Case: 1:13-cv-00732-TSB Doc #: 22 Filed: 11/21/13 Page: 1 of 11 PAGEID #: 388
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF OHIO WESTERN DIVISION
THE PROCTER & GAMBLE COMPANY, ) ) Plaintiff, ) Civil Action No. 1:13-cv-732 ) vs. ) Judge Timothy S. Black ) CONOPCO, INC. dba UNILEVER and ) UNILEVER UNITED STATES, INC., ) ) FIRST AMENDED COMPLAINT Defendants. ) AND JURY DEMAND
Plaintiff, The Procter & Gamble Company (“P&G”), for its Amended Complaint against
Conopco, Inc., dba Unilever and Unilever United States, Inc., (collectively “Unilever”), hereby states and alleges the following:
THE PARTIES AND JURISDICTION
1. P&G is a corporation organized and existing under the laws of the State of Ohio that maintains its principal place of business at One Procter & Gamble Plaza, Cincinnati, Ohio
45201.
2. On information and belief, Conopco, Inc. is a corporation organized and existing under the laws of the State of New York that maintains its principal place of business at 700
Sylvan Avenue, Englewood Cliffs, New Jersey 07632.
3. On information and belief, Unilever United States, Inc. is a corporation organized and existing under the laws of the State of Delaware that maintains its principal place of business at 700 Sylvan Avenue, Englewood Cliffs, New Jersey 07632. Case: 1:13-cv-00732-TSB Doc #: 22 Filed: 11/21/13 Page: 2 of 11 PAGEID #: 389
4. This Court has personal jurisdiction over Unilever under the Ohio long-arm statute (O.R.C. § 2307.382) because Unilever has sold and offered for sale in this State and this
District shampoo products that infringe P&G’s intellectual property.
5. This action arises under the patent laws of the United States, Title 35, United
States Code. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1338(a) and
1331.
6. Venue is proper in this Court under 28 U.S.C. §§ 1391(b)(2) and 1400(b).
THE PATENTS
7. On September 17, 2002, United States Letters Patent No. 6,451,300 (“the ’300
patent”) entitled “Anti-Dandruff and Conditioning Shampoos Containing Polyalkylene Glycols
and Cationic Polymers,” was duly and legally issued to P&G as the assignee of the named
inventors. Since that date, P&G has been the owner of the ’300 patent. A true and correct copy
of the ’300 patent is attached to this Amended Complaint as Exhibit A.
8. On November 18, 2003, United States Letters Patent No. 6,649,155 (“the ’155
patent”) entitled “Anti-Dandruff and Conditioning Shampoos Containing Certain Cationic
Polymers,” was duly and legally issued to P&G as the assignee of the named inventors. Since
that date, P&G has been the owner of the ’155 patent. A true and correct copy of the ’155 patent
is attached to this Amended Complaint as Exhibit B.
9. On December 13, 2005, United States Letters Patent No. 6,974,569 (“the ’569
patent”) entitled “Shampoos Providing A Superior Combination Anti-Dandruff Efficacy and
Condition,” was duly and legally issued to P&G as the assignee of the named inventors. Since that date, P&G has been the owner of the ’569 patent. A true and correct copy of the ’569 patent is attached to this Amended Complaint as Exhibit C.
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UNILEVER REPUDIATES THE PARTIES’ AGREEMENT TO ARBITRATE
10. On October 28, 1998, P&G and Unilever entered into a settlement term sheet (the
“Term Sheet”) that resolved a series of patent disputes between the parties.
11. The Term Sheet provides a mechanism for the parties to resolve their disputes,
short of court litigation. Specifically, it includes provisions regarding the handling of future
patent disputes between the parties. In particular, the Term Sheet provides that in case new
patent issues arise, the parties agree to first seek resolution through good faith negotiations.
12. The Term Sheet further provides that if such negotiations are not successful, the
next step is for the parties to participate in mediation.
13. If those first two steps do not result in a resolution, the Term Sheet provides a
third step prior to resorting to litigation: non-binding arbitration. If arbitration is unsuccessful, only then can the parties litigate the matter. Specifically, the Term Sheet allows the parties to go to court after completion of the arbitration.
14. For 15 years the parties abided by the provisions set forth in the Term Sheet.
Those provisions led to the resolution of at least five (5) patent disputes globally between the
parties.
15. On or about January 8, 2013, P&G notified Unilever of P&G’s belief that certain
of Unilever’s anti-dandruff particulate containing shampoo products infringe certain claims of
the ’300 patent, the ’155 patent, and the ’569 patent.
16. Pursuant to the provisions of the Term Sheet, the parties first sought resolution of
the dispute through negotiations. When those negotiations proved unsuccessful, the parties
agreed to mediate the matter, as required by the Term Sheet.
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17. During the negotiations, on May 17, 2013, Unilever’s counsel told P&G’s counsel
that “Unilever remains committed to complying with the dispute resolution process we have in
place with P&G.”
18. On July 22, 2013, P&G and Unilever engaged in mediation in a further attempt to
resolve their dispute regarding these anti-dandruff shampoo patents.
19. Following the mediation, the parties continued to discuss terms of a settlement of the dispute, but were unable to reach an agreement.
20. Unilever has refused to arbitrate this matter, and has otherwise now repudiated the
Term Sheet. On August 14, 2013, in the midst of the post-mediation negotiations, and in direct
contravention of the provisions of the Term Sheet, Unilever began three adversarial proceedings
challenging the validity of P&G’s patents. Unilever filed Petitions for Inter Partes Review
(“IPR”) before the United States Patent and Trademark Office (“USPTO”), seeking to have the
’300 patent, the ’155 patent, and the ’569 patent declared invalid. If instituted into USPTO trials,
those IPR petitions will be decided by judges at the Patent Trial and Appeal Board. In addition,
on the same date it filed the IPR petitions, Unilever filed suit in the United Kingdom against
P&G on Unilever’s claims regarding an unrelated patent.
THE INFRINGING PRODUCTS
21. Unilever currently manufactures, markets, sells and offers for sale anti-dandruff
or scalp therapy shampoo products, under its Clear, Axe, Suave and Dove brands, including,
among others, the following products: Clear Scalp & Hair Beauty Therapy Strong Lengths
Nourishing Shampoo, a/k/a Clear Scalp & Hair Therapy Strong Lengths Nourishing Shampoo;
Clear Scalp & Hair Beauty Therapy Total Care Nourishing Shampoo, a/k/a Clear Scalp & Hair
Therapy Total Care Nourishing Shampoo; Clear Scalp & Hair Beauty Therapy Moisturizing Dry
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Scalp Nourishing Shampoo, a/k/a Clear Scalp & Hair Therapy Moisturizing Dry Scalp
Nourishing Shampoo; Clear Scalp & Hair Beauty Therapy Damage & Color Repair Nourishing
Shampoo, a/k/a Clear Scalp & Hair Therapy Damage & Color Repair Nourishing Shampoo;
Clear Scalp & Hair Beauty Therapy Frizz Control Nourishing Shampoo; Clear Scalp & Hair
Beauty Therapy Volumizing Root Boost Nourishing Shampoo, a/k/a Clear Scalp & Hair Therapy
Volumizing Root Boost Nourishing Shampoo; Clear Scalp & Hair Beauty Therapy Complete
Care Nourishing Anti-Dandruff Shampoo, a/k/a Clear Scalp & Hair Therapy Complete Care
Nourishing Anti-Dandruff Shampoo; Clear Scalp & Hair Beauty Therapy Ultra Shea Cleanse &
Nourish Shampoo; Clear Men Scalp Therapy Strong & Full Anti-Dandruff Daily Shampoo;
Clear Men Scalp Therapy 2 in 1 Dry Scalp Hydration Anti-Dandruff Daily Shampoo &
Conditioner; Clear Men Scalp Therapy 2 in 1 Clean & Refresh Anti-Dandruff Daily Shampoo &
Conditioner; Clear Men Scalp Therapy Clean & Refresh Anti-Dandruff Daily Shampoo; Clear
Men Scalp Therapy 2 in 1 Complete Care Anti-Dandruff Daily Shampoo & Conditioner; Clear
Men Scalp Therapy Cool Sport Mint Anti-Dandruff Daily Shampoo; Clear Men Scalp Therapy 2 in 1 Scalp Comfort Anti-Dandruff Daily Shampoo & Conditioner; Axe Armor Anti-Dandruff 2 in 1 Shampoo + Conditioner; Axe Freeze Anti-Dandruff Scalp Cooling 2 In 1 Shampoo +
Conditioner, a/k/a Axe Freeze Itch Relief 2 In 1 Cooling anti-dandruff shampoo + conditioner;
Dove Men + Care Fortifying Shampoo Anti Dandruff Shampoo; Suave Scalp Solutions Anti-
Dandruff 2 In 1 Shampoo & Conditioner invigorating ocean minerals & aloe vera; Suave Scalp
Solutions Anti-Dandruff Shampoo nourishing coconut & shea butter; and Suave Scalp Solutions
Anti-Dandruff Shampoo revitalizing mint & eucalyptus, (collectively “the infringing products”).
Attached to this Amended Complaint as Exhibit D are photographs of the packaging of the infringing products.
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22. On information and belief, Unilever knows and intends that the infringing
products are sold to consumers to use as shampoos.
23. The packaging of the infringing products include instructions directing consumers
to use the products as shampoos. For example, Unilever states on the packaging of the Clear
Men Scalp Therapy Strong & Full Anti-Dandruff Daily Shampoo product that the product
“[l]eaves scalp & hair refreshed with a deep clean sensation” and Unilever instructs consumers to
“[w]et hair, massage into scalp, rinse.” Exhibit D at 25-27.
COUNT I – INFRINGEMENT OF THE ’300 PATENT
24. P&G incorporates by reference the allegations set forth in paragraphs 1 through
23 as if fully rewritten herein.
25. On information and belief, Unilever is directly infringing the ’300 patent by
manufacturing, using, offering to sell and selling products that infringe the ’300 patent,
including, but not limited to the following products: Clear Scalp & Hair Beauty Therapy Strong
Lengths Nourishing Shampoo, a/k/a Clear Scalp & Hair Therapy Strong Lengths Nourishing
Shampoo; Clear Scalp & Hair Beauty Therapy Total Care Nourishing Shampoo, a/k/a Clear
Scalp & Hair Therapy Total Care Nourishing Shampoo; Clear Scalp & Hair Beauty Therapy
Moisturizing Dry Scalp Nourishing Shampoo, a/k/a Clear Scalp & Hair Therapy Moisturizing
Dry Scalp Nourishing Shampoo; Clear Scalp & Hair Beauty Therapy Damage & Color Repair
Nourishing Shampoo, a/k/a Clear Scalp & Hair Therapy Damage & Color Repair Nourishing
Shampoo; Clear Scalp & Hair Beauty Therapy Frizz Control Nourishing Shampoo; Clear Scalp
& Hair Beauty Therapy Volumizing Root Boost Nourishing Shampoo, a/k/a Clear Scalp & Hair
Therapy Volumizing Root Boost Nourishing Shampoo; Clear Scalp & Hair Beauty Therapy
Complete Care Nourishing Anti-Dandruff Shampoo, a/k/a Clear Scalp & Hair Therapy Complete
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Care Nourishing Anti-Dandruff Shampoo; Clear Scalp & Hair Beauty Therapy Ultra Shea
Cleanse & Nourish Shampoo; Clear Men Scalp Therapy Strong & Full Anti-Dandruff Daily
Shampoo; Clear Men Scalp Therapy 2 in 1 Dry Scalp Hydration Anti-Dandruff Daily Shampoo
& Conditioner; Clear Men Scalp Therapy 2 in 1 Clean & Refresh Anti-Dandruff Daily Shampoo
& Conditioner; Clear Men Scalp Therapy Clean & Refresh Anti-Dandruff Daily Shampoo; Clear
Men Scalp Therapy 2 in 1 Complete Care Anti-Dandruff Daily Shampoo & Conditioner; Clear
Men Scalp Therapy Cool Sport Mint Anti-Dandruff Daily Shampoo; and Clear Men Scalp
Therapy 2 in 1 Scalp Comfort Anti-Dandruff Daily Shampoo & Conditioner, without authority or license from P&G.
26. On information and belief, Unilever’s foregoing acts of infringement, with knowledge of the ’300 patent, have been and continue to be willful and deliberate.
27. P&G has been damaged, in an amount yet to be determined, by Unilever’s acts of infringement and will continue to be damaged by such acts in the future.
COUNT II – INFRINGEMENT OF THE ’155 PATENT
28. P&G incorporates by reference the allegations set forth in paragraphs 1 through
27 as if fully rewritten herein.
29. On information and belief, Unilever is directly infringing the ’155 patent by
manufacturing, using, offering to sell and selling products that infringe the ’155 patent, including
but not limited to the following products: Clear Scalp & Hair Beauty Therapy Damage & Color
Repair Nourishing Shampoo, a/k/a Clear Scalp & Hair Therapy Damage & Color Repair
Nourishing Shampoo; Clear Men Scalp Therapy Strong & Full Anti-Dandruff Daily Shampoo;
Clear Men Scalp Therapy 2 in 1 Dry Scalp Hydration Anti-Dandruff Daily Shampoo &
Conditioner; Clear Men Scalp Therapy Cool Sport Mint Anti-Dandruff Daily Shampoo; Axe
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Armor Anti-Dandruff 2 in 1 Shampoo + Conditioner; Dove Men + Care Fortifying Shampoo
Anti Dandruff Shampoo; Suave Scalp Solutions Anti-Dandruff 2 In 1 Shampoo & Conditioner
invigorating ocean minerals & aloe vera; Suave Scalp Solutions Anti-Dandruff Shampoo
nourishing coconut & shea butter; and Suave Scalp Solutions Anti-Dandruff Shampoo
revitalizing mint & eucalyptus, without authority or license from P&G.
30. On information and belief, Unilever’s foregoing acts of infringement, with
knowledge of the ’155 patent, have been and continue to be willful and deliberate.
31. P&G has been damaged, in an amount yet to be determined, by Unilever’s acts of infringement and will continue to be damaged by such acts in the future.
COUNT III – INFRINGEMENT OF THE ’569 PATENT
32. P&G incorporates by reference the allegations set forth in paragraphs 1 through
31 as if fully rewritten herein.
33. On information and belief, Unilever is directly infringing the ’569 patent by
manufacturing, using, offering to sell and selling products that infringe the ’569 patent, including
but not limited to the following products: Clear Scalp & Hair Beauty Therapy Complete Care
Nourishing Anti-Dandruff Shampoo, a/k/a Clear Scalp & Hair Therapy Complete Care
Nourishing Anti-Dandruff Shampoo; Clear Men Scalp Therapy Strong & Full Anti-Dandruff
Daily Shampoo; Clear Men Scalp Therapy 2 in 1 Dry Scalp Hydration Anti-Dandruff Daily
Shampoo & Conditioner; Clear Men Scalp Therapy Clean & Refresh Anti-Dandruff Daily
Shampoo; Clear Men Scalp Therapy 2 in 1 Complete Care Anti-Dandruff Daily Shampoo &
Conditioner; Clear Men Scalp Therapy Cool Sport Mint Anti-Dandruff Daily Shampoo; Clear
Men Scalp Therapy 2 in 1 Scalp Comfort Anti-Dandruff Daily Shampoo & Conditioner; Axe
Armor Anti-Dandruff 2 in 1 Shampoo + Conditioner; Axe Freeze Anti-Dandruff Scalp Cooling 2
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In 1 Shampoo + Conditioner, a/k/a Axe Freeze Itch Relief 2 In 1 Cooling anti-dandruff shampoo
+ conditioner; Suave Scalp Solutions Anti-Dandruff 2 In 1 Shampoo & Conditioner invigorating ocean minerals & aloe vera; Suave Scalp Solutions Anti-Dandruff Shampoo nourishing coconut
& shea butter; Suave Scalp Solutions Anti-Dandruff Shampoo revitalizing mint & eucalyptus; and Dove Men + Care Fortifying Shampoo Anti Dandruff Shampoo, without authority or license from P&G.
34. On information and belief, Unilever’s foregoing acts of infringement, with knowledge of the ’569 patent, have been and continue to be willful and deliberate.
35. P&G has been damaged, in an amount yet to be determined, by Unilever’s acts of infringement and will continue to be damaged by such acts in the future.
PRAYER FOR RELIEF
P&G respectfully prays for the following relief:
A. That the Court adjudge and decree that Unilever has infringed and is infringing the ’300, ’155, and ’569 patents;
B. That the Court enter preliminary and permanent injunctions enjoining Unilever, its officers, employees, agents, and all others acting in concert with it or participating with it from further acts that infringe the ’300, ’155, and ’569 patents;
C. That Unilever be ordered by this Court to account for and pay to P&G damages adequate to compensate P&G for Unilever’s infringement of the ’300, ’155, and ’569 patents;
D. That the Court treble the damages for Unilever’s willful infringement of the ’300,
’155, and ’569 patents;
E. That the Court award pre-judgment interest on the damages;
F. That the Court declare this an exceptional case under 35 U.S.C. § 285;
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G. That the Court award P&G its costs and attorney fees incurred in this action; and
H. That the Court award such other relief as it deems just and proper.
JURY TRIAL DEMAND
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, P&G demands a trial by jury of all issues triable of right by jury.
Dated: November 21, 2013 Respectfully submitted,
/s/ David M. Maiorana Calvin P. Griffith (#0039484) Email: [email protected] David M. Maiorana (#0071440) Email: [email protected] Thomas R. Goots (#0066010) (Admitted Pro Hac Vice) Email: [email protected] Michael S. Weinstein (#0083802) (Admitted Pro Hac Vice) Email: [email protected] JONES DAY North Point 901 Lakeside Avenue Cleveland, OH 44114 Telephone: (216) 586-3939 Facsimile: (216) 579-0212
William C. Rooklidge (Admitted Pro Hac Vice) Email: [email protected] JONES DAY 3161 Michelson Drive, Suite 800 Irvine, CA 92612-4408 Telephone: (949) 851-3939 Facsimile: (949) 553-7539
Attorneys for Plaintiff The Procter & Gamble Company
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CERTIFICATE OF SERVICE
I hereby certify that a copy of the foregoing has been filed electronically this 21st day of
November, 2013. Notice of this filing will be sent to all parties by operation of the Court’s electronic filing system. Parties may access this filing through the Court’s system. If a party is not given notice electronically through the Court’s system, a copy will be served by ordinary
U.S. Mail, first class postage prepaid.
/s/ David M. Maiorana David M. Maiorana