Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 1 of 13 PageID: 364
David W. Denenberg DAVIDOFF MALITO & HUTCHER LLP 200 Garden City Plaza Garden City, NY 11 530 Telephone: (5 16) 247-4440 [email protected] Attorneys for Plaintiffs TDM America, LLC and UTEX Holdings, LLC
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY
Civil Action No. 2: 11-CV-04338 (ES) (CLW) TDM AMERICA, LLC and UTEX HOLDINGS, LLC, Hon. Esther Sallas, U.S.D.J. Plaintiffs, Hon. Cathy L. Waldor, U.S.M.J.
VERIFIED AMENDED COMPLAINT FOR PATENT INFRINGEMENT GLOUCESTER COUNTY IMPROVEMENT AUTHORITY, DEMAND FOR JURY TRIAL
Defendant. DOCUMENT FILED ELECTRONICALLY
VERIFIED AMENDED COMPLAINT FOR PATENT INFRINGEMENT
TDM America, LLC ("TDM") and UTEX Holdings, LLC ("UTEX Holdings" and,
together with TDM, "plaintiffs"), as and for their verified amended complaint against defendant
Gloucester County Improvement Authority ("GCIA"), state:
NATURE OF THE COMPLAINT
1. This is an action for infringement of one or more claims of U.S. Patent
No. 6,293,731 (the "'73 1 patent") issued on September 25,2001 and entitled "Method for
Treatment of Dredged Materials to Form a Structural Fill", a copy of which is attached as Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 2 of 13 PageID: 365
Exhibit 1. The '73 1 patent was duly, validly and legally issued to its inventor and was duly, validly and legally assigned to TDM.
THE PARTIES
2. TDM is a Nevada limited liability company having a business address at
4570 West Grove Drive, Suite 240, Addison, Texas 75001-5395. TDM is a wholly-owned subsidiary of UTEX Holdings.
3. UTEX Holdings, LLC is a Delaware limited liability company having a business address at 4570 West Grove Drive, Suite 240, Addison, Texas 75001-5395.
4. Upon information and belief, defendant GCIA is a county agency of the
County of Gloucester, State of New Jersey, having a place of business located at 109 Budd
Blvd., Woodbury, NJ 08096.
JURISDICTION AND VENUE
5. Plaintiffs allege that this action arises because the invention of the '73 1 patent is being used by, for and/or on behalf of defendant and/or because defendant is actively inducing infringement of the '73 1 patent in conjunction with the processing and/or contemplated processing of dredged materials by Weeks Marine, Inc. ("Weeks Marine") pursuant to, and in accordance with, its contract with defendant and various permits secured by, and/or in the name of, defendant.
6. This action arises under the United States patent laws, 35 U.S.C. 5 101, et seq., including but not limited to 35 U.S.C. $9 271,281 - 287 and 296. This Court has jurisdiction over these counterclaims pursuant to 28 U.S.C. $5 1331, 1338,2201 and 2202.
7. GCIA is subject to personal jurisdiction in this judicial district because it is a county agency of the County of Gloucester, State of New Jersey, having a principal place of Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 3 of 13 PageID: 366
business at 109 Budd Blvd., Woodbury, New Jersey and, upon information and belief, is registered to conduct business in the State of New Jersey, and actually conducts business in the
State of New Jersey.
8. Venue is proper under 28 U.S.C. $5 1391 and 1400.
BACKGROUND
9. TDM is the owner, by assignment, of all right, title and interest in the '73 1 patent, which is a duly issued and valid patent.
10. UTEX Holdings is the worldwide exclusive licensee of the '73 1 patent, as well as other patents, trade secrets and know-how, related to the treatment and processing of waste materials including dredged materials.
11. The '73 1 patent is generally directed to a method for in-barge treatment of materials dredged from a waterway, such as a harbor or channel, and forming a mixture suitable for beneficial re-use as structural fill.
12. Plaintiffs are in the business of remediation, processing, handling and placement of waste materials including dredged materials.
13. Upon information and belief, GCIA is responsible for providing integrated, cost effective, and environmentally sound solid waste disposal, recycling, and special waste management systems for Gloucester County, New Jersey.
14. Upon information and belief, GCIA is acting as the developer of the Port of Paulsboro, New Jersey and is overseeing the design and construction of the future Port of
Paulsboro, New Jersey.
15. Upon information and belief, South Jersey Port Corporation ("SJPC") specializes in the management of ports in southern New Jersey. Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 4 of 13 PageID: 367
16. Upon information and belief, SJPC, in conjunction with GCIA, are redeveloping former terminals, such as a British Petroleum ("BP") terminal in the Port of
Paulsboro, into a new, deep-water marine terminal with associated operations for the future Port of Paulsboro, New Jersey.
17. Upon information and belief, on or about December 30,2010, GCIA awarded the Paulsboro Marine Terminal bullead, dredging and subgrade contract no. PMT-004
(the "Paulsboro contract") to Weeks Marine, which is a $48 million contract, for, inter alia, bulkhead, dredging and subgrade preparation activities for the future Port of Paulsboro. A copy of excerpts of the Paulsboro contract are attached as Exhibit 2.
18. Upon information and belief, the Paulsboro contract requires dredging approximately 334,000 cubic yards of dredged materials and amendment andlor treatment of approximately 86,000 cubic yards of dredged materials with Portland cement andlor other additives to bind and stabilize certain constituents of concern (i.e. contaminants) therein.
19. Upon information and belief, on behalf of SJPC, GCIA applied to the
State of New Jersey Department of Environmental Protection ("NJDEP") for a Waterfront
DevelopmentIWater Quality CertificateIAcceptable Use Determination permit to construct a bulklbreak bulk marine port facility at the former BP Paulsboro Terminal Site No. 4555, 303
Mantua Creek Road, Paulsboro Borough and Township of West Deptford. The permit was approved by the NJDEP on October 15,2010 as permit no. 0800-07-0003.3 (the "NJDEP permit"). A copy of the NJDEP permit is attached as Exhibit 3.
20. Upon information and belief, on behalf of SJPC, GCIA applied for a permit from the Department of the Army, U.S. Army Corps of Engineers (the "Army"), to construct the Paulsboro Marine Terminal in the borough of Paulsboro and West Deptford
Township, Gloucester County, New Jersey. The permit was approved by the Army on January -4- Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 5 of 13 PageID: 368
28,201 1 as permit no. CENAP-OP-R-2007-1125-35 (the "Army permit"). A copy of the Army permit is attached as Exhibit 4.
2 1. Upon information and belief, GCIA applied for the permits on behalf of the SJPC in contemplation of a contractor being awarded the Paulsboro contract and performing in accordance with the terms of the permit.
22. Upon further information and belief, the NJDEP and the Army permits provided for, inter alia, the redevelopment of the Paulsboro Marine Terminal which included dredging of approximately 334,000 cubic yards of dredged materials and treatment of approximately 86,000 cubic yards of the dredged materials with Portland cement or other additives in a land-based treatment facility. (See, Exhibit 3, at p. 2 of NJDEP permit; Exhibit 4 at pp. 3-4 of Army permit). In accordance with the award of the Paulsboro contract to Weeks
Marine, that dredging and treatment would be performed by Weeks Marine.
23. Upon information and belief, by April 201 1, in an effort to ensure, or increase, the profitability of its implementation of, and performance under, the Paulsboro contract, Weeks Marine decided to alter its treatment process to the in-barge process described and claimed in the '73 1 patent. In such process, dredged materials would be placed in barges or scows and treated in the barge or scow by pumping an additivelwater slurry to the barge and mixing the slurry with the dredged materials. To enable such a modification and in contemplation of Weeks Marine's in-barge processing of dredged materials under the Paulsboro contract, by letter dated April 26,201 1, GCIA, on behalf of SJPC, requested approval of the
NJDEP and the Army to modify the NJDEP and the Army permits (the "permit modification") for a "deviation in construction methodology from on-site upland dredge material processing to in-barge processing of dredge material." A copy of the permit modification, including the drawings, a schematic and submissions therewith, is attached as Exhibit 5. -5- Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 6 of 13 PageID: 369
24. Upon information and belief, the permit modification included a general operational description from Weeks Marine wherein Weeks Marine describes, in some detail, the in-barge processing of dredged material at its mobile "on the water" dredged material processing facility ("DMPF") as contemplated by Weeks Marine for the Paulsboro Marine Terminal. A copy of the general operational description is included as part of the permit modification attached as Exhibit 5. The general operational description provides in relevant part:
Ovewiew
Weeks' DMPF concept includes an in-barge stabilization process that blends Portland cement with dredged material (DM) for dewatering and chemical stabilization. All processing equipment will be located on a deck barge (processing barge) using spuds to fix its location. Barges (dredge scows) loaded with DM will remain at the dredging site overnight to allow initial dewatering. Dredge scows containing unprocessed DM will then be brought to the DMPF . . .
DM Stabilization
After debris screening, DM stabilization will take place using the following multi- step process:
Blending Portland cement with Water Portland cement will be delivered to the site by trucks and will be pneumatically transferred to a storage vessel located on the Processing Barge. It will then be pneumatically transferred from this storage vessel to an on-board cement mixing and delivery (CMD) system. The CMD process will be a closed system, designed to substantially reduce fugitive emissions of cement . . . Hoppers on the CMD system will store and deliver Portland cement to an auger that will mix water with the cement to create a pumpable slurry. The auger will transport this slurry to a pump which will feed it to an excavator equipped with a mixing head located on the Processing Barge.
DM Stabilization
. . . The mixing excavator stationed on the Processing Barge will lower its mixing head into a Dredge Scow with unprocessed DM. The point on the mixing head where Portland cement is added to the DM will remain submerged in unprocessed DM to prevent spilling, splashing or blowing material. The amount of cement added will be equivalent to approximately 8% of the total volume of DM. Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 7 of 13 PageID: 370
Following thorough mixing of the DM with Portland cement, the newly stabilized dredge material (SDM) will remain in the dredge scow for approximately twenty- four hours. . .
(See Exhibit 5, at general operational description).
25. With respect to the mobile DMPF, Weeks Marine previously applied for and was granted NJDEP Waterfront Development PermitIWater Quality CertificateIAcceptable
Use Determination permit 0906-10-0012.1 on December 15,2010 (the "DMPF permit") for an in-barge stabilization system at the foot of Colony Road, Jersey City, NJ 07305. A copy of the
DMPF permit is attached as Exhibit 6. The DMPF permit describes that Weeks Marine's DMPF operates:
.. . [A]n "in-barge" stabilization system that incorporates Portland cement to dewater and chemically stabilize dredged material ...Dewatered raw dredge material will be delivered to the facility in scows and moored along the deck barge. All surface water that accumulates on the deck barge and any additional water that accumulates on the dewatered raw dredge material during transport will be pumped to the dedicated "decant scow." . . . Cement will be supplied to the facility by truck from the adjacent process road and will connect to the deck barge through hoses. Cement will be delivered to dredge material scows via slurry which will be pumped through the mixing head. No dredge material will be offloaded at the site.
(See Exhibit 6, at page 1 of permit).
26. The permit modification, applied for by GCIA on behalf of SJPC, includes
Weeks Marine's general operational description of the mobile DMPF, processing schematic and detail drawings and its DMPF permit, and sought approval to process 86,000 cubic yards of dredged material in an in-barge stabilization process. As shown above, in the DMPF permit and its general operational description, Weeks Marine describes that its in-barge stabilization process includes the steps of (i) obtaining dredged material, (ii) depositing dredged material in a barge,
(iii) removing free water fiom the dredged material and the barge, (iv) creating slurry of additive
(Portland cement) and water in a closed cement mixing and delivery system and in a container, Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 8 of 13 PageID: 371
(v) pumping the slurry to a mixing head (assembly) located in the barge, (vi) mixing the additive slurry into the dredged material and (vi) curing the mixture of additive slurry and dredged materials. (See, Exhibit 5, at general operational description and processing detail schematic;
Exhibit 6, at page 1 of permit).
27. On July 6,201 1, the permit modification was approved by the NJDEP.
(Exhibit 7).
28. Upon information and belief, the processing of dredged material under the
Paulsboro contract practices each and every element of certain claims of the '73 1 patent.
29. In accordance with the terms of the Paulsboro contract, at addendum no. 1,
GCIA requires Weeks Marine to perform all work under the Paulsboro contract in compliance with permits issued for the development of the site. Specifically, Section 4.07 of the supplemental conditions and attachments thereto, provides:
All work at the site is to be completed in compliance with the NJDEP permit issued for the development of the site, the associated permit conditions, and formal clarifications to the permit conditions, as provided by NJDEP. The Permit, permit conditions, and clarifications are provided as Attachment G to the Supplementary Conditions, included at the end of this Section.
(Exhibit 2).
30. Upon information and belief, Weeks Marine is required to process dredged material under the Paulsboro contract in accordance with the permits and the permit modification which provides for processing dredged material in an in-barge process that infringes one or more of the claims of the '73 1 patent.
3 1. Upon information and belief, Weeks Marine began processing dredged materials under the Paulsboro contract on or about August 5,2011 Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 9 of 13 PageID: 372
32. Weeks Marine and plaintiffs are competitors in the business of remediation, processing, handling, and placement of waste materials, including dredged materials.
COUNT 1 {Declaratory Judgment of Infringement)
33. Plaintiffs repeat and reallege each and every allegation contained in paragraphs 1- 32 of this complaint as though fully set forth herein.
34. Based upon the foregoing, and upon information and belief, GCIA secured the permits and the permit modification on behalf of SJPC. These permits and the permit modification provide for the processing of dredged material under the Paulsboro contract in a manner which infringes the '73 1 patent. Upon further information, and based upon the foregoing, the Paulsboro contract requires Weeks Marine to comply with all permits and the permit modification, which compliance necessarily requires processing dredged materials in a manner which infringes the '73 1 patent.
35. Plaintiffs, in good faith, and in an attempt to resolve this matter, repeatedly informed GCIA that Weeks Marine's processing of dredged materials in accordance with the modified permit infringes the '73 1 patent.
36. GCIA's actions set forth herein constitute direct and/or indirect infringement of the '73 1 patent.
37. Despite repeated notifications, GCIA continues to willfully and intentionally infringe the '73 1 patent, directly or indirectly.
38. Based on the foregoing, and upon information and belief, there is a reasonable apprehension and immediacy that Weeks Marine's processing of dredged material infringes the '73 1 patent. Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 10 of 13 PageID: 373
39. Based on the foregoing, there is a justiciable controversy between plaintiffs and defendant, having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.
40. Upon information and belief, GCIA's acts of infringement of the '73 1 patent will continue unless enjoined by this Court.
41. Plaintiffs have no adequate remedy at law.
42. By reason of the foregoing, plaintiffs seek and are entitled to declaratory judgment that GCIA's activities infringe and/or induce infringement of the '73 1 patent and
GCIA be enjoined from infringing the '73 1 patent, directly or indirectly.
COUNT 2 {Infringement of the '731 Patent)
43. Plaintiffs repeat and reallege each and every allegation contained in paragraphs 1- 42 of this complaint as though fully set forth herein.
44. Upon information and belief, and by reason of the foregoing, GCIA is willfully and intentionally infringing the '73 1 patent, directly or indirectly.
45. Upon information and belief, GCIA's infringement of the '73 1 patent will continue unless enjoined by this Court.
46. As a direct and proximate consequence of GCIA's direct and/or inducement of infringement of the '73 1 patent, plaintiffs suffered and will continue to suffer irreparable injury and monetary damages.
47. By reason of the foregoing, plaintiffs seek damages a trebling thereof and preliminary and permanent injunctions enjoining GCIA from committing further acts of infringement of the '73 1 patent. Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 11 of 13 PageID: 374
RESERVATION OF RIGHTS AND JOINDER
48. Plaintiffs allege that the above allegations and claims are based upon information known andlor upon information and belief at this time. Plaintiffs' discovery and investigation in this action are continuing and plaintiffs reserve their right to supplement and/or amend such allegations and claims if and when further relevant information becomes available.
49. Plaintiffs do not object to consolidating this action with the action stylized
Week Marine, Inc. v. TDM America, LLC, Civil Action No. 2: 11 -CV-03850 that is currently pending in this Court.
DEMAND FOR JURY TRIAL
50. Under Rule 38 of the Federal Rules of Civil Procedure, plaintiffs request a trial by jury of any issue so triable by right.
REQUEST FOR RELIEF
WHEREFORE, plaintiffs pray for judgment and an order:
a. declaring that defendant infringes the '73 1 patent, directly and/or
indirectly;
b. preliminarily and permanently enjoining defendant and its respective
officers, directors, agents, affiliates, subsidiaries, parents, employees, and
those persons and entities in active concert therewith from further acts of
direct infringement and/or inducement of infringement of the '73 1 patent;
c. demanding that defendant takes the appropriate action to have each and
every permit that contains a description of a process for treating dredged
material in accordance with one or more claims of the '73 1 patent Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 12 of 13 PageID: 375
modified so that the methods for treating dredged material under such
permits do not infringe any of the claims of the '73 1 patent;
d. awarding plaintiffs damages for defendant's infringement of the '73 1
patent pursuant to 35 U.S.C. tj 284;
e. awarding plaintiffs treble damages for defendant's willful and intentional
infringement of the '731 patent pursuant to 35 U.S.C. tj 284;
f. awarding plaintiffs prejudgment and post-judgment interest as applicable
by law;
g. awarding plaintiffs their costs incurred in this action;
h. declaring this case "exceptional" under 35 U.S.C. tj 285, and awarding
plaintiffs their attorneys fees in this matter; and
1. granting plaintiffs such other relief as this Court deems just and proper.
Respectfully submitted, Dated: August 18,2011 s/David W. Denenberg David W. Denenberg DAVIDOFF MALITO & HUTCHER LLP 200 Garden City Plaza Garden City, NY 11530 Telephone: (5 16) 247-4440 [email protected] Attorneys for Plaintiffs TDM America, LLC and UTEX Holdings, LLC Case 2:11-cv-04338-ES-CLW Document 12 Filed 08/18/11 Page 13 of 13 PageID: 376
David W. Denenberg DAVIDOFF MALITO & HUTCHER LLP 200 Garden City Plaza Garden City, NY 11530 Telephone: (5 16) 247-4440 [email protected] Attorneys for Defendant TDM America, LLC
IN THE UNITED STATES DISTRICT COURT FOR THE DISTFUCT OF NEW JERSEY
WEEKS MAFUNE, INC., Civil Action No. 2: 1 1-CV-03850 (ES)(CLW) Plaintiff, Hon. Esther Salas, U.S.D.J. v. Hon. Cathy L. Waldor, U.S.M.J.
TDM AMERICA, LLC, VERIFICATION Defendant.
STATE OF TEXAS 1 ) ss.: COUNTY OF DALLAS )
RICK REDLE, being duly sworn, deposes and says:
I am a member of TDM America, LLC; that I have read the foregoing
counterclaims and know the contents thereof; that the same are true to my knowledge,
except those matters therein stated to be alleged on information and belief, and as to those
matters, I believe them to be true.
Rick ~edle' Sworn to before me this @day of August 201 1
LAURA G FlSCMER
STATE OF EXAS My Comm. Exp. May. 07,2019