M&G Polymers v. Invista et. al

7/30/2019 M&G Polymers v. Invista et. al.

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UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF OHIO

M&G POLYMERS, USA, LLC

Plaintiff

vs.

INVISTA S..R.L., LLC,INVISTA NORTH AMERICA S. .R.L.,and AURIGA POLYMERS, INC.

Defendants

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CASE NO.

JUDGE

JURYTRIALDEMANDED

COMPLAINT FOR FALSE ADVERTISING UNDER LANHAM ACT 43(A),15 U.S.C. 1125(A), AND FALSE MARKING UNDER 35 U.S.C. 292

Plaintiff M&G Polymers, USA, LLC (M&G) hereby alleges as follows:

THE PARTIES

1. Plaintiff M&G is a Delaware corporation with its principal place of business at6951 Ridge Road, Sharon Center, Ohio 44274.

2. Upon information and belief, Defendant Invista S..r.l., LLC (Invista SARL) isa Luxembourg corporation with a place of business at 4123 East 37th Street North, Wichita,

Kansas 67220.

3. Upon information and belief, Defendant Invista North America S..r.l., LLC(Invista NA, and collectively with Invista SARL, Invista) is a Luxembourg corporation with

a place of business at 4123 East 37th Street North, Wichita, Kansas 67220.

4. Upon information and belief, Defendant Auriga Polymers, Inc. (Auriga) is aDelaware corporation with its principal place of business at 1550 Dewberry Road, Spartanburg,

South Carolina 29307.


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JURISDICTION AND VENUE

5. The Court has personal jurisdiction over Invista SARL because it has continuousand systematic contacts with the state of Ohio and is registered with the Ohio Secretary of State

to conduct business in Ohio. Invista SARL also has the following entity as its registered agent in

this District: CT Corporation System, 1300 East Ninth Street, Cleveland, OH 44114.

6. The Court has personal jurisdiction over Invista NA because it has continuous andsystematic contacts with the state of Ohio, and has caused injury to an Ohio resident in this

judicial district.

7. The Court has personal jurisdiction over Auriga because it has continuous andsystematic contacts with the state of Ohio, and has caused injury to an Ohio resident in this

judicial district.

8. This action arises under 35 U.S.C. 292, 15 U.S.C. 1125(a), and the statutorylaw of the state ofOhio. This Court has subject matter jurisdiction over this action pursuant to

28 U.S.C. 1331 (federal question) and 1338(a)(Patent Act claim), 15 U.S.C. 1121 (Lanham

Act claim), and 28 U.S.C. 1367 (supplemental jurisdiction over pendant state law claim).

9. Venue is proper in this Court pursuant to 28 U.S.C. 1391(b)(2) because asubstantial part of the events giving rise to the claims occurred in this judicial district.


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FACTUAL ALLEGATIONS

10. This action seeks redress for Invistas deliberate and unlawful false andmisleading advertising regarding its PolyShield

resin product, which it has falsely claimed to be

covered by United States Patent No. 7,943,216 (the 216 Patent). In fact, each patent claim of

the 216 Patent requires the claimed composition to include a partially aromatic polyamide, e.g.,

nylon. Invistas PolyShield

product does not contain any nylon.

11. Invista is one of the worlds largest producers of polymers and fibers, which areprimarily used in the production of nylon, spandex, and polyester applications. Among other

products, Invista produces a PolyShield

resin that, when combined with nylon by a customer,

forms an oxygen and carbon dioxide barrier resin, the purpose of which is to protect oxygen-

sensitive food and beverages in order to preserve taste and freshness. PolyShield

is a polyester

barrier resin offered for sale, sold, and distributed in the United States through Auriga, the

exclusive licensee of Invistas relevant patents.

12. PolyShield, without nylon, does not read on any of the claims of the 216 Patent.13. M&G is a world-wide producer of polymers and polyethylene and competes with

Invista both in the United States and around the world. Among M&Gs products is

PoliProtect APB and PoliProtect JB, which are each a polyester barrier resin that also acts

as a barrier to oxygen and carbon dioxide and is used in the food and beverage industry to protect

product taste and freshness. M&G sells PoliProtect in competition with PolyShield

in the

United States and overseas.

14. Over the past several years, Invista and M&G have been involved in patentlitigation in the United States District Court for the District of Delaware, Case No. 1:11-cv-

01007, regarding three U.S. patents owned by Invista, one of which is the 216 Patent: United


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States Patent No. 7,879,930 (the 930 Patent); United States Patent No. 7,919,159 (the 159

Patent); and the 216 Patent (the Delaware Litigation). Prior to trial, Invista dismissed the

159 Patent without prejudice and stipulated that Poliprotect resin does not indirectly infringe

the 159 Patent, and it dismissed the 930 Patent with prejudice. Also prior to trial, the District

Court ruled on summary judgment that M&G had not directly infringed, and does not directly

infringe, the 159 and 216 Patents. At the same time, however, it ruled, with respect to the 216

Patent, that M&G had indirectly infringed seven of the eight claims asserted by Invista. The

remaining claim as to the 216 Patent went to trial, and the Court granted a directed verdict for

Invista on the claim.

15. On or about August 21, 2013, Invista issued a press release (the Press Release)on its website and, upon information and belief, distributed the press release to the media and

public, as well as its U.S. and non-U.S. customers, including at least one customer in this judicial

district. A true and accurate copy of the Press Release is attached hereto as Exhibit A.

16. The Press Release states that the United States District Court for the District ofDelaware found, as a matter of law, that M&G Polymers USA and M&G USA Corporation . . .

infringed all asserted claims of INVISTAs PolyShield resin patent (U.S. 7943216), and that

M&Gs PoliProtect . . . resin products infringed upon the PolyShield resin patent.

17. The Press Release further states that The PolyShield resin patent discloses andclaims an innovative barrier technology designed to protect the shelf life of oxygen-sensitive

food and beverages. Auriga Polymers, Inc. . . . is INVISTAs exclusive licensee of the

PolyShield resin patent in the United States. . . . Parties interested in purchasing PolyShield

resin in the United States should contact Auriga Polymers.


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18. In fact, the PolyShield product is not a commercial embodiment of the 216Patent, because all of the 216 Patent claims comprise a partially aromatic polyamide, e.g.,

nylon, which is not present in the PolyShield

product. The Press Release falsely states that

Invistas PolyShield

is protected by the 216 Patent.

19. Upon information and belief, Invista provided the Press Release to at least oneM&G customer located in this judicial district.

Count I False Marking Under 35 U.S.C. 292

20. M&G incorporates the allegations set forth in the preceding paragraphs of thisComplaint as if fully rewritten herein.

21. Invista, through the Press Release, has advertised that its PolyShield resinproduct is a commercial embodiment of, and thus protected by, the 216 Patent.

22. Invistas PolyShield resin is not a commercial embodiment of the 216 Patent.23. Upon information and belief, Invista stated that its PolyShield product is a

commercial embodiment of the 216 Patent for the purpose of deceiving consumers in violation

of 35 U.S.C. 292.

24. Invista admitted and acknowledged in the Delaware Litigation that itsPolyShield

resin competes with M&Gs PoliProtect resin products, and, upon information

and belief, M&G has suffered and will continue to suffer competitive injury as a result of

Invistas falsely identifying the PolyShield product to be protected by the 216 Patent.

Count II False Advertising and Unfair Competition under 15 U.S.C. 1125(a)



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26. Invistas Press Release is a commercial advertisement and promotion because itsolicits customers in the United States to contact Auriga to purchase PolyShield

resin.

27. By means of the Press Release, Invista made and distributed in interstatecommerce, and in this judicial district, commercial advertisements or promotions that contain

false and misleading representations of fact regarding its products. The Press Release contains

actual misstatements and/or misleading statements or failures to disclose, specifically the

statements that (1) PolyShield

is a commercial embodiment of the 216 Patent, and (2) that the

District Court of Delaware found that M&Gs PoliProtectTM

resin products infringed upon the

PolyShield

resin patent.

28. These statements misrepresent the nature, characteristics and qualities ofPolyShield

resin and/or Poliprotect resin, and, upon information and belief, they actually

deceive, or have a tendency to deceive, a substantial segment of M&Gs customers and potential

customers. This deception is material in that it concerns whether M&Gs PoliProtectTM

resin

products infringe Invistas 216 Patent and is likely to influence purchasing decisions of M&Gs

customers.

29. Invistas false and misleading advertising has damaged M&G by falselyrepresenting the nature, characteristics and qualities of PolyShield

resin and/or Poliprotect

resin, and thereby threatening M&G with loss of customers and irreparable harm to its reputation

and goodwill.

30. The foregoing statements and omissions constitute false and/or misleadingdescriptions and representations of fact under Section 43(a) of the Lanham Act, 15 U.S.C.

1125(a).


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31. Invista has caused, and will continue to cause, immediate and irreparable injury toM&G, including injury to M&Gs business, reputation and goodwill, for which there is no

adequate remedy at law. M&G is therefore entitled to an injunction under 15 U.S.C. 1116 (1)

restraining Invista, its agents, employees, representatives and all persons acting in concert with

Invista from engaging in future acts of false advertising, (2) ordering the recall of the Press

Release, and (3) such other relief as may be needed to remedy the harm caused by the Press

Release.

32. Pursuant to 15 U.S.C. 1117, M&G is further entitled to recover from Invista thedamages sustained by M&G as a result of Invistas acts in violation of 15 U.S.C. 1125(a).

M&G is at present unable to ascertain the full extent of the monetary damages it has sustained by

reason of Invistas acts.

33. Pursuant to 15 U.S.C. 1117, M&G is further entitled to recover from Invista thegains, profits and advantages that Invista has obtained as a result of Invistas acts in violation of

15 U.S.C. 1125(a). M&G is at present unable to ascertain the full extent of the gains, profits

and advantages Invista has obtained by reason of Invistas acts.

34. Pursuant to 15 U.S.C. 1117, M&G is further entitled to recover the costs of thisaction. Moreover, M&G is informed and believes, and on that basis alleges, that Invistas

conduct was undertaken willfully and with the intention of causing confusion, mistake or

deception, making this an exceptional case entitling M&G to recover additional damages and

reasonable attorneys fees.

Count III Common Law False Advertising and Unfair Competition



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36. By virtue of the actions above, Invistas has engaged in false and misleadingadvertising.

37. Invista has caused, and will continue to cause, immediate and irreparable injury toM&G, including injury to M&Gs business, reputation and goodwill, for which there is no

adequate remedy at law. M&G is therefore entitled to the equitable remedy of an injunction

restraining Invista, its agents, employees, representatives and all persons acting in concert with

Invista from engaging in future acts of false advertising and ordering removal of all of Invistas

false advertisements.

38.

M&G is further entitled to recover from Invista the damages sustained by M&G

as a result of Invistas acts. M&G is at present unable to ascertain the full extent of the monetary

damages it has sustained by reason of Invistas acts.

39. M&G is further entitled to recover from Invista the gains, profits and advantagesthat Invista has obtained as a result of Invistas acts. M&G is at present unable to ascertain the

full extent of the gains, profits and advantages Invista has obtained by reason of Invistas acts.

40. M&G is further entitled to recover the costs of this action. Moreover, M&G isinformed and believes, and on that basis alleges, that Invistas conduct was undertaken willfully

and with the intention of causing confusion, mistake or deception, making this an exceptional

case entitling M&G to recover additional damages and reasonable attorneys fees.

Count IV Violation of Ohio Deceptive Trade Practices Act



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42. By virtue of the actions above, Invista has engaged in deceptive trade practices byfalsely representing that PolyShield

resin has characteristics that it does not have and that it is of

a particular standard, quality or grade, in violation of O.R.C. 4165.02(A)(7) and (9).

43. At all times, Invistas actions have been willful, knowing and intentional.44. Invistas actions have caused, and will continue to cause, immediate and

irreparable injury to M&G, including injury to M&Gs business, reputation and goodwill, for

which there is no adequate remedy at law. M&G is therefore entitled to the equitable remedy of

an injunction under O.R.C. 4165.03, restraining Invista, its agents, employees, representatives

and all persons acting in concert with Invista from engaging in future acts of deceptive trade

practices and ordering removal of all of Invistas false advertisements.

45. M&G is further entitled to recover from Invista the damages sustained by M&Gas a result of Invistas acts. M&G is at present unable to ascertain the full extent of the monetary

damages it has sustained by reason of Invistas acts.

46. M&G is further entitled to recover from Invista the gains, profits and advantagesthat Invista has obtained as a result of Invistas acts. M&G is at present unable to ascertain the

full extent of the gains, profits and advantages Invista has obtained by reason of Invistas acts.

47. M&G is further entitled to recover the costs of this action. Moreover, M&G isinformed and believes, and on that basis alleges, that Invistas conduct was undertaken willfully

and with the intention of causing confusion, mistake or deception, making this an exceptional

case entitling M&G to recover additional damages and reasonable attorneys fees.

PRAYER FOR RELIEF

Wherefore, M&G hereby requests that this Court enter a judgment in its favor as follows:


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A. That Invista be adjudged to have violated 35 U.S.C. 292 by falsely stating inadvertising that its PolyShield

product is a commercial embodiment of the 216 Patent;

B. That Invista be adjudged to have violated 15 U.S.C. 1125(a) by publishing falseand/or misleading representations and descriptions about its PolyShield

resin product and/or

M&Gs Poliprotect resin products;

C. That Invista be adjudged to have engaged in common law false advertising andunfairly competing against M&G by using false, deceptive or misleading statements of fact that

misrepresent its PolyShield

resin product and/or M&Gs PoliprotectTM

resin products;

D.

That Invista be adjudged to have violated O.R.C. 4165.02 by engaging in

deceptive trade practices through publication of false, deceptive or misleading statements of fact

about the PolyShield

resin product and/or Poliprotect resin products;

E. For injunctive relief prohibiting Invista, its agents, or anyone working for, inconcert with or on behalf of Invista from engaging in false or misleading advertising with respect

to its PolyShield

resin product, which relief includes but is not limited to, removal of all false or

misleading advertisements and corrective advertising to remedy the effects of Invistas false

advertising;

F. For an order requiring Invista to correct any erroneous impression persons mayhave derived concerning PolyShield

resin product, including without limitation, the placement

of corrective advertising and providing written notice to the public;

G. That the Court enter an order for judgment against Invista for damages sufferedby M&G in an amount to be proven at trial;

H. That M&G be awarded Invistas profits obtained by Invista has a consequence ofits conduct;


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I. That M&G be awarded all of the costs and attorneys' fees it has incurred inconnection with this action;

J. That all of Invistas misleading and deceptive materials be removed and destroyedpursuant to 15 U.S.C. 1118 and other equitable relief;

K. That M&G be granted prejudgment and post-judgment interest; andL. Such other and further relief as this Court deems is just and proper.

Respectfully submitted,

/s/ Megan D. Dortenzo

Megan Dortenzo (0079047)

[email protected]

Arthur P. Licygiewicz (0068458)[email protected]

THOMPSON HINE LLP

3900 Key Center, 127 Public SquareCleveland, Ohio 44114

Telephone: (216) 566-5500

Fax: (216) 566-5800

Attorneys for Plaintiff M&G Polymers USA,

LLC

JURY DEMAND

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, plaintiff hereby requests a

trial by jury as to all issues so triable.

An Attorney for Plaintiff M&G Polymers USA,

LLC


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Documents

M&G Polymers v. Invista et. al