Case 1:99-mc-09999 Document 689 Filed 12/01/11 Page 1 of 6 PageID #: 64196 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE IVOCLAR VIVADENT AG, Plaintiff, Civil Action No. v. JURY TRIAL DEMANDED 3M COMPANY, Defendant. COMPLAINT AND JURY DEMAND Plaintiff, Ivoclar Vivadent AG ( Ivoclar complains of the Defendant 3M Company ( 3M as follows: The Parties 1. Ivoclar is a Liechtenstein company having its principal place of business at Bendererstrasse 2, FL-9494 Schaan, Liechtenstein. Its subsidiary, Ivoclar Vivadent, Inc., has a principal place of business at 175 Pineview Drive, Amherst, NY USA 14228. 2. Upon information and belief, 3M Company is a Delaware corporation having its principal place of business at 3M Center, St. Paul, MN, 55144, United States. Jurisdiction and Venue 3. This Court has subject matter jurisdiction under 28 U.S.C. 1331 and 1338(a. 4. Personal jurisdiction exists over 3M by virtue of 3M being a Delaware corporation and doing business in Delaware, including regarding the technology accused below. 5. Venue is proper in this Judicial District under 28 U.S.C. 1391(c and 1400(b. EAST\47340147.3 1
Case 1:99-mc-09999 Document 689 Filed 12/01/11 Page 2 of 6 PageID #: 64197 Patent Infringement 6. This is a claim for patent infringement arising under the patent laws of the United States, Title 35 of the United States Code. 7. On August 10, 1999, United States Patent No. 5,936,006 ( the 006 patent entitled Filled and Polymerizable Dental Material was legally issued by the United States Patent and Trademark Office. The entire right, title and interest in the 006 patent has been assigned to Ivoclar. As such, Ivoclar is the sole owner of said patent. A copy of the 006 patent is attached hereto as Exhibit A. 8. 3M, at least through its 3M ESPE Dental Business Unit, makes or imports, offers for sale and sells in the United States dental materials, including but not limited to dental materials marketed under the Filtek Supreme line such as Filtek Supreme, Filtek Supreme Plus and Filtek Supreme Ultra (collectively the 3M dental materials, which include a sol of amorphous SiO 2 particles in a liquid, organic dispersion agent, wherein the SiO 2 particles are organically surface treated, have an average size of 10 to 100 nm and are non-agglomerated. 9. The 3M dental materials are filling composites, fixing cements, and/or adhesives. 10. 3M offers for sale and sells the 3M dental materials in the United States to certified dealers, dental supply companies, dentists and other oral care professionals, who use the 3M dental materials in a method of applying the 3M dental materials to a tooth and curing them, and thus directly infringe at least claim 1 of the 006 patent. See http://everyonehasashade.com/main/index.html. EAST\47340147.3 2
Case 1:99-mc-09999 Document 689 Filed 12/01/11 Page 3 of 6 PageID #: 64198 11. The 3M dental materials embody the invention set forth in the 006 patent in its entirety. 12. 3M makes and sells the 3M dental materials knowing that it is a product that is made and especially adapted for use of infringement of the 006 patent. More specifically, 3M had constructive and actual knowledge of the 006 patent and the inventions embodied therein in advance of the release of Filtek Supreme into the marketplace on information and belief in or about 2004, having filed numerous patent applications citing the 006 patent as allegedly pertinent prior art, at least six of which subsequently issued:! U.S. Patent No. 6,376,590, applied for Oct. 28, 1999, issued April 23, 2002! U.S. Patent No. 6,387,981, applied for Oct. 28, 1999, issued May 14, 2002! U.S. Patent No. 6,572,693, applied for Oct. 27, 2000, issued June 3, 2003! U.S. Patent No. 6,730,156, applied for Oct. 28, 1999, issued May 4, 2004! U.S. Patent No. 6,899,948, applied for Apr. 15, 2002, issued May 31, 2005! U.S. Patent No. 7,393,882, applied for Jan. 29, 2003, issued July 1, 2008 13. In product literature, 3M has touted Filtek as including a combination of nonagglomerated/non-aggregated 20 nm silica fillers which falls squarely within the dental material composition set forth in claim 1 of the 006 patent. See Exhibit 2 attached hereto at 2. 14. The 3M dental materials are not a staple article or commodity of commerce suitable for substantial noninfringing use. Indeed, the 3M dental materials are uniquely suited for use in the method set forth in the claims of the 006 patent (application, then curing. EAST\47340147.3 3
Case 1:99-mc-09999 Document 689 Filed 12/01/11 Page 4 of 6 PageID #: 64199 15. 3M thus contributorily infringes at least claim 1 of the 006 patent, in violation of 35 U.S.C. 271(c. 16. Additionally, 3M actively instructs, directs or advises its customers as to how to use the 3M dental materials in methods of applying the dental material to a tooth and curing the dental material. See, e.g., Exhibit B attached hereto; http://multimedia.3m.com /mws/mediawebserver?mwsid=sssssu7zk1fslxtuox2gl8_1ev7qe17zhvtsevtsessssss-- &fn=supr_xte_tpp_ebu.pdf ; http://everyonehasashade.com/main/index.html. 17. Given the foregoing allegations, 3M thus induces the direct infringement of at least claim 1 of the 006 patent, in violation of 35 U.S.C. 271(b. 18. The invention covered by the 006 patent is of great value to Ivoclar. 3M s infringing conduct has taken place within the United States without license or permission of Ivoclar and it is believed that such activity will continue unless enjoined by this Court. 19. Ivoclar has suffered and will continue to suffer damages from the acts of infringement complained of herein. 20. Indeed, 3M knows and/or has known that the 006 patent was duly issued to Ivoclar and proceeded with an objectively reckless disregard for Ivoclar s patent rights, and without a sound or good faith basis to believe it had the right to continue its unlicensed use of the infringing technology. 21. In addition to the notice set forth above, upon information and belief 3M had notice of Ivoclar s patented technology given its filing of opposition proceedings on a related patent in the European Patent Office on or about March 18, 2003. Moreover, Ivoclar furnished EAST\47340147.3 4
Case 1:99-mc-09999 Document 689 Filed 12/01/11 Page 5 of 6 PageID #: 64200 additional notice to 3M of its 006 patent rights and 3M s infringement by letter dated October 13, 2011. 3M s actions entitle Ivoclar to an award of three times actual damages, as provided for by 35 U.S.C. 284. 22. In addition, Ivoclar has suffered and will continue to suffer irreparable harm not adequately compensated by an award of money damages. DEMAND FOR RELIEF WHEREFORE, Ivoclar respectfully demands judgment against 3M, its subsidiaries, affiliates, agents, servants, employees, attorneys and all persons in active concert or in participation with them, granting Ivoclar the following relief: (1 A preliminary and permanent injunction prohibiting 3M from further acts of infringement of the 006 patent; (2 Damages sufficient to compensate Ivoclar for the infringement by 3M in an amount to be proved at trial, but in no event less than a reasonable royalty, together with interest and costs; (3 An award to Ivoclar of three times the amount of damages so determined, as provided for in 35 U.S.C. 284; (4 A finding that this case is "exceptional," and an award to Ivoclar of its costs and reasonable attorneys' fees, as provided in 35 U.S.C. 285; and (5 Such other and further relief as this Court or jury may determine to be proper and just. EAST\47340147.3 5
Case 1:99-mc-09999 Document 689 Filed 12/01/11 Page 6 of 6 PageID #: 64201 JURY DEMAND Ivoclar demands a trial by jury on all issues so triable. Dated: December 1, 2011 Of Counsel: Frank W. Ryan Pro hac vice admission pending DLA Piper LLP (US 1251 Avenue of the Americas, 27th Floor New York, NY 10020-1104 Phone: (212 335-4500 Fax: (212 335-4501 frank.ryan@dlapiper.com Nicholas G. Papastavros Pro hac vice admission pending DLA Piper LLP (US 33 Arch Street, 26th Floor Boston, Massachusetts 02110-1447 Telephone: (212 335-4500 Facsimile: (212 335-4501 nick.papastavros@dlapiper.com By: /s/ Denise S. Kraft Denise S. Kraft (I.D. No. 2778 Aleine M. Porterfield (I.D. No. 5053 919 N. Market Street, Suite 1500 Wilmington, DE 19801 (302 468-5700 (302 394-2341 (Fax denise.kraft@dlapiper.com aleine.porterfield@dlapiper.com Attorneys for Plaintiff Ivoclar Vivadent AG EAST\47340147.3 6