Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 1 of 9

UNITED STATES DISTRICT COURT FOR SOUTHERN DISTRICT OF IOWA J. WALTER, INC., Plaintiff, v. CHEMFREE CORPORATION, Defendant.

) ) )

Case No.

COMPLAINT FOR DECLARATORY ~ RELIEF

The Plaintiff, J. Walter, Inc. (Walter), for its complaint against Defendant ChemFree Corporation (ChemFree), herby alleges as follows: NATURE OF THE ACTION 1. Walter is a pioneer in and a leading provider of bioremediating parts washers,

bioremediating cleaning fluids, and associated technology. This lawsuit seeks to put an end to ChemFrees unjustified and incorrect assertions that Walters bioremediating parts washer technology infringes any valid claim of ChemFrees U.S. Patent No. 7,980,257 (the 257 Patent), and to silence ChemFrees threats to sue Walter if Walter does not take a license under that patent. 2. The essential issues in this ease have already been litigated, with a ruling in

Walters favor. ChemFree sued Walter in Civil Action No. 1 :04-CV-37 11 in the United States District Court for the Northern District of Georgia in 2004 for infringement of four other patents, each directed to bioremediating parts washing technology. In a June 18, 2010 Order, the

Honorable Judge Jack T. Camp found that all asserted ChemFree patent claims were invalid for obviousness. In a June 6, 2011 decision, after the resignation of Judge Camp, the Honorable Judge Charles R. Wolle of this Court, sitting by designation, found no sound basis for changing

Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 2 of 9

any part of Judge Camps well-reasoned order entered on June 18, 2010. Those Orders are now on appeal to the United States Court of Appeals for the Federal Circuit. 3. The 257 Patent issued on July 19, 2011 and is directed to the same parts washing

technology already found to be unpatentable in the Orders issued by Judge Camp and Judge Wolle. Nonetheless, ChemFree wrongly contends that Walters parts washing technology

infringes one or more claims of the 257 Patent. 4. ChemFrees conduct has, and continues to, put Walter under a reasonable

apprehension of yet another suit, and there exists a justiciable controversy between ChemFree and Walter. By this lawsuit, Walter seeks a declaratory judgment that Walters bioremediating parts washers and associated technology do not infringe any valid claim of U.S. Patent No. 7,980,257. Walter further seeks an award of attorneys fees to compensate Walter for the cost of needlessly having to defend itself against claims of infringement for technology that has been found to be not patentable. The Parties 5. J. Walter, Inc. is a Delaware corporation with a place of business at 810 Day Hill

Road, Windsor, Connecticut 06095. 6. On information and belief, ChemPree Corporation is a Georgia corporation with a

place of business at 8 Meca Way, Norcross, Georgia 30093. Jurisdiction and Venue 7. This is an action under the patent laws of the United States, Title 35 of the United

State Code, and the Declaratory Relief Act, 28 U.S.C. 8. and 2201(a).

2201-02.

This Court has subject matter jurisdiction pursuant to 28 U.S.C. ~133l, 1338(a)

-2-

Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 3 of 9

9.

This Court has personal jurisdiction over ChemFree because ChemFree sells parts

washers that are allegedly covered by the claims of the 257 Patent in Iowa through NAPA Auto Parts Stores. As of the filing of this complaint, NAPA stores in the Southern District of Iowa possessed at least one and perhaps more parts washers allegedly subject to the claims of the 257 Patent. ChemFree further distributes its parts washers nationally through Home Depot, Pep

Boys, and Firestone stores and, on information and belief, this network includes distribution through stores in Iowa. On information and belief, ChemFree engages in electronic mail,

telephonic, internet, and written communications with distributors and customers in Iowa pursuant to its distribution activities in this state.

10.

Venue is proper in this District pursuant to 28 U.S.C. ~1391.

Venue is

particularly appropriate in this district before the Honorable Judge Charles R. Wolle because this is a related case to Northern District of Georgia Civil Action No. 1 :04-cv-1371 1 which was adjudicated by Judge Wolle following Judge Camps resignation. FACTUAL ALLEGATIONS Walters Technology 11. For many years, Walter has provided a wide range of industrial supplies including As a result of those

cleaners, degreasers, lubricants, and other chemical solution products.

business activities, Walter was aware of the need to clean metal parts and the like that had been fouled by oil, grease, and other hydrocarbon contaminants. 12. It was known in the art to provide a sink-on-a-drum parts washer that used a

volatile organic solvent-based cleaning fluid to clean contaminated parts. There were issues with such parts washers and cleaning fluids. For example, volatile organic solvent-based cleaning fluids were environmentally harmful and disposal of used volatile organic solvent-based cleaning fluids was problematic.

-3-

Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 4 of 9

13.

Walter developed a bioremediating parts washer that utilizes an aqueous (waterWalter developed a cleaning fluid that included a surfactant (soap

based) cleaning fluid.

solution) and microorganisms that are capable of remediating or digesting hydrocarbon contaminants washed from parts. Walter proceeded to develop a line of parts washers that

employed Walters cleaning fluid, in which the surfactant assists in cleaning the parts and the microorganisms bioremediate the hydrocarbon contaminants that are washed from parts. 14. Walters parts washers share many common features with the prior art sink-on-a

drum volatile organic solvent parts washers. Both provide a sink or basin within which to wash or clean a part, a reservoir tank that contains and holds a cleaning fluid, a pump to draw cleaning fluid from the reservoir and deliver it through a hose to a nozzle associated with the sink, and a drain to return used cleaning fluid (including the hydrocarbon contaminants) to the reservoir tanic. Walter proceeded to offer and sell such products in the United States, including in Iowa and elsewhere. The Prior Litigation 15. In 2004, ChemFree sued Walter for patent infringement in The Northern District ChemFree alleged that

of Georgia, Civil Action No. 1 :04-CV-371 1 (the First Action).

Walters bioremediating parts washer technology infringed selected claims of the following ChemFree patents: 1. 2. 3. 4. U.S. Patent No. 6,019,110 (110); U.S. Patent No. 6,074,491 (491); U.S. Patent No. 6,374,835 (835); U.S. Patent No. 6,440,226 (226); and U.S. PatentNo. 6,451,125 (125).

5.

-4-

Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 5 of 9

16.

Each of the ChemFree patents asserted in the First Action was directed to an

alleged invention in parts washing technology having three basic components: (a) a biodegradable, non-caustic, non-toxic, non-flammable, oil-dispersant/degreasing fluid; (b) the use of microorganisms to break down and remediate grease and oil; and (c) the physical structure and associated mechanical and electromechanical assemblies of a sink on a drum as used to circulate the cleaning solution and contain it while it breaks down oil and grease contaminants. 17. After extensive discovery, both fact and expert, ChemFree withdrew its ChemFree s remaining

allegations of infringement of the 491 Patent in the First Action.

infringement allegations in the First Action were tried to the Court in a week-long bench trial between July 13 and 17, 2009. 18. On June 18, 2010, The Honorable Judge Jack T. Camp of the Northern District of

Georgia entered a lengthy Order in the First Action comprising findings of fact and conclusions of law ruling that all asserted claims of the four ChemFree patents were invalid for obviousness under 35 U.S.C. 103. 19. On July 6, 2010, July 23, 2010, and October 12, 2010, ChemFree filed in the First

Action extensive post trial motions for reconsideration, a new trial, and additional findings and conclusions. Judge Camp resigned from the bench on November 19, 2010, before he heard and decided ChemFrees post trial motions. 20. At the request of the Chief Judge of the Northern District of Georgia, the Chief

Judge of the United States Court of Appeals for the Eleventh Circuit certified the necessity for the designation and assignment of a judge from another court to succeed Judge Camp. On December 23, 2010, the Honorable Judge Charles R. Wolle of this Court succeeded Judge Camp

-5-

Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 6 of 9

by intercircuit assignment. Accordingly, Judge Wolle presided over the disposition of post trial motions in the First Action. 21. Judge Wolle reviewed and became familiar with the entire relevant record in the

First Action. At ChemFrees request, on motion, Judge Wolle received inventor testimony. Judge Wolle heard argument by counsel for the parties. 22. On June 6, 2011 Judge Wolle entered an order in the First Action denying Judgment was

ChemFree s post-trial motions and directing entry of judgment for Walter. subsequently entered for Walter. The ChemFree 257 Patent 23.

On information and belief, ChemFree owns an undivided one-half interest in the

257 Patent, which is entitled Parts Washing System. The 257 Patent shares a common specification with ChemFrees 110 Patent, 491 Patent, 835 Patent, and 125 Patent. The 257 Patent, the 110 Patent, the 491 Patent, the 835 Patent, the 125 patent and the 226 Patent all derive from a common parent patent application filed on September 30, 1994. 24. Each of the ChemFree patents, including the 257 Patent, are directed to parts

washing technology having three basic components: (a) a biodegradable, non-caustic, non-toxic, non-flammable, oil-dispersant/degreasing fluid; (b) the use of microorganisms that break down and remediate grease and oil; and (c) the physical structure and associated mechanical and electromechanical assemblies used to circulate the cleaning solution and contain it while it breaks down oil and grease contaminants. More specifically, the 257 Patent is directed to the same invention as the four ChemFree patents found to be invalid in the First Action. 25. ChemFree did not disclose Judge Wolles June 6, 2011 Order in the First Action

to the U.S. Patent Office during prosecution of the 257 Patent.

-6-

Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 7 of 9

ChemFrees Assertion of the 257 Patent Against Walter 26. Notwithstanding that the 257 Patent is directed to the same invention as the four

ChemFree patents found to be invalid in the First Action, ChemFree has repeatedly accused Walter of infringing the 257 Patent. 27. ChemFree accused Walter of infringement of the 257 Patent in a March 24, 2011 Specifically, ChemFree sent to Walter by

email, before the 257 Patent had even issued.

electronic mail a notice of ChemFrees provisional rights under 35 U.S.C. 154(d) to a reasonable royalty from a person who makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application that eventually matured into the 257 Patent. 28. ChemFree again accused Walter of infringement of the 257 Patent in a July 29,

2011 email. In that email, ChemFree stated: We have reviewed some of the publicly available product literature and product demonstrations videos on J. Walters Bio-Circle L Fluid and its Mini and Maxi model parts washers. It appears to ChemFree that both the Mini and the Maxi models practice one or more claims of the 258 [sicl Patent. In the email, ChemFree proceeded to offer Walter a license under the 257 Patent. 29. Walter is continuing to offer for sale and to sell parts washing technology that

ChemFree wrongly claims to infringe the 257 Patent. Because Walter does not infringe any valid claim of the 257 Patent, Walter has no intention to take a license under the 257 Patent. Hence, Walter has a reasonable apprehension of suit and there is a justiciable issue between Walter and ChemFree regarding the 257 Patent and the scope of ChemFrees purported patent rights. COUNT I 30.

Declaratory Judgment

Paragraphs 1-29 are incorporated by reference as if fully set forth herein.

-7-

Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 8 of 9

31.

The claims of the 257 patent are invalid for failure to meet the requirement of the

patent laws of the United States, including 35 U.S.C. 32.

102, 103 and 112.

Walter seeks a declaration that the claims of the 257 Patent are invalid and that

Walter does not infringe any valid claim of the 257 Patent. COUNT II Attorneys Fees 33. The 257 Patent is directed to the same invention as that found to be invalid and

not patentable and for which essentially similar patents were found invalid in the First Action. 34. ChemFree has sought to require Walter to take a license under the 257 Patent

even though the 257 Patent covers the same invention as that found to be unpatentable and for which essentially similar patents were found invalid in the First Action. 35. ChemFree has sought to enforce the 257 Patent by requiring Walter to take a

license when ChemFree knows the 257 Patent to be invalid in view of the decision in the First Action. 36. ChemFree has improperly attempted to extend the scope of its purported patent

rights by requiring Walter to take a license under the 257 Patent. 37. In view of these facts, the instant action is an exceptional case for which Walter

should be awarded a reasonable attorneys fee under 15 U.S.C. 285. Walter seeks an award of attorneys fees as appropriate and justified under the present circumstances. WHEREFORE, the Plaintiff, J. Walter, Inc., respectfhlly requests that the Court:

-8-

Case 1:11-cv-04089 Document 1

Filed 09/23/11 Page 9 of 9

A. B. C. D. E.

Enter an order declaring that the claims of the 257 patent are invalid; Enter an order declaring that Walter does not infringe any valid claim of the 257 Patent; Enter an order declaring that ChemFree has improperly sought to extend the scope of its purported patent rights; Enter an order declaring this an exceptional case pursuant to 35 U.S.C. 285, and awarding Walter its attorney fees, costs, and expenses; and Grant to Walter such other and thither relief as may be just and appropriate. WEINHARDT & LOGAN, P.C.

Mark E. Weinhardt Holly M. Logan Danielle M. Shelton

AT0008280 AT0004710 AT0007184

2600 Grand Avenue, Suite 210 Des Moines, IA 50312 Telephone: (515) 244-3100 E-mail: mweinhardt~weinhardtlogan.com hlogan~weinhardtlogan.com dshelton~weinhardtlogan.com

OF COUNSEL:

McKEON, MEUNIER, CARLIN & CURFMAN, LLC

Anthony Askew Stephen M. Schaetzel 817 West Peachtree Street Suite 900 Atlanta, GA 30308 Telephone: (404) 645-7724 ATTORNEYS FOR PLAINTIFF

-9-