Case 1:18-Cv-01854-RGA Document 13 Filed 03/08/19 Page 1 of 13 Pageid #: 93

Case 1:18-cv-01854-RGA Document 13 Filed 03/08/19 Page 1 of 13 PageID #: 93

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

GEMAK TRUST,

Plaintiff,

v. C.A. No. 18-1854-RGA

CHURCH & DWIGHT CO., INC., JURY TRIAL DEMANDED

Defendant.

PLAINTIFF’S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff GEMAK Trust (“GEMAK” or “Plaintiff”) files this First Amended Complaint

for Patent Infringement against Church & Dwight Co., Inc. (“Church” or “Defendant”) and

alleges as follows:

THE NATURE OF THE ACTION

1. This is a civil action arising out of Church’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.

3. On information and belief, Defendant Church is a corporation organized and existing under the laws of Delaware, having a principal place of business at Princeton South

Corporate Center, 500 Charles Ewing Blvd., Ewing, New Jersey 08628. Case 1:18-cv-01854-RGA Document 13 Filed 03/08/19 Page 2 of 13 PageID #: 94

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 Church because Church is incorporated in the State of Delaware and is, thus, a resident of the State. On information and belief, Church also conducts business in this judicial district, including offering to sell, selling, and importing infringing products in this district.

6. Upon further information and belief, Church 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 in its first 12(b)(6) motion).

7. Venue is proper in this Court under 28 U.S.C. § 1400(b) because, among other reasons, Church is incorporated in Delaware, and thus it resides in this District.

8. Upon further information and belief, Church 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

9. 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.

10. Church is a manufacturer of automatic dishwasher detergent products and laundry products, including monodose detergent products.

11. Church is a dominant player in the detergent industry with its Arm & Hammer® line of monodose detergent products. In its 2017 annual report, Church claims that its “Power

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Brands,” which “generate over 80% of our revenues and profits” and include “ARM &

HAMMER, TROJAN, OXICLEAN, VMS (L’IL CRITTERS and VITAFUSION), XTRA,

FIRST RESPONSE, SPINBRUSH, ORAJEL, NAIR, BATISTE and WATERPIK” are “brands

that consumers love and consequently are market leaders.” See Ex. 1. Church also claims that

its Arm & Hammer products are in “[m]ore aisles in the grocery store than any other brand;

A&H products are in 86% of U.S. households in America.” Id. In its 2018 third quarter review,

Church reported that its “Consumer Domestic” net sales were $784.9 million, and “growth was led by ARM & HAMMER liquid and unit dose laundry detergent […] OXICLEAN stain fighters, and XTRA laundry detergent.” See Ex. 2.

12. On information and belief, Church makes, uses, sells, offers for sale, and imports monodose laundry detergent and monodose dishwasher detergent products including those described in detail below. On the Product Ingredient Disclosure Forms and labels for certain monodose Arm & Hammer® laundry and OxiClean® dishwasher detergent products, Church is identified as the distributor.

A. The Infringing Products

13. Church manufactures, sells, offers to sell, and imports monodose detergent

products, marketed under various trade names, including Arm & Hammer® and OxiClean®, that

infringe one or more claims of the Patents-in-Suit. Church’s Arm & Hammer® 2-in-1 Power

Pak Laundry Detergent Paks and OxiClean® Dishwasher Detergent Paks (“Infringing Products”)

are two representative examples of Church’s infringing products.

14. Attached as Exs. 3-4 and 5-6 are photographs that fairly and accurately depict the

product labels for Arm & Hammer® 2-in-1 Power Pak Laundry Detergent Paks and OxiClean®

Dishwasher Detergent Paks, respectively.

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15. Attached as Ex. 7 is the Product Ingredient Disclosure Form for Arm &

Hammer® 2-in-1 Power Pak Laundry Detergent Paks. On information and belief, Church is not

required to, and does not, list every chemical compound present in its product on the product’s

Product Ingredient Disclosure Form.

16. The Infringing Products are laundry detergent products or dishwashing detergent

products. See, e.g., Exs. 3-6.

17. The Infringing Products comprise a granulated percarbonate compound,

specifically sodium percarbonate. See, e.g., Exs. 4, 6, and 7.

18. Certain of the Infringing Products are in tablet form. See, e.g., Exs. 3-6.

19. 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 Church’s possession, custody, or control, or testing of the

Infringing Products, or both.

20. On information and belief, the blend encapsulating the percarbonate in the

Infringing Products contains a nonionic surfactant. Exhibit 7 shows that one representative

Infringing Product contains C12-15 alcohols ethoxylated, a nonionic surfactant. See, e.g., Exs. 5

and 7. On information and belief, the existence of a nonionic surfactant in the blend

encapsulating the percarbonate will be demonstrated by either documents in Church’s

possession, custody, or control, or testing of the Infringing Products, or both.

21. 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

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by either documents in Church’s possession, custody, or control, or testing of the Infringing

Products, or both.

22. 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 Church’s possession, custody, or control, or testing of the

Infringing Products, or both.

23. 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 Church’s possession, custody, or control, or testing of the Infringing Products, or both.

24. On information and belief, at least one of the Infringing Products does not contain a zeolite. On information and belief, the lack of a zeolite in the Infringing Products will be demonstrated by either documents in Church’s possession, custody, or control, or testing of the

Infringing Products, or both.

25. 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 Church’s possession, custody, or control, or testing of the Infringing

Products, or both.

26. On information and belief, the Infringing Products do not contain a phosphate.

See, e.g., Exs. 4 and 6. On information and belief, the lack of a phosphate in the Infringing

Products will be demonstrated by either documents in Church’s possession, custody, or control, or testing of the Infringing Products, or both.

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27. On information and believe, the Infringing Products comprise 1% to 15% percarbonate. On information and belief, the Infringing Products will be demonstrated to comprise 1% to 15% percarbonate by either documents in Church’s possession, custody, or control, or testing of the Infringing Products, or both.

28. 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.

29. The Infringing Products also contain a perfume. See, e.g., Ex. 7.

30. The Infringing Products also contain an enzyme. See, e.g., Exs. 4, 6, and 7.

B. The Patents-In-Suit

31. 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 8.

32. 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 9.

33. Gerald Thomas Hinton is the sole inventor of the inventions described and claimed in the ʼ514 Patent and the ’116 Patent.

34. GEMAK Trust, as assignee, owns the entire right, title, and interest in the ʼ514

Patent and the ’116 Patent.

35. This is an action to stop Church from making, using, offering to sell, or selling the

Infringing Products in the United States, or importing them into the United States, without a

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license, and to recover damages for Church’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 10-13 of the ʼ116 Patent.

COUNT I

(Infringement of the ’514 Patent Under 35 U.S.C. § 271(a), (b), and/or (c))

36. Paragraphs 1-35 above are re-alleged and incorporated by reference, as if fully set

forth herein.

37. 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.

38. As set forth above, and in violation of 35 U.S.C. § 271, Church 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.

39. The Infringing Products are marketed and sold by Church as laundry detergents

and dishwasher detergents. See, e.g., Exs. 3-6. As such, Church specifically intends for

customers who purchase the Infringing Products to use the Infringing Products as laundry

detergents and dishwasher detergents.

40. 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. 8. The Infringing Products are marketed and sold by

Church as laundry detergents and dishwasher detergents. See, e.g., Exs. 3-6. On information

and belief, the Infringing Products have no use other than as detergents. See, e.g., Exs. 3-6.

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41. Church 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 laundry

detergents and dishwasher detergents. See, e.g., Exs. 4 and 6.

42. By its actions, Church has caused injury and is liable for infringement of the ʼ514

Patent pursuant to 35 U.S.C. § 271. By its actions, Church’s infringement of the ʼ514 Patent has

caused damage, and continues to cause damage, in an amount to be determined at trial.

COUNT II

(Church’s Willful Infringement of the ’514 Patent)

43. Paragraphs 1-42 above are re-alleged and incorporated by reference, as if fully set

forth herein.

44. Defendant Church has willfully infringed the ’514 Patent.

45. On information and belief, Church is a sophisticated company in the detergent

industry who keeps apprised of relevant patents, and thus would have been on notice of the ’514

Patent since its issuance on September 7, 2004.

46. On information and belief, Church was aware of the ’514 Patent because Church

is the current assignee of one or more patents directed to monodose cleaning products that cites

patents relating to monodose detergent products listing Gerald Thomas Hinton as the inventor.

See, e.g., U.S. Pat. No. 9,273,270B2 (“the ’270 Patent”).

47. Church has engaged in infringing behavior with knowledge of the ʼ514 Patent which has been duly issued by the USPTO, and is presumed valid.

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48. On information and belief, Church 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, Church has continued its infringing activities. Church engaged in such activities despite an objectively high likelihood that its actions constituted infringement of the ’514 Patent. Church knew or should have known that its actions would cause direct and indirect infringement of the ’514 Patent. As such, Church has willfully infringed the ʼ514 Patent.

COUNT III

(Infringement of the ’116 Patent Under 35 U.S.C. § 271(a), (b), and/or (c))

49. Paragraphs 1-48 above are re-alleged and incorporated by reference, as if fully set forth herein.

50. 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.

51. As set forth above, and in violation of 35 U.S.C. § 271, Church has directly infringed the ʼ116 Patent by, among other things, making, using, offering for sale, selling, and/or importing into the United States at least one Infringing Product in a manner that infringes at least claims 1-3, 5, 7, and 10-13 of the ʼ116 Patent.

52. The Infringing Products are marketed and sold by Church as laundry detergents and dishwasher detergents. See, e.g., Exs. 3-6. As such, Church specifically intends for customers who purchase the Infringing Products to use the Infringing Products as laundry detergents and dishwasher detergents.

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53. 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. 9. The

Infringing Products are marketed and sold by Church as laundry detergents and dishwasher detergents. See, e.g., Exs. 3-6. On information and belief, the Infringing Products have no use other than as detergent compositions. See, e.g., Exs. 3-6.

54. Church 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 laundry

detergents and dishwasher detergents. See, e.g., Exs. 4 and 6.

55. By its actions, Church 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.

56. By its actions, Church’s infringement of the ʼ116 Patent has caused damage, and

continues to cause damage, in an amount to be determined at trial.

COUNT IV

(Church’s Willful Infringement of the ’116 Patent)

57. Paragraphs 1-56 above are re-alleged and incorporated by reference, as if fully set

forth herein.

58. Defendant Church has willfully infringed the ’116 Patent.

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59. On information and belief, Church is a sophisticated company in the detergent

industry who keeps apprised of relevant patents, and thus would have been on notice of the ’116

Patent since its issuance on November 26, 2002.

60. On information and belief, Church was aware of the ’116 Patent because Church is

the current assignee of one or more patents directed to monodose cleaning products that cites the

’116 Patent. See, e.g., U.S. Pat. No. 9,273,270B2 (“the ’270 Patent”).

61. On information and belief, Church was further aware of the ’116 Patent because during the prosecution of the Church ’270 Patent, the Church prosecuting attorney Stephen B.

Shear submitted an IDS to the Patent Office on October 21, 2014 listing among other things the

’116 Patent.

62. On information and belief, Church further knew or should have known about the

’116 Patent because Church created or received patent prosecution documents reflecting Hinton patent filings related to the ’116 Patent.

63. In any event, Church has actual notice of the ’116 Patent from the filing of this case.

64. Church has engaged in infringing behavior with knowledge of the ʼ116 Patent which has been duly issued by the USPTO, and is presumed valid.

65. On information and belief, Church 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, Church has continued its infringing activities. Church engaged in such activities despite an objectively high likelihood that its actions constituted infringement of the ’116 Patent. Church knew or should have known that its actions would

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cause direct and indirect infringement of the ’116 Patent. As such, Church 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 Church has infringed United States Patent Nos. 6,787,514 and

6,486,116;

B. permanently enjoining Church and their 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 Church’s infringement of the Patents-in-Suit has been willful;

D. awarding Plaintiff damages resulting from Church’s infringement adequate

to compensate for that infringement;

E. awarding Plaintiff treble damages as a result of Church’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.

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Dated: March 8, 2019 FISH & RICHARDSON P.C.

By: /s/ Kelly Allenspach Del Dotto 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