UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA DONALDSON COMPANY, INC., Plaintiff, v. BALDWIN FILTERS, INC. Defendant.

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Civil Action No. 13-cv-3095

COMPLAINT FOR REVIEW OF PATENT INTERFERENCE DECISION Plaintiff Donaldson Company, Inc. (“Donaldson”) for its Complaint against defendant Baldwin Filters, Inc. (“Baldwin”) states and alleges as follows: THE PARTIES 1. Plaintiff Donaldson is a corporation organized and existing under the laws of the

state of Delaware, with its principal place of business as 1400 West 94th Street, Bloomington, Minnesota 55431. 2. Defendant Baldwin is a corporation organized and existing under the laws of the

state of Delaware, with its principal place of business at 400 E. Highway 30, Kearney, Nebraska 68847. JURISDICTION, VENUE, AND TIMELINESS 3. The Court has subject matter jurisdiction over this action under 35 U.S.C. § 146

and 28 U.S.C. §§ 1331 and 1338(a). 4. 5. Venue is proper in this Court under 28 U.S.C. §§ 1391(b) and (c). This Court has personal jurisdiction over Baldwin under Minn. Stat. § 543.19

because, on information and belief, Baldwin transacts business within the state of Minnesota and

because this action arises out of and/or relates to Baldwin’s business activities in Minnesota. In addition, Baldwin has conducted business in Minnesota and has engaged in systematic and continuous contacts within Minnesota. 6. This action under 35 U.S.C. § 146 is timely. On September 13, 2013, the Patent

and Trial Appeal Board issued a Decision on Rehearing in response to a timely Request for Rehearing filed by Donaldson. 37 C.F.R. § 1.304(a)(1) requires that the time for commencing a civil action shall expire two months after action on a request for rehearing or reconsideration of a decision of the Board of Patent Appeals and Interferences. This action, filed on or before November 13, 2013, is timely. NATURE OF ACTION 7. This is an action under 35 U.S.C. § 146 to review decisions of the Board of Patent

Appeals and Interferences, now known as the Patent and Trial Appeal Board (“Board”), of the United States Patent and Trademark Office (“PTO”) in Interference No. 105,799 (“the ’799 interference”). PROCEDURAL BACKGROUND 8. April 6, 2011. 9. The ’799 interference concerned U.S. Patent Application Serial No. 12/321,127 This action arises from the ’799 interference, which was declared by the PTO on

(“the ’127 application”) to Kevin Schrage, Troy Murphy and Donald Raymond Mork, and U.S. Patent No. 7,318,851 (“the ’851 patent”) to Gene Brown and Steven Merritt. 10. Kevin Schrage, Troy Murphy and Donald Raymond Mork assigned their interest

in the ’127 application to Donaldson, and the assignment is recorded at the PTO at Reel 016472, Frame 0962.

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11.

Gene Brown and Steven Merritt assigned their interest in the ’851 patent to

Baldwin, and the assignment is recorded at the PTO at Reel 016234, Frame 0725. 12. The ’127 application was filed on January 14, 2009, and claims priority to U.S.

Application No. 12/215,725 (“the ’725 application”), filed on June 30, 2008. The ’725 application claims priority to U.S. Patent Application No. 11/019,883 (“the ’883 application”), filed on December 21, 2004. The ’883 application claims priority to U.S. Provisional Patent Application No. 60/532,783 (“the ’783 application”), filed on December 22, 2003. 13. The ’851 patent issued from U.S. Patent Application No. 10/979,876 (“the ’876

application”), filed on November 2, 2004. 14. On April 6, 2011, the Board declared the ’799 interference naming the first

inventor of the ’127 application, Schrage, as the Senior Party (“Senior Party Donaldson”) and named the inventor of the ’851 patent, Brown, as the Junior Party (“Junior Party Baldwin”). In the Declaration of Interference, the Board identified a single Count comprising claim 1 of the ‘127 application or claim 1 of the ’851 patent (“Count 1”). Claims 1-66 of the ’127 application (“Donaldson’s involved claims”) and claims 1-46 of the ’851 patent (“Baldwin’s involved claims”) were designated as corresponding to Count 1. 15. On June 9, 2011, Senior Party Donaldson filed its list of proposed motions.

Donaldson requested authorization to file the following motions: (1) motion that the involved claims of Junior Party Baldwin are unpatentable under 35 U.S.C. § 102(e)(1) and (2) and/or § 103(a); (2) motion that claims 1-5, 7, and 9-20 of Junior Party Baldwin are unpatentable under 35 U.S.C. § 102(a) and/or (b) and/or § 103(a); motion that, in the event the second motion was not granted, to redefine the interference by adding two additional counts; and (4) motion that

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Senior Party Donaldson was entitled to priority. Donaldson also requested filing any responsive motion necessitated by Baldwin’s substantive motions. 16. On June 9, 2011, Junior Party Baldwin filed its list of proposed motions. Baldwin

requested authorization to file the following motions: (1) motion under 35 U.S.C. § 115 and 37 C.F.R. § 1.67(b) for judgment against all of Donaldson’s claims; (2) motion under 35 U.S.C. § 112, second paragraph, regards test; (3) motion under 35 U.S.C. § 112, first paragraph; (4) motion under 35 U.S.C. § 112, second paragraph, indefiniteness; (5) contingent motion for judgment of obviousness and/or anticipation of Donaldson claims 1-19, 28-50, and 59-66 based on 35 U.S.C. § 102(b) prior art; (6) contingent motion for judgment of obviousness of Donaldson claims 1-66 and Baldwin claims 21-46 based on 35 U.S.C. § 102(b) prior art; (7) contingent motion to de-designate Baldwin claims 3 and 11-20; (8) contingent motion to de-designate and redefine seventeen patentably distinct Baldwin inventions; (9) motion for discovery regarding inventorship, oath, regards test, and written description; admissions and interrogatories; (10) contingent motion for discovery regarding motions 1-3 and compelling production and depositions; (11) motions for admissions, interrogatories, and production relating to things; (12) contingent motion for the right to subpoena a third party; (13) motion to enter a certificate of correction; (14) motion to deny Donaldson benefit of the respective filing dates of its priority applications relating to the count or any count; and (15) contingent motion for priority. 17. On June 17, 2011, Administrative Patent Judge Lane (“APJ Lane”) issued an

Order that authorized Baldwin to file its third, fourth, fifth, sixth, seventh, and fourteenth requested motions. The APJ Lane did not authorize Baldwin to file its first, second, ninth, and tenth requested motions. APJ Lane authorized Donaldson to file its first requested motion, but deferred the first requested motion until any priority phase of the interference. APJ Lane

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authorized Donaldson to file its second requested motion. No other motions were authorized. The Order additionally identified time periods associated with the motions. 18. On July 6, 2011, Baldwin filed Brown Motion 1 (“Baldwin Motion 1”),

requesting limited discovery. 19. On July 7, 2011, Baldwin filed Brown Motion 2. On October 6, 2011, Baldwin

filed Brown Substitute Substantive Motion 2 (“Baldwin Motion 2”), requesting judgment under 35 U.S.C. § 112, first paragraph. 20. On August 31, 2011, Baldwin filed Brown Motion 3 (“Baldwin Motion 3”),

requesting judgment under 35 U.S.C. § 112, second paragraph, for indefiniteness. 21. On August 31, 2011, Baldwin filed Brown Motion 4 (“Baldwin Motion 4”),

requesting judgment of obviousness and/or anticipation of Donaldson’s involved claims 1-66 and Baldwin’s involved claims 21-46 based on 35 U.S.C. § 102(b) prior art. 22. On August 31, 2011, Baldwin filed Brown Motion 5 (“Baldwin Motion 5”),

requesting denial of benefit of the respective filing dates of Donaldson’s priority applications to the ’127 application for Count 1. 23. On August 31, 2011, Baldwin filed Brown Motion 6 (“Baldwin Motion 6”),

requesting certain claims be de-designed as not corresponding to the count. 24. 25. 26. On November 1, 2011, Baldwin filed Brown Motion 7 for more pages. Baldwin filed Brown Motion 8 to exclude evidence. On April 18, 2012, Baldwin filed Brown Motion 9, asserting that Donaldson

claims are not patentable. 27. On April 23, 2012, Baldwin filed Brown Motion 10 for leave to bring a motion.

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28.

On August 31, 2011, Donaldson filed Schrage Substantive Motion 1 (“Donaldson

Motion 1”), requesting that claims 1-5, 7, and 9-20 of Junior Party Baldwin are unpatentable under 35 U.S.C. § 102(a) and/or (b) and/or § 103(a). 29. On December 13, 2011, Donaldson filed Schrage Motion 2 (“Donaldson Motion

2”) to exclude evidence. 30. On February 8, 2012, the Board issued an Invitation for input for comments on

the significance of paragraph 92 in the ’127 application in view of Figures 11-16 of the ’127 application. 31. On February 21, 2012, Baldwin filed comments in response to the Board’s

Invitation for input. 32. On February 24, 2012, Donaldson filed comments in response to the Board’s

Invitation for input. 33. On March 23, 2012, the Board issued its Decision on the motions. There was no

oral hearing prior to the Decision. The Decision ordered that (1) Baldwin Motion 2 under 35 U.S.C. § 112, first paragraph, was denied; (2) Baldwin Motion 5 to deny Donaldson benefit of the respective filing dates of its priority applications relating to the count was granted; and (3) Baldwin Motion 8 and Donaldson Motion 2 to exclude were dismissed as moot. As a consequence of the decision on Baldwin Motion 5, Donaldson was not entitled to an earlier constructive reduction to practice of Count 1, Donaldson was not entitled to an earlier constructive reduction to practice of claims 1, 4, or 6 of the ’851 patent, and the interference was redeclared. The Board ordered that all other motions were held in abeyance.

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34.

On March 23, 2012, the Board issued its First Redeclaration of the interference.

In its First Redeclaration, the Board identified Baldwin as the Senior Party and Donaldson as the Junior Party. The Board maintained its identification of the claims comprising Count 1. 35. 36. 37. On March 30, 2012, Baldwin filed a Request for Rehearing. On April 6, 2012, Donaldson filed a Request for Rehearing. On April 13, 2012, Administrative Patent Judge McKelvey (“APJ McKelvey”) set

a conference call for May 4, 2012, and provided a schedule for priority motions. 38. On May 4, 2012, a conference call was held between APJ McKelvey, Baldwin

attorneys, and Donaldson attorneys. During this conference call, Donaldson requested that the May 4, 2012 scheduling order include Donaldson’s motion that Baldwin’s involved claims are unpatentable under 35 U.S.C. § 102(e)(1) and (2) and/or § 103(a). APJ McKelvey asserted that he would want to see the priority evidence before authorizing Donaldson’s motion that Baldwin’s involved claims are unpatentable under 35 U.S.C. § 102(e)(1) and (2) and/or § 103(a). APJ McKelvey concluded that he would authorize the motion in a “clean-up” phase, if necessary. 39. On May 7, 2012, the Board ordered a Second Redeclaration of the interference.

In its Second Redeclaration, the Board substituted Count 2 for Count 1 and declared that Count 2 comprised claim 1 of the ’127 application or claim 1 of the ’851 patent (“Count 2”). Claims 13, 5, 37-39, and 41 of the ’127 application were designated as corresponding to Count 2. Claims 1-5, 7 and 9-20 of the ’851 patent were designated as corresponding to Count 2. The Board also identified a third Count and declared that it comprised Claim 6 of the ’127 application or claim 21 of the ’851 patent (“Count 3”). Claims 6-36 and 42-66 of the ’127 application were designated as corresponding to Count 3. Claims 21-46 of the ’851 patent were designated as

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corresponding to Count 3. The Board further identified a fourth Count and declared that it comprised claim 4 of the ’127 application or claim 6 of the ’851 patent (“Count 4”). Claims 4 and 40 of the ’127 application were designated as corresponding to Count 4. Claims 6 and 8 of the ’851 patent were designated as corresponding to Count 4. The Board also authorized Donaldson and Baldwin to file their Priority Motions that were previously requested. 40. The Board’s May 7, 2012 Second Redeclaration was silent as to Donaldson’s

motion that Baldwin’s involved claims are unpatentable under 35 U.S.C. § 102(e)(1) and (2) and/or § 103(a). 41. On July 9, 2012, Donaldson filed Schrage Motion 11 for Priority and Schrage

Motion 12 for Priority (“Donaldson Motions 11 and 12”) with regard to the new counts. Donaldson Motion 11 was filed in regard to new Count 2 and Donaldson Motion 12 was filed in regard to new Counts 3 and 4. 42. On August 16, 2012, Baldwin filed Brown Motion 11 for Priority (“Baldwin

Motion 11”) with regard to the new Counts 2-4. 43. On January 16, 2013, Baldwin filed Brown Motion 12 (“Baldwin Motion 12”) to

exclude evidence. 44. On January 16, 2013, Donaldson filed Schrage Motion 13 (“Donaldson Motion

13”) to exclude evidence. 45. 46. On January 16, 2013, Baldwin filed a list of issues to be considered. On January 16, 2013, Donaldson filed a list of issues to be considered, and on

January 25, 2013 filed a corrected list of issues to be considered. The list of issues included Donaldson’s proposed motion for judgment that Baldwin’s involved claims are unpatentable under 35 U.S.C. § 102(e) and/or 35 U.S.C. § 103(a).

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47.

On July 11, 2013, after holding an Oral Hearing on May 9, 2013, the Board

rendered its Decision on motions. The Board ordered that (1) Donaldson Motion 11 for Priority with regard to Count 2 was denied; (2) Donaldson Motion 12 for Priority with regard to Counts 3 and 4 was denied; (3) Baldwin Motion 11 for Priority with regard to Counts 2, 3 and 4 was dismissed; (4) Donaldson Motion 1 for judgment that Brown claims 1-5, 7, and 9-20 were unpatentable under 35 U.S.C. § 102 and § 103 was denied; (5) Donaldson Request for Rehearing of the Decision on Motions (granting Baldwin Motion 5) was denied; (6) Baldwin Motion 3 for judgment that Donaldson claims are indefinite under 35 U.S.C § 112, second paragraph, was dismissed; (7) Baldwin’s Contingent Motion 4 for judgment that Donaldson claims are unpatentable under 35 U.S.C. § 102 and § 103 was dismissed; (8) Baldwin Motion 6 seeking to designate certain Baldwin claims as not corresponding to Count 1 was dismissed; (9) Baldwin Request for Rehearing of the Decision on Motions (denying Baldwin Motion 2) was dismissed; (10) Donaldson Motions 2 and 13 to exclude evidence were dismissed; and (11) Baldwin Motions 8 and 12 to exclude evidence was dismissed. 48. On July 11, 2013, the Board issued a Judgment against Donaldson. In its

Judgment, the Board ordered that: (1) Donaldson’s involved claims 1-3, 5, 37-39, and 41 of the ’127 application (corresponding to Count 2) were finally refused; (2) Donaldson’s involved claims 6-36 and 42-66 of the ’127 application (corresponding to Count 3) were finally refused; (3) Donaldson’s involved claims 4 and 40 of the ’127 application (corresponding to Count 4) were finally refused; and (4) Donaldson was not entitled to a patent containing claims 1-66 as found in the ’127 application.

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49.

On July 23, 2013, Baldwin filed a Request for Rehearing of the Board’s July 11,

2013 Decision and Judgment. Baldwin based its request on the Board’s dismissal of Baldwin’s Request for Rehearing of the Decision on Motions denying Baldwin Motion 2. 50. On August 12, 2013, Donaldson filed a Request for Rehearing of the Board’s July

11, 2013 Decision and Judgment. Donaldson based this request on the Board having overlooked Donaldson’s proposed Motion for Judgment that Baldwin’s involved claims are unpatentable under 35 U.S.C. § 102(e) and/or § 103(a). 51. On September 13, 2013, the Board denied Baldwin’s Request for Rehearing of the

Board’s July 11, 2013 Decision and Judgment. 52. On September 13, 2013, the Board denied Donaldson’s Request for Rehearing of

the Board’s July 11, 2013 Decision and Judgment. PLAINTIFF’S DISSATISFACTION WITH THE BOARD’S DECISION 53. Donaldson is dissatisfied with the Board’s decisions and judgments in the ’799

interference that are unfavorable to Donaldson. 54. Donaldson is further dissatisfied with the portions of the Board’s March 23, 2012

Decision that are unfavorable to Donaldson. In particular, Donaldson is dissatisfied with at least the following portions of the Board’s March 23, 2012 Decision: a. Donaldson is dissatisfied with certain explicit and implied claim construction interpretations in the Board’s March 23, 2012 Decision. b. Donaldson is dissatisfied with the Board’s March 23, 2012 Decision granting Baldwin Motion 5, thereby denying Donaldson, for Count 1, the benefit of the respective filing dates of Donaldson’s priority applications to the ’127 application.

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c. Donaldson is dissatisfied with certain written description determinations as they pertain to priority in the Board’s March 23, 2012 Decision granting Baldwin Motion 5. d. Donaldson is dissatisfied with the Board’s March 23, 2012 Decision that Donaldson was not entitled to an earlier constructive reduction to practice of claims 1, 4, or 6 of the ’127 application. e. Donaldson is dissatisfied with the Board’s March 23, 2012 Decision to dismiss Donaldson Motion 2. f. Donaldson is further dissatisfied with the portions of the Board’s March 23, 2012 First Redeclaration of the Interference that are unfavorable to Donaldson. g. Donaldson is further dissatisfied with the Board’s March 23, 2012 First Redeclaration of the Interference identifying Baldwin as Senior Party and Donaldson as Junior Party for Count 1. 55. Donaldson is further dissatisfied with the portions of the Board’s May 7, 2012

Second Redeclaration of the Interference that are unfavorable to Donaldson. In particular, Donaldson is dissatisfied with at least the following portions of the Board’s May 7, 2012 Second Redeclaration: a. Donaldson is dissatisfied with the Board’s May 7, 2012 Second Redeclaration of the Interference identifying Baldwin as Senior Party and Donaldson as Junior Party for Counts 24. b. Donaldson is dissatisfied with the Board’s determination of Counts 2-4 in the Board’s May 7, 2012 Second Redeclaration of the Interference.

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c. Donaldson is dissatisfied with the Board’s denial of Donaldson’s request to bring a Motion for Judgment that Baldwin’s involved claims are unpatentable under 35 U.S.C. § 102(e) and/or § 103(a). 56. Donaldson is dissatisfied with the portions of the Board’s July 11, 2013 Decision

that are unfavorable to Donaldson. In particular, Donaldson is dissatisfied with at least the following portions of the Board’s July 11, 2013 Decision: a. Donaldson is dissatisfied with certain explicit and implied claim construction interpretations in the Board’s July 11, 2013 Decision. b. Donaldson is dissatisfied with the Board’s July 11, 2013 Decision denying Donaldson’s Motions 11 and 12 for priority. c. Donaldson is dissatisfied with the Board’s July 11, 2013 Decision denying Donaldson’s Request for Rehearing regarding the Decision on Motions dated March 23, 2012. d. Donaldson is further dissatisfied with the Board’s evaluation of Donaldson’s priority evidence. 57. Donaldson is further dissatisfied with portions of the Board’s September 13, 2013

Decision that are unfavorable to Donaldson. In particular, Donaldson is dissatisfied with at least the following portions of the Board’s September 13, 2013 Decision: a. Donaldson is dissatisfied with the Board’s September 13, 2013 Decision denying Donaldson’s Request for Rehearing regarding the Board’s July 11, 2013 Decision. b. Donaldson is dissatisfied with the Board’s September 13, 2013 Decision denying Donaldson’s request to bring a Motion for Judgment that Baldwin’s involved claims are unpatentable under 35 U.S.C. § 102(e) and/or § 103(a).

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c. Donaldson is dissatisfied with the Board’s September 13, 2013 Decision dismissing Baldwin Motion 4 that Baldwin’s involved claims 21-46 are unpatentable based on 35 U.S.C. § 102(b) prior art. PRAYER FOR RELIEF WHEREFORE, Plaintiff Donaldson respectfully requests that the Court enter judgment as follows: A. Reversing the sections of the Board’s September 13, 2013, July 11, 2013, May 7,

2012, and March 23, 2012 Decisions and Judgments that were unfavorable to Donaldson; B. C. D. E F. Determining that Baldwin’s involved claims are unpatentable; Determining that Donaldson’s involved claims are patentable; Requiring the PTO to take action consistent with this Court’s decision; Awarding Donaldson its costs and attorneys’ fees in this action; and Awarding such other and further relief as this Court may deem appropriate.

Dated: November 12, 2013 Respectfully submitted, s/Dennis R. Daley Dennis R. Daley (MN 242743) ddaley@merchantgould.com MERCHANT & GOULD P.C. 3200 IDS Center 80 South Eighth Street Minneapolis, Minnesota 55402-2215 Telephone: 612.332.5300

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