Procter & Gamble Company v. Conopco et. al

7/27/2019 Procter & Gamble Company v. Conopco et. al.

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UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIOWESTERN DIVISION

THE PROCTER & GAMBLE COMPANY,

Plaintiff,

vs.

CONOPCO, INC. dba UNILEVER andUNILEVER UNITED STATES, INC.,

Defendants.

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Civil Action No. 1:13-cv-732

COMPLAINT

AND JURY DEMAND

Plaintiff, The Procter & Gamble Company (P&G), for its claims 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 Ohiothat 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 existingunder 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 organizedand 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.


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4. This Court has personal jurisdiction over Unilever under the Ohio long-armstatute (O.R.C. 2307.382) because Unilever has sold and offered for sale in this State and this

District shampoo products that infringe P&Gs intellectual property.

5. This action arises under the patent laws of the United States, Title 35, UnitedStates 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 Complaint as Exhibit A.

8. On November 18, 2003, United States Letters Patent No. 6,649,155 (the 155patent) 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 Complaint as Exhibit B.

9. On December 13, 2005, United States Letters Patent No. 6,974,569 (the 569patent) 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 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 (theTerm 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, thenext 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 athird 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&Gs belief that certainof Unilevers 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 ofthe 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, Unilevers counsel told P&Gs counselthat 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 toresolve their dispute regarding these anti-dandruff shampoo patents.

19. Following the mediation, the parties continued to discuss terms of a settlement ofthe dispute, but were unable to reach an agreement.

20. Unilever has refused to arbitrate this matter, and has otherwise now repudiated theTerm 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&Gs patents. Unilever filed Petitions forInter 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 Unilevers claims regarding an unrelated patent.

THE INFRINGING PRODUCTS

21. Unilever currently manufactures, markets, sells and offers for sale anti-dandruffor 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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22. On information and belief, Unilever knows and intends that the infringingproducts are sold to consumers to use as shampoos.

23. The packaging of the infringing products include instructions directing consumersto use the products as shampoos.

COUNT I INFRINGEMENT OF THE 300 PATENT

24. P&G incorporates by reference the allegations set forth in paragraphs 1 through23 as if fully rewritten herein.

25. On information and belief, Unilever is directly infringing the 300 patent bymanufacturing, 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

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


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& 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, (collectively the

300 patent infringing products), without authority or license from P&G.

26. On information and belief, Unilever knows, should know, or is willfully blind tothe fact that the 300 patent infringing products are specially made or adapted for an infringing

method. Nevertheless, it has sold, and continues to sell, a material component of the patented

invention that is not a staple article of commerce capable of substantial noninfringing use.

27. Unilever has been and is currently actively inducing infringement of the 300patent by others, without authority or license from P&G. Among other infringements induced,

Unilever has actively induced others to perform, within the United States, the methods recited by

the claims of the 300 patent. Unilever provides instructions to consumers directing them to

perform methods that infringe the claims of the 300 patent. On information and belief, Unilever

has knowledge of the 300 patent and knows that the induced acts constitute infringement of the

300 patent.

28. As such, Unilever has knowingly, or with willful blindness, contributed to andinduced, and continues to contribute to and induce, the infringement of the claims of the 300

patent in violation of 35 U.S.C. 271.

29. On information and belief, Unilevers foregoing acts of infringement have beenand continue to be willful and deliberate.


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30. P&G has been damaged, in an amount yet to be determined, by Unilevers acts ofinfringement and will continue to be damaged by such acts in the future.

COUNT II INFRINGEMENT OF THE 155 PATENT


32. On information and belief, Unilever is directly infringing the 155 patent bymanufacturing, 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

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, (collectively the 155 patent infringing products), without

authority or license from P&G.





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Unilever has actively induced others to use and perform, within the United States, the methods

recited by the claims of the 155 patent. Unilever provides instructions to consumers directing

them to perform methods that infringe the claims of the 155 patent. On information and belief,

Unilever has knowledge of the 155 patent and knows that the induced acts constitute

infringement of the 155 patent.





COUNT III INFRINGEMENT OF THE 569 PATENT


39. On information and belief, Unilever is directly infringing the 569 patent bymanufacturing, 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


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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; 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, (collectively the 569

patent infringing products), without authority or license from P&G.





Unilever has actively induced others to use and perform, within the United States, the methods

recited by the claims of the 569 patent. Unilever provides instructions to consumers directing

them to perform methods that infringe the claims of the 569 patent. On information and belief,

Unilever has knowledge of the 569 patent and knows that the induced acts constitute

infringement of the 569 patent.


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PRAYER FOR RELIEF

P&G respectfully prays for the following relief:

A. That the Court adjudge and decree that Unilever has infringed and is infringingthe 300, 155, and 569 patents;

B. That the Court adjudge and decree that Unilever has contributed to and inducedinfringement and is actively contributing to and inducing infringement of the 300, 155, and

569 patents;

C. 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;

D. 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 actively contributing to or inducing others to infringe the 300, 155, and 569 patents;

E. That Unilever be ordered by this Court to account for and pay to P&G damagesadequate to compensate P&G for Unilevers infringement, contribution to, and inducement of

infringement of the 300, 155, and 569 patents;


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F. That the Court treble the damages for Unilevers willful infringement of the 300,155, and 569 patents;

G. That the Court award pre-judgment interest on the damages;H. That the Court declare this an exceptional case under 35 U.S.C. 285;I. That the Court award P&G its costs and attorney fees incurred in this action; andJ. 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.


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Dated: October 10, 2013 Respectfully submitted,

/s/ David M. MaioranaCalvin P. Griffith (#0039484)

Email: [email protected] M. Maiorana (#0071440)

Email: [email protected]

Thomas R. Goots (#0066010)Email: [email protected]

Michael S. Weinstein (#0083802)

Email: [email protected] DAY

North Point

901 Lakeside AvenueCleveland, OH 44114

Telephone: (216) 586-3939Facsimile: (216) 579-0212

William C. Rooklidge (Pro Hac Vice to be filed)

Email: [email protected]

JONES DAY3161 Michelson Drive, Suite 800

Irvine, CA 92612-4408

Telephone: (949) 851-3939Facsimile: (949) 553-7539

Attorneys for Plaintiff

The Procter & Gamble Company

Documents

Procter & Gamble Company v. Conopco et. al