Kaneka Corporation v. SKC Kolon PI, Inc. et al

Filing 1

COMPLAINT Complaint against SKC Kolon PI, Inc., SKC, Inc. ( Filing fee $ 350 receipt number 0540-2589979.), filed by Kaneka Corporation. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit)(Chan, Alfonso) [Transferred from Texas Eastern on 4/21/2011.]

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT COURT OF TEXAS
BEAUMONT DIVISION

KANEKA CORPORATION, a Japanese
Corporation
Plaintiffs,

CIVIL ACTION No. 1:10-cv-430

v.
SKC KOLON PI, INC., a Korean Corporation
and SKC, INC., a Georgia Corporation
JURY TRIAL DEMANDED
Defendants.

COMPLAINT

Plaintiff Kaneka Corporation ("Kaneka") for its Complaint against SKC Kolon PI, Inc.
("SKPI") and SKC, Inc. ("SKC") (collectively "Defendants") states as follows:
PARTIES
1.

Kaneka is a Japanese corporation with its principal place of business at 3-2-4,

Nakanoshima, Kita-ku, Osaka 530-8288, Japan.
2.

SKPI is a Korean corporation with its principal place of business at 9th Fl. Daego

Building, 1591-10, Gwangyang-dong, Dongan-gu, Anyang-si, Gyeonggi-do, 431-060 - South
Korea.
3.

Upon information and belief, SKC is a corporation organized under the laws of

the state of Georgia with its principal place of business at 1 SKC Dr., Covington, GA 30014.
Service of process on SKC may be made by serving the Texas Secretary of State pursuant to
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Texas law. SKC may also be served with process by serving its registered agent, C T
Corporation System, 1201 Peachtree Street N E, Atlanta, GA 30361.
4.

Upon information and belief, SKPI is the affiliate of SKC.
JURISDICTION AND VENUE

5.

This Complaint states claims arising under the patent laws of the United States, 35

U.S.C. § 271, for infringement of Kaneka's patents.
6.

Original and exclusive subject matter jurisdiction of this action is conferred upon

this Court pursuant to 28 U.S.C. §§ 1331 and 1338(a).
7.

Defendants are each subject to personal jurisdiction in this Court. Upon

information and belief, Defendants routinely advertise, market, export, and sell significant
portions of their products through and in the State of Texas, including this Judicial District.
8.

Venue is proper in this Court under 28 U.S.C. §§ 1391(b)-(d) and 1400(b). Upon

information and belief, each of the Defendants sell and offer for sale its products to retailers,
distributors, and residents throughout the States of Texas and in this Judicial District.
DEFENDANTS' INFRINGING ACTS
9.

Kaneka is the current assignee of United States Patent Nos. 7,018,704 ("the '704

Patent"), 7,691,961 ("the '961 Patent"), 5,075,064 ("the '064 Patent"), 6,264,866 ("the '866
Patent"), and 6,746,639 ("the '639 Patent") (collectively, the "Asserted Patents").
10.

Kaneka has been assigned the rights to the Asserted Patents. Accordingly, Kaneka

holds all rights, title and interest in the Asserted Patents and has done so throughout the period of
the defendant’s infringing acts.
11.

The '704 Patent is valid and enforceable.

12.

The '960 Patent is valid and enforceable.

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13.

The '064 Patent is valid and enforceable.

14.

The '866 Patent is valid and enforceable.

15.

The '639 Patent is valid and enforceable.

16.

The Asserted Patents include claims covering polyimide films and

methods/processes for producing polyimide films.
17.

Defendants make, use, sell, offer for sale and/or import polyimide films in the

United States.
18.

For example, prior to February 2010, certain companies within the U.S. who are

customers of Kaneka Texas Corporation ("KTC") purchased polyimide films directly from SKC
in the United States. These products were subsequently provided to Kaneka through KTC.
19.

KTC is a wholly owned subsidiary of Kaneka. KTC manufactures polyimide

films at its plant located at 6161 Underwood Road, Pasadena, TX, 77507. KTC's marketing
offices are located at 2 Northpoint Dr., Suite 200, Houston, TX 77060.
20.

In addition to the samples provided to KTC from its customers, Kaneka has

obtained other samples of Defendants' polyimide films that are made, used, sold, offered for sale
and/or imported in the United States.
21.

Kaneka has performed laboratory tests on Defendants' polyimide films that are

made, used, sold, offered for sale and/or imported in the United States.
22.

Laboratory tests on Defendants' polyimide films have been performed at Kaneka's

facilities in Japan.
23.

These tested polyimide products, include, but are not limited to, product types

identified by Defendants as IN, IF, LV and LN polyimide films.

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24.

Kaneka's testing of Defendants' products confirm that Defendants' products fall

within the scope of the claimed inventions embodied in the Asserted Patents.
COUNT I - INFRINGEMENT OF U.S. PATENT NO. 7,018,704
25.

Kaneka realleges and hereby incorporates by reference the preceding paragraphs

as though fully set forth herein.
26.

On March 28, 2006, the '704 Patent issued for an invention entitled "Polymide

Film for Flexible Printed Board and Flexible Printed Board Using the Same." A true and correct
copy of the '704 Patent is attached hereto as Exhibit A.
27.

Defendants have directly infringed, contributorily infringed, and/or actively

induced infringement of the '704 Patent by making, using, selling, offering to sell, and/or by
importing into the United States products that practice one or more claims of the '704 Patent,
including but not limited to Defendants’ IN, IF, LV and LN polyimide films.
28.

Defendants' infringement of the '704 Patent is without the consent of, authority of,

or license from Kaneka.
29.

On information and belief, Defendants' infringement of the '704 Patent has been

and continues to be deliberate and willful and such infringement will continue unless Defendants
are preliminarily and permanently enjoined by this Court.
30.

As a consequence of Defendants' infringement complained of herein, Kaneka has

been damaged and will continue to sustain damages by such acts in an amount to be determined
at trial and will continue to suffer irreparable loss and injury.
COUNT II - INFRINGEMENT OF U.S. PATENT NO. 7,691,961
31.

Kaneka realleges and hereby incorporates by reference the preceding paragraphs

as though fully set forth herein.

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32.

On April 6, 2010, the '961 Patent issued for an invention entitled "Polymide Film

and Use Thereof." A true and correct copy of the '961 Patent is attached hereto as Exhibit B.
33.

Defendants have directly infringed, contributorily infringed, and/or actively

induced infringement of the '961 Patent by making, using, selling, offering to sell, and/or by
importing into the United States products that practice one or more claims of the '961 Patent,
including but not limited to Defendants’ IN, IF, LV and LN polyimide films.
34.

Defendants' infringement of the '961 Patent is without the consent of, authority of,

or license from Kaneka.
35.

On information and belief, Defendants' infringement of the '961 Patent has been

and continues to be deliberate and willful and such infringement will continue unless Defendants
are preliminarily and permanently enjoined by this Court.
36.

As a consequence of Defendants' infringement complained of herein, Kaneka has

been damaged and will continue to sustain damages by such acts in an amount to be determined
at trial and will continue to suffer irreparable loss and injury.
COUNT III - INFRINGEMENT OF U.S. PATENT NO. 5,075,064
37.

Kaneka realleges and hereby incorporates by reference the preceding paragraphs

as though fully set forth herein.
38.

On December 24, 1991, the '064 Patent issued for an invention entitled "Method

and Apparatus for Continuously Producing Resin Films and Installation Therefor." A true and
correct copy of the '064 Patent is attached hereto as Exhibit C.
39.

Defendants have directly infringed, contributorily infringed, and/or actively

induced infringement of the '064 Patent by making, using, selling, offering to sell, and/or by

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importing into the United States products that practice one or more claims of the '064 Patent,
including but not limited to Defendants’ IN, IF, LV and LN polyimide films.
40.

Defendants' infringement of the '064 Patent is without the consent of, authority of,

or license from Kaneka.
41.

As a consequence of Defendants' infringement complained of herein, Kaneka has

been damaged by such acts in an amount to be determined at trial and will continue to suffer
irreparable loss and injury.
COUNT IV - INFRINGEMENT OF U.S. PATENT NO. 6,264,866
42.

Kaneka realleges and hereby incorporates by reference the preceding paragraphs

as though fully set forth herein.
43.

On July 24, 2001, the '866 Patent issued for an invention entitled "Method for

Producing Polyimide Film." A true and correct copy of the '866 Patent is attached hereto as
Exhibit D.
44.

Defendants have directly infringed, contributorily infringed, and/or actively

induced infringement of the '866 Patent by making, using, selling, offering to sell, and/or by
importing into the United States products that practice one or more claims of the '866 Patent,
including but not limited to Defendants’ IN, IF, LV and LN polyimide films.
45.

Defendants' infringement of the '866 Patent is without the consent of, authority of,

or license from Kaneka.
46.

On information and belief, Defendants' infringement of the '866 Patent has been

and continues to be deliberate and willful and such infringement will continue unless Defendants
are preliminarily and permanently enjoined by this Court.

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47.

As a consequence of Defendants' infringement complained of herein, Kaneka has

been damaged and will continue to sustain damages by such acts in an amount to be determined
at trial and will continue to suffer irreparable loss and injury.
COUNT V - INFRINGEMENT OF U.S. PATENT NO. 6,746,639
48.

Kaneka realleges and hereby incorporates by reference the preceding paragraphs

as though fully set forth herein.
49.

On June 8, 2004, the '639 Patent issued for an invention entitled "Process for

Preparing Polyimide Film." A true and correct copy of the '639 Patent is attached hereto as
Exhibit E.
50.

Defendants have directly infringed, contributorily infringed, and/or actively

induced infringement of the '639 Patent by making, using, selling, offering to sell, and/or by
importing into the United States products that practice one or more claims of the '639 Patent,
including but not limited to Defendants’ IN, IF, LV and LN polyimide films.
51.

Defendants' infringement of the '639 Patent is without the consent of, authority of,

or license from Kaneka.
52.

On information and belief, Defendants' infringement of the '639 Patent has been

and continues to be deliberate and willful and such infringement will continue unless Defendants
are preliminarily and permanently enjoined by this Court.
53.

As a consequence of Defendants' infringement complained of herein, Kaneka has

been damaged and will continue to sustain damages by such acts in an amount to be determined
at trial and will continue to suffer irreparable loss and injury.

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JURY DEMAND
Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Kaneka demands a trial by
jury on all issues so triable.
PRAYER FOR RELIEF
WHEREFORE, Kaneka prays for judgment from this Court as follows:
1.

Declare that the Asserted Patents are valid and enforceable;

2.

Declare that the Defendants have infringed the Asserted Patents;

3.

Declare that Defendants’ infringement was willful;

4.

Award damages to Plaintiff Kaneka to which it is entitled for patent infringement;

5.

Award damages to Plaintiff Kaneka to which it is entitled for its lost profits;

6.

Enter a preliminary and thereafter a permanent injunction against Defendants’

direct infringement of the Asserted Patents;
7.

Enter a preliminary and thereafter a permanent injunction against Defendants’

active inducement of infringement and/or contributory infringements of the Asserted Patents by
others;
8.

Award Plaintiff Kaneka its expenses, costs, and attorneys’ fees pursuant to 35

U.S.C. § 285;
9.

Award Plaintiff Kaneka increased damages in an amount not less than three times

the amount of damages found by the jury or assessed by this Court, for Defendants’ willful
infringement pursuant to 35 U.S.C. § 284;
10.

Award interest on Plaintiff Kaneka’s damages; and

11.

Such other and further relief as this Court deems equitable and just.

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Respectfully submitted this 26th day of July, 2010

SHORE CHAN BRAGALONE DEPUMPO LLP
By:

/s/ Alfonso Garcia Chan
Alfonso Garcia Chan, Lead Attorney
Texas State Bar No. 24012408
Christopher L. Evans
Texas State Bar No. 24058901
901 Main Street, Suite 3300
Dallas, Texas 75202
Telephone [phone]
Fax [phone]
[e-mail]
[e-mail]
-andADLI LAW GROUP, P.C.
Dariush G. Adli
California State Bar No. 204959
Rex Hwang
California State Bar No. 221079
Louise Lu
California State Bar No. 253114
ADLI LAW GROUP P.C.
633 West Fifth Street, Suite 2600
Los Angeles, California 90071
Tele: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

Attorneys for Plaintiff
Kaneka Corporation

COMPLAINT

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