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. 2 Case: 1:13-cv-00732-TSB Doc #: 22 Filed: 11/21/13 Page: 3 of 11 PAGEID #: 390 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. 3 Case: 1:13-cv-00732-TSB Doc #: 22 Filed: 11/21/13 Page: 4 of 11 PAGEID #: 391 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 4 Case: 1:13-cv-00732-TSB Doc #: 22 Filed: 11/21/13 Page: 5 of 11 PAGEID #: 392 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. 5 Case: 1:13-cv-00732-TSB Doc #: 22 Filed: 11/21/13 Page: 6 of 11 PAGEID #: 393 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