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Cot'n Wash, Inc. v. Henkel Corp.

United States District Court, D. Delaware

July 11, 2014

COT'N WASH, INC. and BIG 3 PACKAGING, LLC, Plaintiffs,
v.
HENKEL CORPORATION, THE DIAL CORPORATION, and HENKEL CONSUMER GOODS INC., Defendants. COT'N WASH, INC. and, BIG 3 PACKAGING, LLC, Plaintiffs,
v.
THE SUN PRODUCTS CORPORATION, Defendant

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Jessica Zeldin, Esquire of Rosenthal, Monhait & Goddess, P.A., Wilmington, Delaware, Counsel for Plaintiffs. Of Michael J. Bonella, Esquire, Matthew L. Mustokoff, Esquire, Jenna M. Pellecchia, Esquire, and Richard A. Russo, Jr., Esquire of Kessler, Topaz, Meltzer & Check LLP.

J. Clayton Athey, Esquire and Laina M. Herbert, Esquire of Prickett, Jones & Elliott, P.A., Wilmington, Delaware, Counsel for Defendants Henkel Corporation, The Dial Corporation, and Henkel Consumer Goods Inc. Of Christopher T. Holland, Esquire, Kenneth E. Keller, Esquire, and Ethan Jacobs, Esquire, of Keller, Sloan, Roman & Holland LLP.

Jack B. Blumenfeld, Esquire and Regina Murphy, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware, Counsel for Defendant The Sun Products Corporation. Of Errol B. Taylor, Esquire, Fredrick M. Zullow, Esquire, and Anna Brook, Esquire, of Milbank, Tweed, Hadley & McCloy LLP.

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MEMORANDUM OPINION

Sue L. Robinson, District Judge.

I. INTRODUCTION

On May 23, 2012, Big 3 Packaging, LLC (" B3P" ) and Cot'n Wash, Inc. (" Cot'n Wash" ) (collectively, " plaintiffs" ) filed suit in this district against Henkel Corporation, The Dial Corporation (" Dial" ), and Henkel Consumer Goods, Inc. (collectively, " the Henkel defendants" ) alleging infringement of United States Patent No. 6,037,319 (" the '319 patent" ). (Civ. No. 12-650, D.I. 1) On the same day, plaintiffs asserted the '319 patent against The Sun Products Corporation (" Sun" ) in a related case before this court.[1], [2] (Civ. No. 12-651, D.I. 1) The '319 patent is directed to " water-soluble packets containing liquid cleaning concentrates." (D.I. 1 at ¶ 10; D.I. 1 at ¶ 10)[3]

The Henkel defendants and Sun (collectively, " defendants" ) answered plaintiffs' complaints on July 30, 2012 and asserted counterclaims against plaintiffs seeking declaratory judgments of non-infringement and invalidity of the '319 patent. (D.I. 11 at 18-19, ¶ ¶ 17-27; D.I. 9 at 12-14, ¶ ¶ 13-26) On August 21, 2012, plaintiffs answered defendants' counterclaims. (D.I. 17; D.I. 13)

Pursuant to the court's scheduling order, " [a]ll motions to . . . amend the pleadings shall be governed by Rule 15," with no specified deadline for amending. (D.I. 22 at ¶ 3; D.I. 20 at ¶ 3) On August 15, 2013, by stipulation, the Henkel defendants filed their first amended answer, affirmative defenses, and counterclaims, adding affirmative defenses of patent invalidity under 35 U.S.C. § 112 and inequitable conduct, as well as a counterclaim of patent unenforceability due to inequitable conduct. (Civ. No. 12-650, D.I. 56 at 14-23, ¶ ¶ 12-39; id. at 39-41, ¶ ¶ 59-69) On September 3, 2013, plaintiffs answered the Henkel defendants' new affirmative defenses and counterclaim. (Civ. No. 12-650, D.I. 62)

In both cases, fact discovery for the liability phase concluded on January 20, 2014 pursuant to stipulation. (D.I. 111 at

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2; D.I. 133 at 2) Expert discovery concluded on March 1, 2014. (D.I. 22 at ¶ 2(d); D.I. 20 at ¶ 2(d)) Trial is scheduled for September 15, 2014. (D.I. 22 at ¶ 11; D.I. 20 at ¶ 11)

Currently before the court are defendants' motions to amend their answers to include counterclaims of false marking under 35 U.S.C. § 292. (D.I. 145; D.I. 152) The Henkel defendants also seek to add counterclaims of false advertising under 15 U.S.C. § 1125 and deceptive trade practices under 6 Del. C. § 2532. (Civ. No. 12-650, D.I. 145) Sun seeks to include a counterclaim of unenforceability due to inequitable conduct before the United States Patent and Trademark Office (" USPTO" ). (Civ. No. 12-651, D.I. 152) The court has jurisdiction pursuant to 28 U.S.C. § § 1331 and 1338(a).

II. BACKGROUND

A. Parties

B3P is a limited liability company organized and existing under the laws of the State of New Jersey, with its principal place of business in Philadelphia, Pennsylvania. (D.I. 1 at ¶ 5; D.I. 1 at ¶ 5) B3P is the assignee of the '319 patent. ( Id. ) Cot'n Wash. is a corporation organized and existing under the laws of Pennsylvania, with its principal place of business in Philadelphia, Pennsylvania. (D.I. 1 at ¶ 6; D.I. 1 at ¶ 6) Cot'n Wash. is an exclusive licensee of the '319 patent in the laundry products field. ( Id. )

Henkel Corporation, a subsidiary of the German company Henkel AG & Co. KGaA, is a corporation organized and existing under the laws of the State of Delaware with a place of business in Rocky Hill, Connecticut. (Civ. No 12-650, D.I. 1 at ¶ 9) Henkel Consumer Goods, a subsidiary of Henkel Corporation, is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Scottsdale, Arizona. ( Id. at ¶ 8) Dial, a subsidiary of Henkel Consumer Goods, is a corporation organized and existing under the laws of the State of Delaware, with a place of business in Scottsdale, Arizona. ( Id. at ¶ 7) Sun is a private company organized and existing under the laws of the State of Delaware, with its principal place of business in Wilton, Connecticut. (Civ. No. 12-651, D.I. 1 at ¶ 7)

B. Alleged Facts Related to Amendments

1. False marking, false advertising, and deceptive trade practices

In early October 2013, while reviewing plaintiffs' document productions, defendants became aware of emails sent in 2010 and 2011 demonstrating that plaintiffs had marked their Dropps laundry product with the '319 patent despite knowledge that the liquid cleaning concentrate in the Dropps packets had a water content greater than 7.5%. ( See Civ. No. 12-650, D.I. 147 at ¶ 3; id., exs. A - D; Civ. No. 12-651, D.I. 154, exs. ...


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