united states district court northern district of … · and/or offers for sale, in the united...

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

NISSEI ASB CO. and NISSEI ASB MACHINE, CO., LTD., Plaintiffs, v. R&D TOOL & ENGINEERING CO., Defendant.

) ) ) ) ) ) ) ) ) ) )

Civil Action No.: Judge: JURY TRIAL DEMANDED

COMPLAINT

Plaintiffs Nissei ASB Co. (“ASB US”) and Nissei ASB

Machine, Co., Ltd. (“ASB JP”) (collectively, “ASB”), for its

Compliant against R&D Tool & Engineering Co. (“R&D”), hereby

states as follows:

THE PARTIES

1. ASB US is a corporation organized and existing under

the laws of Georgia, having its principle place of business at

1375 Highlands Ridge Road SE, Suite C, Smyrna, GA 30082.

2. ASB JP is a corporation organized and existing under

the laws of Japan, having its headquarters at 4586-3 Koo,

Komoro-Shi, Nagano-Ken, 384-8585 Japan.

Case 1:18-cv-00553-TCB Document 1 Filed 02/05/18 of 29

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3. On information and belief, R&D is a Missouri

corporation having its principle place of business at 1009 SE

Browning St., Lee's Summit, MO 64081.

NATURE OF THE ACTION

4. ASB designs, builds, distributes, markets, sells,

and/or offers for sale, in the United States, blow mold

machines, mold units, and parts for use therein, including its

ASB-150DPW injection blow molding machine (“ASB-150DPW

machine”). The ASB-150DPW machine may be used to manufacture

containers, such as bottles and jars, for use in a host of

industries, including food and beverage, cosmetics, and

pharmaceuticals.

5. This is a civil action for breach of contract arising

under the laws of the state of Georgia relating to R&D’s

improper manufacture, use, offer for sale, sale, and/or import

of molding equipment for use in ASB’s blow molding machines,

including for use in the ASB-150DPW machine, in violation of

contractual agreements between ASB and R&D.

6. This is also a civil action for infringement of U.S.

Patent 8,608,466 (“the ’466 patent”), U.S. Patent 8,998,602

(“the ’602 patent”), and U.S. Patent 8,613,614 (“the ’614

patent”) (collectively, “the patents-in-suit”), arising under


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the United States patent laws, Title 35, United States Code,

§§ 100–299, including 35 U.S.C. §§ 271, 281–285, relating to

R&D’s improper manufacture, use, offer for sale, sale, and/or

import of molding equipment for use in ASB’s blow molding

machines, including for use in the ASB-150DPW machine, in

violation of ASB’s patent rights.

JURISDICTION AND VENUE

7. This Court has subject matter jurisdiction over the

breach of contract claim under at least 28 U.S.C. § 1332.

8. This Court has subject matter jurisdiction over the

patent infringement claims under at least 28 U.S.C. §§ 1331 and

1338(a).

9. This Court has personal jurisdiction over R&D because

R&D expressly consented to personal jurisdiction as to the

claims asserted in this Complaint by way of two agreements with

ASB US, titled the “Royalty Agreement” and the “Permission and

Confidentiality Agreement” (“Confidentiality Agreement”)

(collectively, “the Contractual Agreements”).

10. In the Contractual Agreements, ASB granted R&D a

license to make a single mold “and only one such mold” for an

ASB-150DPW machine to be sold to a third-party customer. In

breach of those Contractual Agreements, R&D has improperly


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manufactured, used, offered for sale, sold, and/or imported

additional molds for use in the ASB-150DPW machine. ASB’s

patent infringement claims similarly arise under and/or relate

to R&D’s same actions in breach of the Contractual Agreements

11. R&D consented to personal jurisdiction in this venue

in the Royalty Agreement by agreeing, in part, that:

This Agreement is governed by Georgia law. Any modification is to be in a writing signed by the parties. Jurisdiction for any action under or relating to this Agreement is in Atlanta, Georgia. 12. R&D further consented to personal jurisdiction in this

venue in the Confidentiality Agreement by agreeing, in part,

that:

This Agreement is governed by Georgia law. Any modification is to be in a writing signed by the parties. Jurisdiction for any action under or relating to this Agreement is in Atlanta, Georgia. 13. R&D has thus consented that venue is proper in this

district under 28 U.S.C. §§ 1391 and/or 1400(b) for each of the

breach of contract and patent infringement claims asserted in

this Complaint.

14. Venue for the patent infringement claims is

additionally and independently proper under this Court’s power

of pendant venue, as the patent infringement claims arise out of

the same common nucleus of operative facts that form the basis

for the breach of contract claim.


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STATEMENT OF FACTS

The Contractual Agreements

15. In the ordinary course of its business, when ASB sells

ASB-150DPW machines to its customers, it does so along with

molds for use in the machines.

16. On or about May 11, 2012, ASB received order number

#4500847517 from third-party customer, Plastipak Packaging, Inc.

(“PPI”), for the purchase of an ASB-150DPW machine.

17. Instead of purchasing a mold from ASB to go along with

the ASB-150DPW machine, PPI requested permission from ASB to

have R&D make one single mold for that machine.

18. In order to accommodate this request, ASB US, R&D, and

PPI executed the Confidentiality Agreement on or about July 2,

2012.

19. The Confidentiality Agreement states that:

ASB has developed through substantial effort, research, time and expense certain intellectual property, inventions, technical know-how, and trade secrets directed and related to certain stretch blow molding machines known as the “ASB-150DPW.”

20. In recognition of these rights, the Confidentiality

Agreement further states that: “R&D and PPI seek indemnification

to make such mold and only one such mold, and for the limited

purpose of use with the ASB-150DPW machine purchased by PPI.”


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21. Accordingly, the Confidentiality Agreement states

that: “ASB grants to R&D and PPI a one-time license to make a

total of one mold for the ASB-150DPW machine.”

22. In return, R&D and PPI agreed to keep in confidence

“this Agreement, including all of its terms, and including the

fact of this Agreement and permission and license, and the fact

that R&D is making such mold, and all facts related to the

source of the mold” and to refrain from disclosing that

information to any third parties and to any of their employees,

excluding those that must know any of that information to

perform his or her job.

23. On or about February 22, 2013, ASB US and R&D executed

the Royalty Agreement.

24. The Royalty Agreement states that:

ASB has developed through substantial effort, research, time and expense certain patents, inventions, technical know-how, and trade secrets directed and related to certain stretch blow molding machines known as the “ASB-150DPW.”

25. R&D agreed, among other things, to pay ASB the sum of

$30,000.00 in consideration for ASB’s grant of a one-time

license for the making of one single mold and indemnifying R&D

against action from ASB under ASB’s intellectual property rights

for the making of such a mold.


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26. The Royalty Agreement states, in part:

WHEREAS, ASB as a condition of entering into a concurrent agreement between and among ASB, R&D, and PPG to provide such permission, ASB and R&D agree as follows: CONFIDENTIALITY: R&D agrees to keep the facts of this Agreement, and of its royalty payment and amount hereunder confidential, and will refrain from disclosing same to any third parties and to any of its employees, except that any employee of R&D that must know of this Agreement and/or the royalty payment and/or the amount of such payment, in order to perform his or her job may receive such information, but only after each such employee has signed this secrecy agreement or an equal secrecy agreement for the protection of ASB. INDEMNIFICATION: In the concurrent PERMISSION AND CONFIDENTIALITY AGREEMENT executed by ASB, R&D and [PPI], ASB grants to R&D and [PPI] a one-time license to make a total of one mold for the ASB-150DPW machine being purchased in purchase order number #4500847517 dated 5/11/12 of [PPI], the mold being for a 30 ounce container, and for PPG to use this one mold only with said ASB-150DPW machine; and ROYALTY: R&D agrees to pay ASB, simultaneously with the execution of this Agreement and the execution of the PERMISSION AND CONFIDENTIALITY AGREEMENT, and as a condition precedent to the effectiveness of this agreement and the PERMISSION AND CONFIDENTIALITY AGREEMENT, the sum of $30,000.00, as a fully paid up royalty for the making and use of said mold; 27. In accordance with the Contractual Agreements, R&D

made payment of $30,000.00 to ASB US on March 8, 2013.

28. The Contractual Agreements comprised of the

Confidentiality Agreement and Royalty Agreement constitute valid

and enforceable contracts, and all of ASB’s conditions precedent


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have been performed or waived for this and all other contract

claims.

The Patents

29. The United States Patent and Trademark Office (“PTO”)

issued the ’466 patent on December 17, 2013, entitled “Blow Mold

Unit and Blow Molding Apparatus Using the Same.” A copy of the

’466 patent is attached hereto as Exhibit A.

30. The ’466 patent was assigned to ASB JP in an

assignment recorded with the PTO on July 30, 2012, and ASB JP

has granted ASB US an exclusive license under the ’466 patent in

the United States.

31. The ’466 patent includes seven independent claims:

claims 1, 10, 11, 12, 13, 14, and 15. Claim 1 is a

representative claim, which states:

1. A blow mold unit that is secured on a base of a blow molding apparatus, the blow mold unit comprising:

a blow mold that includes a first blow cavity split mold, a second blow cavity split mold, and a plurality of raised-bottom molds, the first blow cavity split mold and the second blow cavity split mold being closed so that a parting surface of the first blow cavity split mold and a parting surface of the second blow cavity split mold come in contact with each other, and the plurality of raised-bottom molds respectively defining a raised-bottom shape in a plurality of cavities defined by the first blow cavity split mold and the second blow cavity split mold;


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a first securing member on which the first blow cavity split mold is secured;

a second securing member on which the second blow cavity split mold is secured;

a plurality of first pressure-receiving members, the plurality of first pressure-receiving members being respectively disposed on either side of the first blow cavity split mold and either side of the second blow cavity split mold, and being respectively secured on the first securing member and the second securing member;

a third securing member that is disposed between the first securing member and the second securing member, the plurality of raised-bottom molds being secured on a first side of the third securing member;

a plurality of shafts that are suspended from a second side of the third securing member that is opposite to the first side, a lower end of each of the plurality of shafts being a free end; and

a plurality of second pressure-receiving members that are secured on the first securing member and the second securing member at a position below the third securing member.

32. The PTO granted the ’602 patent on April 7, 2015,

entitled “Blow Mold Unit and Blow Molding Apparatus Using the

Same.” A copy of the ’602 patent is attached hereto as Exhibit

B.


assignment recorded with the PTO on December 13, 2013, and ASB

JP has granted ASB US an exclusive license under the ’602 patent

in the United States.

34. The ’602 patent has one independent claim, claim 1.

Claim 1 is a representative claim, which states:


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1. A blow mold unit that is secured on a base of a blow molding apparatus, the blow mold unit comprising:

a blow mold that includes a first blow cavity split mold, a second blow cavity split mold, and the first blow cavity split mold and the second blow cavity split mold being closed so that a parting surface of the first blow cavity split mold and a parting surface of the second blow cavity split mold come in contact with each other; and

two securing blocks that are secured on the base, each of the two securing blocks including a roller

that comes in rolling contact with the base, and a roller driving member that moves the roller downward from an upward position at which the roller does not come in rolling contact with the base to a downward position at which the roller comes in rolling contact with the base.

35. The PTO granted the ’614 patent on December 24, 2013,

entitled “Blow Molding Apparatus.” A copy of the ’614 patent is

attached hereto as Exhibit C.


assignment recorded with the PTO on February 6, 2013, and ASB JP

has granted ASB US an exclusive license under the ’614 patent in

the United States.

37. The ’614 patent includes two independent claims:

claims 1 and 6. Claim 1 is a representative claim, which

states:

1. A neck mold assembly comprising: N rows of holding plates, N being an integer equal to

or larger than 2, and each of the N rows of holding plates holding a plurality of neck molds; and


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a supporting-mechanism that supports the N rows of holding plates, the supporting mechanism including:

at least one reinforcement shaft that is provided along a row direction of the N rows of holding plates; and

two first securing sections that are secured at either end of the at least one reinforcement shaft,

each of the N rows of holding plates including: at least one first through-hole formed therein that

receives the at least one reinforcement shaft a pair of split plates that secures a pair of neck

split molds; two second through-holes that are formed in the row

direction at a plurality of positions in a longitudinal direction;

two guide shafts that are respectively inserted into the two second through-holes; and

two biasing members that are respectively inserted into the two guide shafts, and bias the pair of split plates in a closing direction.

ASB is the owner of and has the right to sue for

infringement of the patents-in-suit.

COUNT ONE (Breach of the Contract)

38. ASB realleges, and incorporates in full herein, each

of the preceding paragraphs.

39. The Contractual Agreements granted R&D a one-time

license to make a total of one mold, and only one mold, for the

ASB-150DPW machine purchased by PPI in purchase order number

#4500847517.

40. ASB has learned that R&D has made, used, sold, offered

for sale, and/or imported additional molds for ASB-150DPW


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machines beyond the single mold covered by the one-time license

in the Contractual Agreements.

41. R&D has breached the Contractual Agreements by its

making, using, selling, offering for sale, and/or importing

molds in addition to the one mold for the ASB-150DPW machine

purchased by PPI in purchase order number #4500847517 in

violation of the terms of the Contractual Agreements.

42. As a result of R&D’s breach of contract, ASB sustained

damages greater than $75,000, including but not limited to lost

profits, interest, loss of market share, price erosion, loss of

goodwill, harm to reputation, loss of business opportunities,

and other damages.

COUNT TWO (Patent Infringement of U.S. Patent 8,608,466)



44. R&D has and continues to make, use, sell, offer for

sale, and/or import in the United States molds for the ASB-

150DPW machine, which fall within at least one claim of the ’466

patent.

45. In accordance with representative claim 1 of the ’466

patent, the R&D ASB-150DPW molds include literally or

equivalently:


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a. a first cavity of the mold, a second cavity of

the mold, and a plurality of raised-bottom molds, which can be

closed to form the shape of a bottle with a raised-bottom;

b. a first plate securing the first cavity of the

mold;

c. a second plate securing the second cavity of the

mold;

d. a plurality of members, including two sets of

conical members that receive the pressure when the mold is

closed, each set having one component of the first cavity of the

mold and another part by the second cavity of the mold;

e. a third plate supporting the raised-bottom molds

located between the first and second plates securing the

first and second cavities of the mold;

f. a plurality of shafts hanging from the bottom of

the third plate with the lower end of the shafts being

free; and

g. a plurality of sets of members attached to the

first and second plates securing the first and second

cavities of the mold and located below the third plate.

46. Photographs of an R&D ASB-150DPW mold are attached

hereto as Exhibit D.


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47. R&D has direct knowledge of the ’466 patent and has

been informed by ASB of its continued infringement of the ’466

patent.

48. By making, using, selling, offering for sale, and/or

importing in the United States the R&D ASB-150DPW molds, R&D has

infringed and is continuing to infringe at least one claim of

the ’466 patent either directly or indirectly in violation of at

least one of 35 U.S.C. §§ 271(a), (b), and/or (c).

49. Should R&D allege that it is not a direct infringer of

one or more of the claims of the ’466 patent under 35 U.S.C.

§ 271(a) on the basis that its customers are infringing those

claims, not R&D, ASB alleges that R&D has and is continuing to

take active steps to induce direct infringement by its customers

of those claims under 35 U.S.C. § 271(b) by making, selling,

and/or offering for sale its ASB-150DPW molds in the United

States with knowledge of the ’466 patent, with knowledge that

its ASB-150DPW molds are specifically designed to operate in an

ASB-150DPW machine in an infringing manner, with knowledge that

use of its ASB-150DPW molds by its customers constitutes direct

infringement, and by intentionally encouraging infringement of

the ’466 patent by its customers to take advantage of the sales

of its ASB-150DPW molds.


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50. Upon information and belief, R&D is also inducing the

infringement of one or more claims of the ’466 patent by its

customers under 35 U.S.C. § 271(b) by providing instructions

and/or assistance in the installation and/or operation of its

ASB-150DPW molds in customers’ ASB-150DPW machines.





contribute to the direct infringement of the ’466 patent by its

customers of those claims under 35 U.S.C. § 271(c) by selling



its ASB-150DPW molds are specifically designed to operate as a

material component in its customers’ ASB-150DPW machines in an

infringing manner, and with knowledge that use of its ASB-150DPW

molds by its customers constitutes direct infringement.

52. ASB further alleges that R&D’s ASB-150DPW molds are

not staple articles of commerce, that there are no substantial

noninfringing uses of R&D’s ASB-150DPW molds other than as a

component in its customers’ ASB-150DPW machines to be used in an

infringing manner, and that R&D’s ASB-150DPW molds constitute a

material component of the claimed invention because they are


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specifically designed to work with the ASB-150DPW machines and

directly embody significant characteristics of the ’466 patent

claims.

53. Despite R&D’s knowledge of the ’466 patent, its

knowledge of its infringing activities, and its Contractual

Agreements to manufacture “only one” mold for an ASB-150DPW

machine, R&D has and is continuing to intentionally infringe one

or more claims of the ’466 patent by continuing to manufacture,

sell, and/or offer for sale additional ASB-150DPW molds. This

intentional infringement without regard for ASB’s patent rights

or the parties’ Contractual Agreements constitutes egregious

conduct sufficient to establish willful infringement under 35

U.S.C. § 284.

54. By reason of the ongoing and continuous infringement

by R&D of the ’466 patent, ASB is entitled to an entry of an

injunction against R&D, preventing further infringement of ASB’s

patent rights, pursuant to 35 U.S.C. § 283.

55. ASB has suffered, and is continuing to suffer, damages

as a result of R&D’s infringement of the ’466 patent, and ASB is

entitled to compensation or other damages as allowed to the full

extent of the law, pursuant to 35 U.S.C. §§ 284 and 285.

COUNT THREE (Patent Infringement of U.S. Patent No. 8,998,602)


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patent.



equivalently:

a. a first cavity of the mold, a second cavity of

the mold, and a plurality of raised-bottom molds, which can be

closed to form the shape of a bottle with a raised-bottom;

b. two securing blocks at the bottom of the mold;

and

c. the securing blocks include wheels and a

mechanism that raises and lowers the wheels to allow the mold to

roll on the wheels.





patent.


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19























claims.


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U.S.C. § 284.









COUNT FOUR (Patent Infringement of U.S. Patent No. 8,613,614)




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patent.



equivalently:

a. two rows of plates for holding the molds for the

bottle necks;

b. a mechanism for supporting the holding plates and

molds that includes

i. at least one shaft reinforcing the holding

plate by running in a row direction of the holding plates;

ii. two securing sections attached to the ends

of the reinforcing shaft;

c. the holding plates also including:

i. a hole passing through the holding plates to

allow the reinforcement shafts to pass through;

ii. two plates holding the neck split molds;

iii. two additional holes through the plates

formed in the holding plates;

iv. two shafts for guiding the holding plates as

they close and inserted through the additional holes; and


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v. two biasing members coupled to the guiding

shafts that close the split plates.





patent.


















23

























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claims.










U.S.C. § 284.








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PRAYER FOR RELIEF

WHEREFORE, Plaintiff ASB respectfully request that the

Court enter judgment in its favor and against Defendant R&D on

the breach of contract and patent infringement claims set forth

above and respectfully requests that this Court:

(a) enter judgment that, under Georgia Law, R&D has

and continues to materially breach the parties’ Contractual

Agreements by its making, using, selling, offering for sale,

and/or importing more than one mold for an ASB-150DPW machine in

violation of the terms of the Contractual Agreements,

(b) award ASB all available and legally permissible

damages sufficient to compensate ASB for R&D’s breach of the

Contractual Agreements in an amount to be determined at trial,

including for lost profits, interest, loss of market share,

price erosion, loss of goodwill, harm to reputation, loss of

business opportunities, and any other permissible damages,

including under at least O.C.G.A. §§ 13-6-1, -2, and -13, these

damages exceeding $75,000;

(c) enter judgment that R&D, by reason of the making,

using, selling, offering for sale, and/or importing in the


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United States ASB-150DPW molds, has infringed and continues to

infringe at least one claim of the ’466 patent in violation of

at least one of 35 U.S.C. § 271(a), (b), and/or (c);

(d) award ASB all available and legally permissible

damages sufficient to compensate ASB for R&D’s infringement of

the ’466 patent, including to the full extent permitted by 35

U.S.C. § 284, together with interest, in an amount to be

determined at trial;

(e) declare ASB’s infringement of the ’466 patent to

be willful and award ASB treble damages in accordance with 35

U.S.C. § 284;

(f) enter judgment that R&D, by reason of the making,





(g) award ASB all available and legally permissible






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(h) declare ASB’s infringement of the ’602 patent to


U.S.C. § 284;

(i) enter judgment that R&D, by reason of the making,





(j) award ASB all available and legally permissible





(k) declare ASB’s infringement of the ’614 patent to


U.S.C. § 284;

(l) entering a permanent injunction against R&D,

barring and enjoining further making, using, selling, offering

for sale, and/or importing in the United States of all

infringing products;

(m) declare this to be an exceptional case under 35

U.S.C. §§ 285 and 271(e)(4) and award ASB costs, expenses, and


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disbursements in this action, including reasonable attorney

fees; and

(n) award ASB such other and further relief as may be

permitted and is appropriate at law or in equity.

JURY DEMAND

Pursuant to Rule 38(b) of the Federal Rules of Civil

Procedure, ASB hereby demands a trial by jury on all issues

triable of right by a jury.

Respectfully submitted this 5th day of February, 2018.

Date: February 5, 2018 Respectfully submitted,

_______ _______________ John D. Livingstone Georgia Bar No. 455066 Jeffrey Freeman Georgia Bar No. 275625

Roger Taylor Georgia Bar No. 342927 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 271 17th St. NW Suite 1400 Atlanta, GA 30306 Phone: (404)653-6400 [email protected] [email protected] [email protected] Attorneys for Plaintiff


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Nissei ASB Co. and Nissei ASB Machine, Co., Ltd.


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