IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE COMPLAINT

Transcription

1 Case 1:99-mc Document 606 Filed 10/28/11 Page 1 of 10 PageID #: ECOPHARM USA, LLC IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE Plaintiff, v. C.A. No. RALCO NUTRITION, INC. JURY TRIAL DEMANDED Defendant. COMPLAINT Plaintiff Ecopharm USA, LLC ( Ecopharm ), by and through its undersigned counsel, files this Complaint against Ralco Nutrition, Inc. ( Ralco ), and in support thereof, alleges as follows. NATURE OF THE ACTION 1. This is an action for patent infringement, trademark infringement, and other claims brought by Ecopharm against Ralco. PARTIES 2. Ecopharm is a limited liability corporation organized and existing under the laws of the State of Delaware having a principal place of business at 606 East Basin Road, New Castle, DE Ecopharm is a reseller of raw oregano oil. 3. Upon information and belief, Ralco is a corporation organized and existing under the laws of the State of Minnesota with its principal place of business at 1600 Hahn Road, Marshall, MN Ralco is a manufacturer of oregano oil based products. JURISDICTION AND VENUE 4. This action arises under inter alia the patent laws of the United States, 35 U.S.C. 101 et seq., including 35 U.S.C. 271; and the trademark laws of the United States, 15 U.S.C. 1

2 Case 1:99-mc Document 606 Filed 10/28/11 Page 2 of 10 PageID #: , et seq. This Court has subject matter jurisdiction pursuant to 28 U.S.C. 1121, 1331, and 1338(a). 5. Upon information and belief, Ralco is subject to this Court s specific and general personal jurisdiction pursuant to due process and/or the Delaware Long Arm Statute, due at least to its substantial business in this forum, including: (i) at least a portion of the infringements alleged herein; and (ii) regularly doing or soliciting business, engaging in other persistent courses of conduct, and/or deriving substantial revenue from goods and services provided to individuals in Delaware and in this Judicial District. 6. Venue is proper in this district under 28 U.S.C and 1400(b). On information and belief, Ralco has transacted business in this district, and has committed and/or induced acts of patent infringement in this district. FACTUAL BACKGROUND 7. Ecopharm is the owner, by assignment, of all rights, title and interest in United States Patent No. 6,106,838 entitled Pharmaceutical Compositions Containing Herbal-based Active Ingredients; Methods for Preparing Same and Uses of Same for Medical and Veterinary Purposes (the 838 Patent). A true and correct copy of the 838 Patent is attached as Exhibit A. 8. The 838 Patent claims an antimicrobial pharmaceutical composition, and a method of preparing the same, comprising an essential oregano oil having specific amounts of the ingredients thymol and carvacrol. 9. Ecopharm Hellas, S.A. ( Hellas ) is a well known manufacturer and seller of oregano oil and oregano oil based products. Hellas has built a worldwide reputation as a source for pure, high quality oregano oil. Since at least 1999, Hellas has manufactured and sold pure, high quality oregano oil products under the trade name and mark Ecodiar. Hellas s raw 2

3 Case 1:99-mc Document 606 Filed 10/28/11 Page 3 of 10 PageID #: oregano oil is an essential oil having specific characteristics as claimed in the 838 Patent (the Hellas Oregano Oil ). 10. Ecopharm is the exclusive reseller of Hellas s Oregano Oil in the United States and Canada. Ecopharm has built a nationwide reputation as a reseller of pure, high quality oregano oil. Since at least 2004, Ecopharm has marketed and sold Hellas Oregano Oil. The Ecopharm name is a registered U.S. trademark (No. 77/068,393) in connection with distribution services in the field of oregano oil and oregano oil products. 11. Ralco is a manufacturer and seller of oregano oil based products. At all times relevant hereto, Ralco was aware of the existence of the 838 Patent, the Ecopharm trademark, and the Ecodiar trademark. 12. On July 12, 2004, Ecopharm, Hellas and Ralco entered into a valid and binding supply agreement (the Original Agreement ) regarding Hellas Oregano Oil. Hellas is both a signatory and a third party beneficiary under the Original Agreement. 13. Under the terms of the Original Agreement, Ralco had the exclusive right to manufacture and distribute Oregano oil products covered by one or more the claims of the 838 Patent ( Finished Products ). Pursuant to Section 2 of the Original Agreement, Ralco shall have the exclusive manufacture and distribution right for Finished Products... within North America, Central America and South America (the Original Territory ). 14. In 2008 and 2009, Ralco informed Ecopharm that Ralco desired to expand its operations regarding oregano oil based products beyond the Original Territory. Ralco informed Ecopharm that Ralco s projections for oregano oil from Ecopharm would significantly increase upon having exclusive manufacturing and distribution rights to the world. Upon expansion, Ralco informed Ecopharm that Ralco would begin purchasing in excess of 25 tons of oregano oil 3

4 Case 1:99-mc Document 606 Filed 10/28/11 Page 4 of 10 PageID #: per calendar year. 15. On April 27, 2009, Ecopharm and Ralco amended the original Agreement to address Ralco s requested expansion ( Amended Agreement ). Only two provisions of the Original Agreement were amended, to wit, (i) Ralco was granted exclusive manufacturing and distribution rights to the remainder of the world (except for select European countries), and (ii) Ralco s minimum purchase requirement to maintain exclusivity was increased to 25 tons of Hellas Oregano Oil from Ecopharm per calendar year. A true and correct copy of the Amended Agreement is attached as Exhibit B. 16. The Amended Agreement expired by its terms on December 31, Pursuant to Section 10 of the Original Agreement, [u]pon expiration or termination of this Agreement, Ralco shall no longer be an authorized reseller of Ecopharm s Products[.] 18. Pursuant to Section 10(f) of the Original Agreement, upon expiration or termination, Ralco will remove and discontinue the use of any and all of Ecopharm s trademarks or trade names. 19. Upon information and belief, Ralco continues the unauthorized manufacture and sale of oregano oil based products -- Finished Products -- that are covered by the 838 Patent. To this day, Ralco advertises on its website that its oregano oil based products are manufactured under Ecopharm s 838 Patent ( This Unique Greek Oregano [Regano ] is a product manufactured by Ralco under US PATENT # by permission of Ecopharm Hellas, S.A. and Manufactured and distributed by Ralco Nutrition, Inc. under US Patent 6,106,838 by permission from Ecopharm USA, LLC ). A true and correct copy of Ralco s website, last viewed on October 25, 2011, is attached as Exhibit C. 4

5 Case 1:99-mc Document 606 Filed 10/28/11 Page 5 of 10 PageID #: Upon information and belief, Ralco continues the unauthorized use of Plaintiff s trademark and/or trade names to market Ralco s oregano oil based products. In addition to the unauthorized advertisement on its website that its oregano oil based products are manufactured under Ecopharm s 838 Patent, Ralco advertises that its Regano TM product is equivalent to Ecodiar ( Regano TM Fact Synonyms for Regano TM are... Ecodiar.... Ecodiar was marketed by Ecopharm Hellas, S.A. ). A true and correct copy of Ralco s advertisement obtained on October 13, 2011 is attached as Exhibit D. 21. Upon information and belief, Ralco continues the unauthorized marketing and advertising that Ecopharm and Hellas are the sole supplier of oregano oil used in Ralco s oregano oil based products. Ralco advertises that Ralco Nutrition holds the exclusive marketing rights to the only viable source of Greek Oregano. Ralco has a professional relationship with the Greek supplier, Ecopharm Hellas S.A., who has developed a special hybrid variety of the herb (Origanum vulgare ssp hirtum)... Our oregano quality is determined by : Selection - 100% cultivated pure Greek oregano(origanum vulgare ssp hirtum) ). A true and correct copy of Ralco s website, last viewed on October 25, 2011, is attached as Exhibit E. COUNT I INFRINGEMENT OF U.S. PATENT NO. 6,106, Ecopharm repeats and realleges the prior paragraphs of the Complaint and incorporates them herein by reference as if fully restated herein. 23. Ecopharm is the lawful owner, by assignment, of all right, title and interest in and to the 838 Patent. 24. Upon information and belief, Ralco has been and is now knowingly and willfully infringing the 838 Patent in the State of Delaware, in this judicial district, and elsewhere in the 5

6 Case 1:99-mc Document 606 Filed 10/28/11 Page 6 of 10 PageID #: United States, by making, using, providing, offering to sell, and selling oregano oil based products, which are covered by one or more claims of the 838 Patent to the injury of Ecopharm. 25. Upon information and belief, Ralco has willfully, deliberately, and actively induced and/or contributed to and is continuing to willfully, deliberately and actively induce and/or contribute to the infringement of the 838 Patent by selling oregano oil based products to customers who infringe the 838 Patent by using the oregano oil based products covered by one or more of the claims of the 838 Patent in the United States to the injury of Ecopharm. 26. Ecopharm is entitled to recover from Ralco the damages sustained by Ecopharm as a result of Ralco s wrongful acts in an amount subject to proof at trial, including lost profits and an amount not less than a reasonable royalty, together with interest and costs fixed by this Court under 35 U.S.C The infringement, direct and indirect, by Ralco of the 838 Patent will continue to cause Ecopharm irreparable injury and damage from which there is no adequate remedy at law unless and until Ralco is enjoined from infringing said patent. COUNT II TRADEMARK INFRINGEMENT 28. Ecopharm repeats and realleges the prior paragraphs of the Complaint and incorporates them herein by reference as if fully restated herein. 29. Ecopharm is the owner of the distinctive trademark ECOPHARM. 30. Ecopharm has continuously used this mark to identify the distribution of pure, high quality oregano oil. 31. Ralco s use of ECOPHARM in connection with its products is not authorized by Ecopharm. 6

7 Case 1:99-mc Document 606 Filed 10/28/11 Page 7 of 10 PageID #: Ralco has used in commerce words, terms, names, symbols or devices that constitute false designations of origin, false or misleading description of fact and/or false or misleading representation of fact which are likely to cause confusion, mistake or to deceive as to the origin, sponsorship and approval of or by Ecopharm of Ralco and/or its products. 33. Ralco s acts misrepresent the nature, characteristics, qualities and origin of its products. 34. Ralco s acts constitute trademark infringement in violation of Section 43(a) of the Lanham Act. 35. Ralco s acts have been committed intentionally, maliciously, fraudulently, and willfully for the purposes of deceiving buyers into purchasing products from Ralco based on the false belief that origin of the oregano oil contained in the products is from Ecopharm. 36. Ralco s acts have caused and, if allowed to continue, will continue to cause Ecopharm to suffer substantial irreparable injury and damage from which there is no adequate remedy at law. 37. As a direct and proximate result of Defendant Ralco s acts, Ecopharm has been damaged and has lost profits, and Ralco has been unjustly enriched. Ecopharm is entitled to recover from Ralco the damages sustained by Ecopharm as a result of Ralco s wrongful acts in an amount subject to proof at trial, including cost, treble damages, and attorney s fees. COUNT III FALSE ADVERTISING 38. Plaintiffs repeat and reallege the prior paragraphs of the Complaint and incorporate them herein by reference as if fully restated herein. 39. Ralco s acts constitute false advertising in violation of Section 43(a) of the 7

8 Case 1:99-mc Document 606 Filed 10/28/11 Page 8 of 10 PageID #: Lanham Act. 40. Ralco s acts have been committed intentionally, maliciously, fraudulently, and willfully for the purposes of deceiving buyers into purchasing product from Ralco. 41. Ralco s act have caused and, if allowed to continue, will continue to cause Plaintiffs to suffer substantial irreparable damage and injury. Plaintiff have no adequate remedy at law. 42. As a result of the foregoing, Plaintiffs have been damaged and Ralco has been unjustly enriched. In addition, Ralco s actions have been extraordinary, entitling Plaintiffs to costs, treble damages, attorney s fees, and to such other and further relief as the Court shall deem appropriate in the circumstances. PRAYER FOR RELIEF WHEREFORE, Plaintiff respectfully requests that the Court grant Plaintiff the following relief: A. A judgment, in favor of Ecopharm, that Defendant has infringed, directly and/or indirectly, the 838 Patent literally and/or under the doctrine of equivalents; B. A judgment, in favor of Ecopharm, that Defendant s infringement of the 838 Patent is willful; C. A preliminary and permanent injunction enjoining Defendant and its officers, directors, agents, servants, affiliates, employees, divisions, branches, subsidiaries, parents, and all others acting in active concert therewith from infringement, inducing the infringement of, or contributing to the infringement of the 838 Patent; 8

9 Case 1:99-mc Document 606 Filed 10/28/11 Page 9 of 10 PageID #: D. A judgment and order requiring Defendant to pay Ecopharm its treble damages, costs, expenses, and prejudgment and post-judgment interest for Defendant s infringement of the 838 Patent, as provided under 35 U.S.C. 284; E. A judgment and order finding that this is an exceptional case within the meaning of 35 U.S.C. 285 and awarding to Plaintiffs its reasonable attorneys fees; F. A permanent injunction enjoining Defendant and its officers, directors, agents, servants, affiliates, employees, divisions, branches, subsidiaries, parents, and all others acting in active concert therewith from using the service mark Ecopharm or anything confusingly similar on or in connection with Defendant s oregano oil based products; G. A judgment and order requiring Defendant to pay Ecopharm its treble damages, costs, expenses, and prejudgment and post-judgment interest for Defendant s infringement of the Ecopharm s service mark Ecopharm ; H. Any and all other relief to which Plaintiffs are entitled. 9

10 Case 1:99-mc Document 606 Filed 10/28/11 Page 10 of 10 PageID #: DEMAND FOR JURY TRIAL Plaintiff, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury of twelve on any issues so triable by right. MCCARTER & ENGLISH, LLP Dated: October 28, 2011 /s/ Patrick A. Walker Michael P. Kelly (#2295) Daniel M. Silver (#4758) Patrick A. Walker (#5242) Renaissance Centre 405 North King Street, 8 th Floor Wilmington, DE (302) mkelly@mccarter.com dsilver@mccarter.com pwalker@mccarter.com Attorneys for Plaintiff 10