Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 1 of 9 PageID #:1
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`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Civil Action No. 16-cv-08897
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Nalco Company LLC (“Nalco”) and Ecolab USA Inc. (“Ecolab”) (collectively
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`NALCO COMPANY LLC,
`a Delaware limited liability company
`and ECOLAB USA INC., a Delaware
`Corporation,
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`Plaintiffs,
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`v.
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`SOLENIS LLC,
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`a Delaware corporation,
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`Defendant.
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`“Plaintiffs”), for their Complaint, state and allege as follows:
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`THE PARTIES
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`1.
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`Plaintiff Nalco is a limited liability company duly organized and existing
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`under the laws of the State of Delaware and has a principal place of business at 1601 W.
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`Diehl Road, Naperville, Illinois 60563-1198.
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`2.
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`Plaintiff Ecolab is a corporation duly organized and existing under the laws
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`of the State of Delaware and has a principal place of business at Ecolab Center, 370
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`North Wabasha Street, St. Paul, Minnesota 55201.
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`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Civil Action No. 16-cv-08897
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Nalco Company LLC (“Nalco”) and Ecolab USA Inc. (“Ecolab”) (collectively
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`NALCO COMPANY LLC,
`a Delaware limited liability company
`and ECOLAB USA INC., a Delaware
`Corporation,
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`
`
`
`
`
`
`
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`Plaintiffs,
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`v.
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`SOLENIS LLC,
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`a Delaware corporation,
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`Defendant.
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`
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`“Plaintiffs”), for their Complaint, state and allege as follows:
`
`THE PARTIES
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`1.
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`Plaintiff Nalco is a limited liability company duly organized and existing
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`under the laws of the State of Delaware and has a principal place of business at 1601 W.
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`Diehl Road, Naperville, Illinois 60563-1198.
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`2.
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`Plaintiff Ecolab is a corporation duly organized and existing under the laws
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`of the State of Delaware and has a principal place of business at Ecolab Center, 370
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`North Wabasha Street, St. Paul, Minnesota 55201.
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`Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 2 of 9 PageID #:2
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`3.
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`Defendant, Solenis LLC (“Solenis” or “Defendant”), is a corporation
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`existing under the laws of the State of Delaware, and has a principal place of business at
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`3 Beaver Valley Road, Suite 500, Wilmington, DE 19803. Solenis is registered to do
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`business in the State of Illinois with an agent for service of process at 208 South LaSalle
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`St., Suite 814, Chicago, Illinois 60604.
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`4.
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`Plaintiffs and Defendant are both involved and active in the sale of
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`chemical additives for industrial processes such as papermaking. Solenis has used and is
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`currently selling for use by its papermaking customers a filler and fiber optimizing
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`program and product called OptiFillSM.
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`JURISDICTION AND VENUE
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`5.
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`This is a claim of patent infringement arising under the Acts of Congress
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`relating to patents, 35 U.S.C. §§ 271; 281-285.
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`6.
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`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
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`1338(a).
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`7.
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`Personal jurisdiction and venue in this District are proper under 28 U.S.C.
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`§ 1391 and 1400(b). Solenis has systematic and continuous contacts with the State of
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`Illinois and this District. It is registered to do business in the State of Illinois with an
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`agent for service of process at 208 South LaSalle St., Suite 814, Chicago, Illinois 60604.
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`COUNT I
`Patent Infringement of U.S. Patent No. 8,465,623
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`8.
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`On June 18, 2013, United States Patent No. 8,465,623 (“the ’623 patent”)
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`entitled Method of Improving Dewatering Efficiency, Increasing Sheet Wet Web
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`Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 3 of 9 PageID #:3
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`Strength, Increasing Sheet Wet Strength and Enhancing Filler Retention In Papermaking
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`was duly and legally issued to Plaintiff Nalco as assignee of the inventors Yulin Zhao,
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`Jun Li, Qing Long Rao, and Weiguo Cheng. Nalco duly assigned all right, title and
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`interest in the ’623 patent to Ecolab. Ecolab is the owner of the entire right, title and
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`interest in and to the ’623 patent. Nalco and/or Ecolab has been the owner of the patent
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`throughout the period of Defendant’s infringement, and Ecolab still is the owner thereof.
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`On or about August 15, 2016, Nalco became the exclusive licensee of the ’623 patent.
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`The ’623 patent is attached as Exhibit A.
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`9.
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`Defendant’s use of certain paper processing aids or chemicals, including the
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`OptiFillSM program, directly and indirectly infringes the ’623 patent. Defendant has used
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`and continues to use the OptiFillSM program in a method that infringes the ’623 patent in
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`at least one paper processing plant in the United States. Specifically, Defendant’s use of
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`the OptiFillSM program infringes at least claim 19 of the ’623 patent.
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`10. Defendant has contributed to, and continues to contribute to, the
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`infringement of the ’623 patent by selling and offering for sale chemical products to
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`customers under the OptiFill program and instructing its customers on how to use those
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`chemicals in a method that infringes the ’623 patent in at least one papermill in the
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`United States.
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`11. Defendant’s chemical products comprise a material part of the claimed
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`invention of the ’623 patent, are not staple articles of commerce, and have no substantial
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`noninfringing uses. When used according to Defendant as part of the OptiFill program,
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`the use of Defendant’s chemical products infringes the ’623 patent.
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`Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 4 of 9 PageID #:4
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`12. Defendant is aware of the ’623 patent, has been aware of the ’623 patent
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`during the period of infringement, and knowingly offered its chemical products for use in
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`a process that is claimed in the ’623 patent.
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`13. Defendant’s customers, specifically papermills that purchase Defendant’s
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`chemical products as part of the OptiFill program for use in paper processing, also
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`directly infringe the ’623 patent by using the chemical products in accordance with the
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`OptiFill program in a process that embodies the invention of the ’623 patent. Defendant
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`knows that its customers use, and indeed instructs its customers to use, its chemical
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`products as part of the OptiFill program in a manner that infringes the ’623 patent.
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`14. Defendant also has induced and continues to induce infringement of the
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`’623 patent by selling chemical products to papermills as part of the OptiFill program and
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`instructing the papermills to use the chemical products in accordance with the OptiFill
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`program in a process that infringes the ’623 patent. Defendant also has assisted and
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`continues to assist the papermills in using the chemical products as part of the OptiFill
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`program in a process that infringes the ’623 patent.
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`15. Defendant is and has been aware of the ’623 patent and knows that its sale
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`of its chemical products under the OptiFill program and instructions for use of the same
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`induce Defendant’s customers to directly infringe the ’623 patent. Defendant’s
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`knowledge of the ’623 patent, combined with Defendant’s instructions for use of the
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`chemical products as part of the OptiFill program in the manner specified by the ’623
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`patent, demonstrate that Defendant intends to induce its customers to infringe the ’623
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`patent.
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`Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 5 of 9 PageID #:5
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`16. When using Defendant’s chemical products as instructed by Defendant as
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`part of the OptiFill program, Defendant’s customers, specifically the papermills, directly
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`infringe the ’623 patent by using the chemical products as part of the OptiFill program in
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`a process that embodies the invention of the ’623 patent.
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`17. Defendant has had notice of the ’623 patent and its infringement thereof.
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`18. Defendant’s infringement of the ’623 patent is and continues to be willful
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`and deliberate.
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`19.
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` Plaintiffs have been damaged by Defendant’s infringement of the ’623
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`patent and will continue to be damaged in the future unless Defendant is preliminarily
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`and permanently enjoined from infringing said patent.
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`COUNT II
`Patent Infringement of U.S. Patent No. 8,088,250
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`20.
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`Plaintiffs incorporate the allegations in paragraph 1-19 of this Complaint.
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`21. On January 3, 2012, United States Patent No. 8,088,250 (“the ’250 patent”)
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`entitled Method of Increasing Filler Content In Papermaking was duly and legally issued
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`to Plaintiff Nalco as assignee of the inventors Yulin Zhao, Jun Li, Qing Long Rao, and
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`Weiguo Cheng. Nalco duly assigned all right, title and interest in the ’250 patent to
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`Ecolab. Ecolab is the owner of the entire right, title and interest in and to the ’250 patent.
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`Nalco and/or Ecolab has been the owner of the patent throughout the period of
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`Defendant’s infringement, and Ecolab still is the owner thereof. On or about August 15,
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`2016, Nalco became the exclusive licensee of the ’250 patent. The ’250 patent is attached
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`as Exhibit B.
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`Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 6 of 9 PageID #:6
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`22. Defendant’s use of certain paper processing aids or chemicals, including the
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`OptiFillSM program, directly and indirectly infringes the ’250 patent. Defendant has used
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`and continues to use the OptiFillSM program in a method that infringes the ’250 patent in
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`at least one papermill in the United States. Specifically, Defendant’s use of the
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`OptiFillSM program infringes at least claims 1-3, 6-7, 12-13 and 17 of the ’250 patent.
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`23. Defendant has contributed to, and continues to contribute to, the
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`infringement of the ’250 patent by selling and offering for sale chemical products to
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`customers under the OptiFill program and instructing its customers on how to use those
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`chemicals in a method that infringes the ’250 patent in at least one papermill in the
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`United States.
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`24. Defendant’s chemical products comprise a material part of the claimed
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`invention of the ’250 patent, are not staple articles of commerce, and have no substantial
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`noninfringing uses. When used according to Defendant as part of the OptiFill program,
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`the use of Defendant’s chemical products infringes the ’250 patent.
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`25. Defendant is aware of the ’250 patent, has been aware of the ’250 patent
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`during the period of infringement, and knowingly offered its chemical products for use in
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`a process that is claimed in the ’250 patent.
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`26. Defendant’s customers, specifically papermills that purchase Defendant’s
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`chemical products as part of the OptiFill program for use in paper processing, also
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`directly infringe the ’250 patent by using the chemical products in accordance with the
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`OptiFill program in a process that embodies the invention of the ’250 patent. Defendant
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`Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 7 of 9 PageID #:7
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`knows that its customers use, and indeed instructs its customers to use, its chemical
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`products as part of the OptiFill program in a manner that infringes the ’250 patent.
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`27. Defendant also has induced and continues to induce infringement of the
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`’250 patent by selling chemical products to papermills as part of the OptiFill program and
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`instructing the papermills to use the chemical products in accordance with the OptiFill
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`program in a process that infringes the ’250 patent. Defendant also has assisted and
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`continues to assist the papermills in using the chemical products as part of the OptiFill
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`program in a process that infringes the ’250 patent.
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`28. Defendant is and has been aware of the ’250 patent and knows that its sale
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`of its chemical products under the OptiFill program and instructions for use of the same
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`induce Defendant’s customers to directly infringe the ’250 patent. Defendant’s
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`knowledge of the ’250 patent, combined with Defendant’s instructions for use of the
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`chemical products as part of the OptiFill program in the manner specified by the ’250
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`patent, demonstrate that Defendant intends to induce its customers to infringe the ’250
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`patent.
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`29. When using Defendant’s chemical products as instructed by Defendant as
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`part of the OptiFill program, Defendant’s customers, specifically the papermills, directly
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`infringe the ’250 patent by using the chemical products as part of the OptiFill program in
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`a process that embodies the invention of the ’250 patent.
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`30. Defendant has had actual notice of the ’250 patent and its infringement
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`thereof.
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`Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 8 of 9 PageID #:8
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`31. Defendant’s infringement of the ’250 patent is and continues to be willful
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`and deliberate.
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`32.
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` Plaintiffs have been damaged by Defendant's infringement of the ’250
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`patent and will continue to be damaged in the future unless Defendant is preliminarily
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`and permanently enjoined from infringing said patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiffs pray for the following relief:
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`a. A judgment that Defendant has infringed United States Patent No.
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`b. A judgment that Defendant has infringed United States Patent No.
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`8,465,623;
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`8,088,250;
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`c. An injunction enjoining and restraining Defendant, its officers, directors,
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`agents, servants, employees, customers, attorneys and all others acting under or through
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`it, directly or indirectly, from infringing, or contributing to or inducing the infringement
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`of, United States Patent Nos. 8,465,623 and 8,088,250;
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`d. A judgment and order requiring Defendant to pay damages under 35
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`U.S.C. § 284, including treble damages for willful infringement as provided by 35 U.S.C.
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`§ 284, with interest;
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`e. A judgment and order directing Defendant to pay the costs of this action
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`(including all disbursements) and attorney fees as provided by 35 U.S.C. § 285, with
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`interest; and
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`Date: September 14, 2016
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`Case: 1:16-cv-08897 Document #: 1 Filed: 09/14/16 Page 9 of 9 PageID #:9
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`f. Such other and further relief as this Court may deem just and equitable.
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`DEMAND FOR A JURY TRIAL
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`Plaintiffs hereby demand a trial by jury of all issues so triable.
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`Respectfully Submitted,
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`s/Anthony R. Zeuli
`Anthony R. Zeuli (IL #6231415)
`Rachel Zimmerman Scobie
`Anneliese Mayer
`MERCHANT & GOULD P.C.
`3200 IDS Center
`80 South Eighth Street
`Minneapolis, MN 55402
`Phone: 612.332.5300
`Fax: 612.332.9081
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`David E. Morrison
`Oscar Alcantara
`GOLDBERG KOHN LTD.
`55 East Monroe Street, Suite 3300
`Chicago, Illinois 60603
`(312) 201-4000
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`Attorneys for Nalco Company LLC
`and Ecolab USA Inc.
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