the
United States and this judicial district.
5. This Court has personal jurisdiction over Ningxia. At a minimum, Ningxia has
delivered infringing products into the stream of commerce with the expectation that they will be
purchased by consumers in Pennsylvania, including consumers in the Eastern District of
Pennsylvania. On information and belief, Ningxia regularly and continuously transacts business
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within this judicial district by importing, selling and/or offering for sale, inter alia , infringing
products; engages in other business related to such products; and/or otherwise has engaged in
persistent conduct in this judicial district. Ningxia has committed acts of patent infringement
within this judicial district, thereby causing injury to Plaintiff, and Ningxia otherwise is within
the jurisdiction of this Court.
6. Venue is proper in this judicial district under 28 U.S.C. §§ 1391 and 1400.
The Starck Patent
7. Starck is a world leader in the manufacture of high tech materials, including but not limited to tantalum powder that extensively is used to make capacitors. Tantalum capacitors are characterized by high electronic capacitance in small volume and reliability under extreme conditions. Because of their size and weight advantage, tantalum capacitors are widely used in electronic products, such as mobile communication devices, laptop computers, and automotive electronics.
8. Starck's substantial investment in research and development is the driving force
behind its success and has resulted in a vast portfolio of patented innovations, including the
patent asserted in this First Amended Complaint.
9. On February 27, 2001, the United States Patent and Trademark Office issued the
Starck Patent, which is entitled "Tantalum Powder, Method for Producing Same Powder and
Sintered Anodes Obtained From It." A copy of the Starck Patent is attached hereto as Exhibit A .
10. Starck is the assignee of all rights, title, and interest in and to the Starck Patent, including the right to license any of these aforementioned rights to third parties. Starck possesses all rights of recovery under the Starck Patent, including the right to sue for infringement and to recover damages.
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11. The Starck Patent claims, inter alia , tantalum powders with specific properties and processes for making such tantalum powders. The Starck Patent claims, inter alia, a tantalum powder, which after sintering at a temperature between 1100 and 1300° C. for 10 minutes and forming at 16 volts has a specific charge of 120,000 to 180,000 µFV/g at a leakage current of less than 2 nA/µFV.
12. On information and belief, Ningxia, together with others in active concert or participation with Ningxia, has offered for sale, sold and imported and is continuing to offer for sale, sell, and import into the United States infringing tantalum products that fall within the scope of at least one claim of the Starck patent. On information and belief, Ningxia has offered for sale, sold and/or imported tantalum powder, which after sintering at a temperature between
1100 and 1300° C. for 10 minutes and forming at 16 volts has a specific charge of 120,000 to
180,000 µFV/g at a leakage current of less than 2 nA/µFV. A copy of the Special Invoice for
Exported Commodities listing “Ningxia Nonferrous Metals Import and Export Corporation” as the seller to a third party in Norristown, Pennsylvania, including a Quality Control Report indicating the specifications of the imported tantalum powder, is attached hereto as Exhibit B .
An additional invoice listing “Ningxia Nonferrous Metals Import and Export Corporation” as the shipper to Norristown, Pennsylvania also is attached hereto as Exhibit C .
Count I – Infringement of U.S. Patent No. 6,193,779
13. Starck realleges and incorporates herein by reference the allegations of numbered paragraphs 1 through 12 above as if fully restated herein.
14. Ningxia has infringed and/or induced the infringement of and/or contributed to the infringement of the Starck Patent and is continuing to infringe and/or induce the infringement of and/or contribute to the infringement of the Starck Patent by importing, making, using,
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offering for sale, and/or selling in the United States, or by intending that others, in active concert
and/or participation with Ningxia, import, make, use, offer for sale, and/or sell in the United
States, tantalum products covered by the Starck Patent.
15. Starck is entitled to recover from Ningxia the damages sustained by Starck as a
result of Ningxia's wrongful acts.
16. On information and belief, Ningxia's infringement of the Starck Patent is with
knowledge of the Starck Patent and is both willful and deliberate.
17. As a result of Ningxia's acts as charged in this First Amended Complaint, Starck
has suffered and will continue to suffer irreparable harm, for which there is no adequate remedy
at law, unless Ningxia is enjoined by this Court.
WHEREFORE , Starck prays for the following relief and judgment against Ningxia:
A. Entering an Order adjudging that Ningxia is infringing the Starck Patent;
B. Entering an Order adjudging that infringement by Ningxia of the Starck Patent
was willful, and that the continued infringement by Ningxia is willful;
C. Entering an order preliminarily and permanently enjoining Ningxia, its officers,
directors, principals, agents, attorneys, employees, successors and assigns, and all others acting
in privity or in concert with them, from any acts of infringement of the Starck Patent;
D. Awarding Starck damages in an amount adequate to compensate for the
infringement by Ningxia of the Starck Patent, but in no event less than a reasonable royalty
under 35 U.S.C. § 284;
E. Entering an order trebling any and all damages awarded by reason of the willful
infringement by Ningxia of the Starck Patent, pursuant to 35 U.S.C. §284;
F. Entering an order awarding Starck interest on the damages awarded and its costs
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pursuant to 35 U.S.C. §284;
G. Declaring this an exceptional case and awarding Starck its costs, expenses, and reasonable attorneys’ fees pursuant to 35 U.S.C. §285 and all other applicable statutes, rules, and common law; and
H. Awarding Starck such other and further relief as the Court may deem just and proper.
JURY DEMAND
Starck hereby demands trial by jury on all issues in its First Amended Complaint so triable.
DATED: June 14, 2013 Respectfully Submitted,
HOGAN LOVELLS US LLP
By: ______David Newmann (PA#82401) 1835 Market Street, 29 th Floor Philadelphia, PA 19103 Tel: (267) 675-4610 [email protected] Attorneys for Plaintiff H.C. Starck GmbH OF COUNSEL:
Steven P. Hollman Susan M. Cook Hogan Lovells US LLP 555 Thirteenth Street, NW Washington, DC 20004 Tel: (202) 637-5672 [email protected] [email protected]
Arlene L. Chow Hogan Lovells US LLP 875 Third Avenue New York, NY 10022 Tel: (212) 918-3000 [email protected]
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