11
1 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF NORTH CAROLINA ASHEVILLE DIVISION Civil No. 1:11-cv-283 BORGWARNER INC., and BORGWARNER TURBO SYSTEMS INC., Plaintiffs, v. CUMMINS, INC. and CUMMINS TURBO TECHNOLOGIES LIMITED, Defendants. COMPLAINT FOR PATENT INFRINGEMENT The Plaintiffs BorgWarner Inc. (“BorgWarner”) and BorgWarner Turbo Systems, Inc. (“BorgWarner Turbo Systems”) (collectively, “Plaintiffs”) claim relief against Defendan ts Cummins Inc. and Cummins Turbo Technologies Limited (collectively, “Cummins”), as follows: THE PARTIES 1.  Plaintiff BorgWarner is incorporated under the laws of Delaware, and has a regular and established place of business at 3850 Hamlin Road, Auburn Hills, Michigan, 48326. BorgWarner has been manufacturi ng high-perf ormance automotive components for over 100 years. In that time, BorgWarner has been at the forefront of technological innovation in the auto motive industry. The company’s commitment to innovatio n is evidenced by its patent portfolio, consisting of approximately 4,200 active domestic and foreign patents and patent applications pending or under preparation. 2.  Co-plaintiff BorgWarner Turbo Systems is incorporated under the laws of Delaware, and has a regular and established place of business at 1849 Brevard Rd, Arden, North Carolina, 2870 4. At its facility in Arden, North Carolina , BorgWarner Turbo Systems

BorgWarner et. al. v. Cummins et. al

Embed Size (px)

Citation preview

Page 1: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 1/11

1

UNITED STATES DISTRICT COURTFOR THE WESTERN DISTRICT OF NORTH CAROLINA

ASHEVILLE DIVISIONCivil No. 1:11-cv-283

BORGWARNER INC., andBORGWARNER TURBO SYSTEMSINC.,

Plaintiffs,

v.

CUMMINS, INC. and CUMMINSTURBO TECHNOLOGIES LIMITED,

Defendants.

COMPLAINT FOR PATENTINFRINGEMENT

The Plaintiffs BorgWarner Inc. (“BorgWarner”) and BorgWarner Turbo Systems,

Inc. (“BorgWarner Turbo Systems”) (collectively, “Plaintiffs”) claim relief against

Defendants Cummins Inc. and Cummins Turbo Technologies Limited (collectively,

“Cummins”), as follows:

THE PARTIES

1.  Plaintiff BorgWarner is incorporated under the laws of Delaware, and has a

regular and established place of business at 3850 Hamlin Road, Auburn Hills, Michigan,

48326. BorgWarner has been manufacturing high-performance automotive components for

over 100 years. In that time, BorgWarner has been at the forefront of technological

innovation in the automotive industry. The company’s commitment to innovation is

evidenced by its patent portfolio, consisting of approximately 4,200 active domestic and

foreign patents and patent applications pending or under preparation.

2.  Co-plaintiff BorgWarner Turbo Systems is incorporated under the laws of 

Delaware, and has a regular and established place of business at 1849 Brevard Rd, Arden,

North Carolina, 28704. At its facility in Arden, North Carolina, BorgWarner Turbo Systems

Page 2: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 2/11

2

manufactures high performance automotive turbochargers for large commercial truck 

engines.

3.  Defendant Cummins Inc. is incorporated under the laws of Indiana, with its

principal place of business at 500 Jackson Street, Columbus, Indiana, 47201.

4.  Defendant Cummins Turbo Technologies Limited, which is a subsidiary of 

Cummins Inc., is incorporated under the laws of the United Kingdom and is registered in

England and Wales under Registration No. 506282, with its principal place of business at St

Andrew’s Road, Huddersfield, West Yorkshire, HD1 6RA. Cummins Turbo Technologies

has a facility in the United States located at 4500 Leeds Avenue, North Charleston, SC

29405, where it manufactures mid-range and heavy-duty turbochargers, North American

materials and prototyping.

JURISDICTION AND VENUE

5.  This is an action for patent infringement arising under the patent laws of the

United States, Title 35, United States Code. This Court has jurisdiction over the causes of 

action stated herein pursuant to 35 U.S.C. § 101 et seq. and 28 U.S.C. §§ 1331 and 1338(a).

6.  Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b), (c) and

1400(b).

7.  This Court has personal jurisdiction over Cummins, and venue is proper in

this District, because Cummins maintains systematic and continuous contacts with this

District, and because Cummins has committed substantial acts of infringement in this

District. These acts relate to turbocharger products containing cast titanium compressor

wheels that are covered by one or more claims of certain patents owned by BorgWarner and

exclusively licensed to BorgWarner Turbo Systems. Cummins’ acts of infringement have

caused specific damages in this jurisdiction including, at least, lost sales of patented

BorgWarner titanium compressor wheels and patented BorgWarner turbochargers that are

manufactured by BorgWarner Turbo Systems in this District.

Page 3: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 3/11

3

BACKGROUND

8.  Among other automotive components, Plaintiffs are leading manufacturers

and innovators of turbochargers. A turbocharger is an exhaust gas-driven compressor used

to increase the power output of an internal combustion engine by compressing air entering

the engine, and thus increasing the amount of air available for combustion. One of the key

components within a turbocharger is a compressor wheel, which cooperates with a

compressor housing to compress air and direct it into the engine’s intake manifold.

9.  Plaintiffs have made considerable investment in improving turbocharger

technologies and developed new designs and manufacturing techniques that have been

recognized by the automotive industry. This investment by Plaintiffs has resulted in a

number of inventions related to turbocharger technologies covered by issued patents.

10.  Among other patented improvements, Plaintiffs have developed a novel

design for a titanium compressor wheel for use in turbocharger applications. BorgWarner

owns several patents directed to the design of this compressor wheel, the method for

manufacturing the compressor wheel, and the method for manufacturing turbochargers

containing the compressor wheel. These patents include: United States Patent No.

6,629,556 (hereinafter referred to as “the ‘556 patent”); United States Patent No. 6,663,347

(hereinafter referred to as “the ‘347 patent”); and United States Patent No. 6,904,949

(hereinafter referred to as “the ‘949 patent”) (collectively, “the BorgWarner Compressor

Wheel Patents”). BorgWarner Turbo Systems is exclusively licensed under the BorgWarner

Compressor Wheel Patents and, pursuant to the terms of the license, has the right to assert

the BorgWarner Compressor Wheel Patents in its own name. This ownership/licensing has

continued through Cummins’ infringement.

11.  Cummins infringes the BorgWarner Compressor Wheel Patents by importing,

making, using, selling, and offering to sell devices created by methods covered by one or

more claims of the BorgWarner Compressor Wheel Patents, by using such methods, and by

inducing the use by others of such methods, and by importing, making, using, selling,

Page 4: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 4/11

4

offering to sell, devices covered by one or more claims of the BorgWarner Compressor

Wheel Patents and inducing the use by others of devices covered by one or more claims of 

the BorgWarner Compressor Wheel Patents.

12.  Cummins has had both actual and constructive notice of the BorgWarner

Compressor Wheel Patents. Cummins has acted with reckless disregard of BorgWarner’s

rights in the BorgWarner Compressor Wheel Patents. Cummins’ infringement has been,

and continues to be, willful.

COUNT I(Infringement of U.S. Patent No. 6,629,556)

13.  Paragraphs 1 through 12 are incorporated herein by reference.

14.  BorgWarner is now, and has been since its issuance, the assignee and sole

owner of all right, title, and interest in United States Patent No. 6,629,556, entitled “Cast

Titanium Compressor Wheel” (“the ‘556 patent”), which was duly and legally issued on

October 7, 2003. A true and correct copy of the ‘556 patent is attached hereto as Exhibit A.

15.  BorgWarner Turbo Systems is exclusively licensed by BorgWarner under the

‘556 patent and has the right to assert the ‘556 patent in its own name.

16.  Cummins has been and is now directly infringing the ‘556 patent in this

District and elsewhere by importing, making, using, selling, and offering to sell cast

titanium compressor wheels created by methods covered by one or more claims of the ‘556

patent and turbochargers containing such cast titanium compressor wheels.

17.  Cummins further has been and is now directly infringing the ‘556 patent in

this District and elsewhere because it exercises direction and control over all steps of the

methods covered by one or more claims of the ‘556 patent. Cummins directs and controls

its foundries in performing certain steps in manufacturing cast titanium compressor wheels

covered by one or more claims of the ‘556 patent at least because, on information and belief,

the foundries are contractually obligated to Cummins to perform the steps of such methods

and further because, on information and belief, there is an agency relationship between

Page 5: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 5/11

5

Cummins and its foundries.

18.  Cummins further has been and is now indirectly infringing the ‘556 patent in

this District and elsewhere by knowingly and specifically intending to contribute to and

induce infringement of the ‘556 patent. Cummins has been and is now inducing at least its

foundries to directly infringe by making, using, selling, and offering to sell cast titanium

compressor wheels created by methods covered by one or more claims of the ‘556 patent.

Cummins intended to and did induce its foundries to infringe the patents by directing and

controlling the infringing steps and by, on information and belief, controlling the foundries’

use of the infringing manufacturing tool. Cummins further has been and is now inducing its

customers to use, sell, and offer to sell such cast titanium compressor wheels. Cummins

intended to and did induce its customers to infringe Plaintiffs’ patents by promoting the

products manufactured using infringing methods and instructing its customers on how to use

those products. Cummins has had actual knowledge of the ‘556 patent at least since

October 11, 2006, when BorgWarner sent a letter to the Managing Director of Cummins

Turbo Technologies Ltd. notifying him of the patents-in-suit, and on information and belief 

has had knowledge of the patents-in-suit before that time at least because of its active

participation in a small, competitive market. Thus, Cummins knew or should have known

of the ‘556 patent before the infringing acts occurred. Because of this knowledge of the

‘556 patent and Cummins’ familiarity with how its own products are manufactured and

used, Cummins knew or should have known that its actions caused the foundries’ and the

customers’ infringement, and thus Cummins at least acted with willful blindness in inducing

patent infringement.

19.  By way of example, without limitation, infringing products include

turbochargers containing a cast titanium compressor wheel, such as Cummins Turbocharger

part number 2838747 with frame size HE431VE.

20.  Cummins’ acts of infringement have injured and damaged Plaintiffs in an

amount to be proven at trial.

Page 6: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 6/11

6

21.  Cummins has and has had actual knowledge of the ‘556 patent, and

Cummins’ infringement has been and continues to be willful.

22.  Cummins’ infringement has caused irreparable injury to Plaintiffs and will

continue to cause irreparable injury to each of them unless Cummins is enjoined from

further infringement by this Court.

COUNT II(Infringement of U.S. Patent No. 6,663,347)

23.  Paragraphs 1 through 22 are incorporated herein by reference.

24.  BorgWarner is now, and has been since its issuance, the assignee and sole

owner of all right, title, and interest in United States Patent No. 6,663,347, entitled “Cast

Titanium Compressor Wheel” (“the ‘347 patent”), which was duly and legally issued on

December 16, 2003, and confirmed by ex parte reexamination certificate, which was dully

and legally issued on March 17, 2009. A true and correct copy of the ‘347 patent is attached

hereto as Exhibit B. A true and correct copy of the ex parte reexamination certification is

attached hereto as Exhibit C.

25.  BorgWarner Turbo Systems is exclusively licensed by BorgWarner under the

‘347 patent and has the right to assert the ‘347 patent in its own name.

26.  Cummins has been and is now directly infringing the ‘347 patent in this

District and elsewhere by importing, making, using, selling, and offering to sell, cast

titanium compressor wheels covered by one or more claims of the ‘347 patent and

turbochargers containing such compressor wheels.

27.  Cummins further has been and is now indirectly infringing the ‘347 patent in

this District and elsewhere by knowingly and specifically intending to contribute to and

induce infringement of the ‘347 patent. Cummins has been and is now inducing at least its

foundries to directly infringe by making, using, selling, and offering to sell cast titanium

compressor wheels covered by one or more claims of the ‘347 patent. Cummins intended to

and did induce its foundries to infringe the patents by directing and controlling the

Page 7: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 7/11

7

manufacturing steps used to make the infringing products and by, on information and belief,

controlling the foundries’ use of the manufacturing tool. Cummins further has been and is

now inducing its customers to use, sell, and offer to sell such cast titanium compressor

wheels. Cummins intended to and did induce its customers to infringe Plaintiffs’ patents by

promoting the infringing products and instructing its customers on how to use those

infringing products. Cummins has had actual knowledge of the ‘347 patent at least since

October 11, 2006, when BorgWarner sent a letter to the Managing Director of Cummins

Turbo Technologies Ltd. notifying him of the patents-in-suit, and on information and belief 

has had knowledge of the patents-in-suit before that time at least because of its active

participation in a small, competitive market. Thus, Cummins knew or should have known

of the ‘347 patent before the infringing acts occurred. Because of this knowledge of the

‘347 patent and Cummins’ familiarity with how its own products are manufactured and

used, Cummins knew or should have known that its actions caused the foundries’ and the

customers’ infringement, and thus Cummins at least acted with willful blindness in inducing

patent infringement.

28.  By way of example, without limitation, infringing products include

turbochargers containing a cast titanium compressor wheel, such as Cummins Turbocharger

part number 2838747 with frame size HE431VE.

29.  Cummins’ acts of infringement have injured and damaged Plaintiffs in an

amount to be proven at trial.

30.  Cummins has and has had actual knowledge of the ‘347 patent, and

Cummins’ infringement has been and continues to be willful.

31.  Cummins’ infringement has caused irreparable injury to Plaintiffs and will

continue to cause irreparable injury to each of them unless Cummins is enjoined from

further infringement by this Court.

Page 8: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 8/11

8

COUNT III(Infringement of U.S. Patent No. 6,904,949)

32.  Paragraphs 1 through 31 are incorporated herein by reference.

33. 

BorgWarner is now, and has been since its issuance, the assignee and sole

owner of all right, title, and interest in United States Patent No. 6,904,949, entitled “Method

of Making Turbocharger Including Cast Titanium Compressor Wheel” (“the ‘949 patent”),

which was duly and legally issued on June 14, 2005. A true and correct copy of the ‘949

patent is attached hereto as Exhibit D.

34.  BorgWarner Turbo Systems is exclusively licensed by BorgWarner under the

‘949 patent and has the right to assert the ‘949 patent in its own name.

35.  Cummins has been and is now directly infringing the ‘949 patent in this

District and elsewhere by importing, making, using, selling, and offering to sell

turbochargers created by methods covered by one or more claims of the ‘949 patent, and by

using such methods to at least test such turbochargers.

36.  Cummins further has been and is now directly infringing the ‘949 patent in

this District and elsewhere because it exercises direction and control over all steps of the

methods covered by one or more claims of the ‘949 patent. Cummins directs and controls

its foundries in performing certain steps in manufacturing cast titanium compressor wheels

contained in turbochargers covered by one or more claims of the ‘949 patent at least

because, on information and belief, the foundries are contractually obligated to Cummins to

perform the steps of such methods and further because, on information and belief, there is an

agency relationship between Cummins and the foundries.

37.  Cummins further has been and is now indirectly infringing the ‘949 patent in

this District and elsewhere by knowingly and specifically intending to contribute to and

induce infringement of the ‘949 patent. Cummins has been and is now inducing at least its

foundries to directly infringe by making, using, selling, and offering to sell cast titanium

compressor wheels for use in turbochargers created by methods covered by one or more

Page 9: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 9/11

9

claims of the ‘949 patent. Cummins intended to and did induce its foundries to infringe the

patents by directing and controlling the infringing steps and by, on information and belief,

controlling the foundries’ use of the infringing manufacturing tool. Cummins further has

been and is now inducing its customers to use, sell, and offer to sell turbochargers covered

by one or more claims of the ‘949 patent. Cummins intended to and did induce its

customers to infringe Plaintiffs’ patents by promoting the products manufactured using

infringing methods and instructing its customers on how to use those products. Cummins

has had actual knowledge of the ‘949 patent at least since October 11, 2006, when

BorgWarner sent a letter to the Managing Director of Cummins Turbo Technologies Ltd.

notifying him of the patents-in-suit, and on information and belief has had knowledge of the

patents-in-suit before that time at least because of its active participation in a small,

competitive market. Thus, Cummins knew or should have known of the ‘949 patent before

the infringing acts occurred. Because of this knowledge of the ‘949 patent and Cummins’

familiarity with how its products are manufactured and used, Cummins knew or should have

known that its actions caused the foundries’ and the customers’ infringement, and thus

Cummins at least acted with willful blindness in inducing patent infringement.

38.  By way of example, without limitation, infringing products include

turbochargers containing a cast titanium compressor wheel, such as Cummins Turbocharger

part number 2838747 with frame size HE431VE.

39.  Cummins’ acts of infringement have injured and damaged Plaintiffs in an

amount to be proven at trial.

40.  Cummins has and has had actual knowledge of the ‘949 patent, and

Cummins’ infringement has been and continues to be willful.

41.  Cummins’ infringement has caused irreparable injury to Plaintiffs and will

continue to cause irreparable injury to each of them unless Cummins is enjoined from

further infringement by this Court.

Page 10: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 10/11

Page 11: BorgWarner et. al. v. Cummins et. al

8/3/2019 BorgWarner et. al. v. Cummins et. al.

http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 11/11

11

OF COUNSEL:

FISH & RICHARDSON P.C.

David M. Barkan500 Arguello Street, Suite 500

Redwood City, CA 94063Telephone: 650-839-5070Facsimile: 650-839-5071Email: [email protected]

Joshua A. Griswold1717 Main Street, Suite 5000Dallas, TX 75201Telephone: 214-747-5070Facsimile: 214-747-2091Email: [email protected]

Ralph A. Phillips

1425 K Street, N.W., Suite 1100Washington, DC 20005Telephone: 202-783-5070Facsimile: 202-783-2331Email: [email protected] 

Attorneys for Plaintiffs BORGWARNER INC.and BORGWARNER TURBO SYSTEMS, INC