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8/3/2019 BorgWarner et. al. v. Cummins et. al.
http://slidepdf.com/reader/full/borgwarner-et-al-v-cummins-et-al 1/11
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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
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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.
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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,
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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
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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.
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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
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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.
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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
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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.
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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