IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF OKLAHOMA, lL CDC LARUE INDUSTRIES, INC. and ) 2. CHRISTY, INC., ) both Oklahoma corporations, ) ) Plaintiffs, ) Case No. : 2 M-CV-2le-cVie “FHA ) 3. DEWALT INDUSTRIAL TOOL CO. and) 4. BLACK & DECKER CORPORATION, ) ‘both Maryland corporations, ) ) Defendants, ) COMPLAINT Plaintiffs CDC Larue Industries, Inc. (“CDC”) and Christy, Inc., through their undersigned counsel, hereby brings this Complaint against Defendants DeWalt Industrial Tool Company (“DeWalt”) and Black and Decker Corporation (“Black & Decker”). THE PARTIES 1, CDC is a corporation organized and existing under the laws of the State of Oklahoma with its principal place of business in Tulsa County, State of Oklahoma. 2. Christy, Ine. is a corporation organized and existing under the laws of the state of Oklahoma with its principal place of business in Tulsa County, State of Oklahoma. 3. Upon information and belies, DeWalt is a corporation existing under the laws of the state of Maryland with its principal place of business in Towson, Maryland. 4. Upon information and belief, Black & Decker is a corporation existing under the laws of the state of Maryland with its principal place of business in Towson,Maryland. JURISDICTION, VENUE AND JOINDER 5. This Court may exercise subject matter jurisdiction over the case-pursuant to 28 U.S.C. §§1331, 1332 and 1338 since one of the counts arises under the patent laws of the United States, 35 U.S.C. §271, and, for the remaining counts, there is complete diversity of citizenship and the claim at issue exceeds $75,000. 6. This Court has specific personal jurisdiction over DeWalt because the infringing acts conducted by DeWalt occurred in this State and District and are the same infringing acts which constitute the instant cause of action. This Court has general personal jurisdiction over DeWalt because DeWalt has regularly and systematically conducted business in this State and District and purposefully availed itself of the privilege of conducting business in this State and this District. 7 This Court has specific personal jurisdiction over Black & Decker because the acts constituting the causes of action in this action were conducted by Black & Decker in this State and District. This Court has general personal jurisdiction over Black & Decker because Black & Decker has regularly and systematically conducted business in this State and District and purposefully availed itself of the privilege of conducting business in this State and this District. 8. Venue is proper in this District under 28 U.S.C. §§1391 and 1400, 9. Defendants, DeWalt and Black & Decker, are related companies owned by the same parent company, Stanley Black and Decker, Inc.10. Because Defendants’ wrongdoing and Plaintiffs” right to relief as herein alleged arise out of the same series of transactions and occurrences relating to making, using, and selling the same infringing product, as well as Defendants using CDC’s confidential technical information to build the same infringing product, questions of fact common to Plaintiffs and Defendants will arise in the action. FACTUAL BACKGROUND 11. Plaintiffs incorporate by reference the allegations contained in each preceding paragraph as if fully set forth herein. 12, CDC was founded in 2003 by David McCutchen and is primarily engaged in the manufacture and sale of industrial vacuums, 13. On July 18, 2003, Mr. McCutchen filed a patent application titled, “Ambient Air Backflushed Filtered Vacuum” and on August 1, 2006, after a full and extensive examination, the United States Patent and Trademark office duly and legally issued United States Patent No. 7,082,640 (“the ‘640 Patent”), Upon issuance, the ‘640 Patent was immediately assigned to Christy, Inc. and licensed back to CDC. A copy of. the ‘640 Patent is attached as Exhibit A. 14. Prior to Mr. MeCutchen’s invention, industrial vacuums were inefficient in high-dust environments because the vacuum’s filters quickly became clogged with dust and dirt particles. The vacuum operator would too-often have to stop the vacuum, remove and shake-out the filters, re-install the filters, and resume operation. Not only was this time consuming, the procedure also caused proliferation of airborne dust particles,15, Realizing the inefficiency and negative health effects, Mr. McCutchen designed a revolutionary, cost effective, industrial vacuum which prevented dust particles from clogging the filters. Mr. MeCutchen’s design accomplishes this by periodically allowing a pulse of ambient air to “backflush” through the filters, thereby knocking-off dust and dirt particles from the filters. This “pulse” of ambient air acts as a split-second “hammer” which bangs the dust and dirt off the filter and occurs without interruption of service, thus allowing for more efficient and healthier operation, 16. CDC manufactures industrial vacuums at CDC’s Tulsa County facility under the tradename Pulse-Bac® and has marked its Pulse-Bac® machines with the ‘640 Patent number since its issuance. Attached as Exhibit B is an illustration of CDC’s Pulse-Bac® Model 550 vacuum. 17. In 2008, Black & Decker expressed interest in CDC’s Pulse-Bac® technology and began communicating with CDC about a possible business venture. On December 16, 2008, CDC and Black & Decker entered into an agreement titled, Mutual Confidential Relationship Agreement (“MCRA”). The MCRA barred the parties from publishing, disseminating, or using any confidential information learned from the other party. The MCRA is attached as Exhibit C. 18, Thereafter, Black & Decker’s engineers spent hundreds of hours communicating with CDC's engineers and at CDC’s manufacturing facility in Tulsa County to learn more about the engineering of CDC’s Pulse-Bac®. CDC, Christy, Inc. and Black & Decker negotiated licensing terms for Black & Decker’s use of the patented technology, however, no licensing agreement was reached and the parties ceasednegotiating. 19. Not long after, DeWalt, a related company to Black & Decker and under common ownership, introduced a dust extractor that inftinges the “640 Patent and which possesses confidential information disclosed to Black & Decker. COUNTI (Patent Infringement) 20. Plaintiffs incorporate by reference the allegations contained in all preceding paragraphs as if fully set forth herein. 21. DeWalt has infringed and continues to infringe one or more of the claims of the °640 Patent pursuant to 35 U.S.C. §271, by making, using, selling, and/or offering to sell an industrial vacuum called DeWalt 10-Gal Dust Extractor with Automatic Filter Clean - Model #DWV012. 22. Upon information and belief, DeWalt has been on notice of the “640 Patent and has continued to make, use, and sell products that infringe the ‘640 Patent, thus, DeWalt’s infringement has been willful. COUNT I (Breach of Contract) 23. Plaintiffs incorporate by reference the allegations contained in all preceding paragraphs as if fully set forth herein. 24. ‘The MCRA constituted an enforceable agreement between Black & Decker and CDC,28. The MCRA, inter alia, prevented Black & Decker from using, publishing, or disclosing confidential information leamed by Black & Decker from CDC. 26. CDC fully performed its obligations under the MCRA. 27. Black & Decker materially breached the terms and conditions of the MCRA by using CDC’s confidential information for its own and DeWalt’s use. 28. CDC has suffered damages through Black & Decker’s breach of the MCRA, COUNT UL (Violation of the Oklahoma Uniform Trade Secrets Act) 29. Plaintiff's incorporate by reference the allegations contained in all of the preceding paragraphs as if fully set forth herein, 30. CDC was in possession of certain trade secrets relating to the design and production of its industrial vacuums, Such trade secrets derive intrinsic and independent economic value by virtue of not being readily ascertainable by others, through proper means, who can obtain economic value from possession or use of those trade secrets. 31. CDC maintained and continues to maintain efforts to protect the secrecy of said trade secrets, 32. By way of the MCRA, Defendants gained access to said trade secrets, possessed by CDC, with knowledge that said information was confidential in nature. 33, At the time Black & Decker acquired said trade secrets, Black & Decker was aware of its requirement to maintain the secrecy and use of those trade secrets.34. Black & Decker appropriated said trade secrets for its own pecuniary interests in the formation, creation, development, and/or design of industrial vacuum, cleaners. 35. Upon information and belief, DeWalt leamed of said trade secrets from Black & Decker and appropriated said trade secrets for its own pecuniary interests in the formation, creation, development, design, marketing, production, and distribution of industrial vacuum cleaners. 36. CDC suffered damages as a result of Defendants’ misappropriation of CDC’s trade secrets. COUNT IV (Lortious Breach of Contract) 37. Plaintiff’ incorporate by reference the allegations contained in all of the preceding paragraphs as if fully set forth herein, 38. Inusing the trade secrets and/or confidential information acquired from CDC for their own purposes, Black & Decker willfully violated the terms and conditions of the MCRA. 39. In distributing said trade secrets and/or confidential information to DeWalt, Black é& Decker willfully violated the terms and conditions of the MCRA, 40. Due to the willful breach of the contract conditions of the MCRA, CDC suffered damages.COUNT V (Conspiracy) 41. Plaintiffs incorporate by reference the allegations contained in all of the proceeding paragraphs as if fully set forth herein. 42, Defendants Black & Decker and DeWalt engaged in a common plan to appropriate valuable confidential information and trade secrets from CDC under the terms of the MCRA, 43. In said common plan, Black & Decker and DeWalt conspired to. disseminate and use the confidential information and trade secrets, acquired under the MCRA, in a willful and tortious violation of the Uniform Trade Secrets Act. 44. In said common plan, Black & Decker and DeWalt conspired to disseminate and use the confidential information and trade secrets, acquired under the MCRA, in a willful and tortious breach of the MCRA. 45. Due to the collusion to commit tortious wrongs between Black & Decker and DeWalt, CDC suffered damages. COUNT VI (Unjust Enrichment) 46. Plaintiffs incorporate by reference the allegations contained in all of the preceding paragraphs as if fully set forth herein. 47. By cooperating and sharing confidential information with Black & Decker and that information being transferred to DeWalt, a benefit was conferred upon the Defendants by CDC.48. Defendants had an appreciation of the benefits conferred upon them by cbc. 49. As a direct result of Defendants’ misconduct, Plaintiffs suffered damages. 50. Defendants have failed to compensate CDC for the benefits conferred upon them by CDC. 51. Under these circumstances, for Defendants to accept the benefits conferred upon them without adequate compensation for its value to Plaintiffs would be inequitable. WHEREFORE, CDC Larue Inc, and Christy, Inc. pray that a judgment be entered in their favor and against DeWalt, Inc. and Stanley Black & Decker, Inc. as follows: a. DeWalt and Black & Decker be found to infringe United States Patent No. 7,082,640; b, CDC and Christy, Inc.be awarded damages pursuant to 35 U.S.C. §284; c. DeWalt and Black & Decker’s infringement be found to be willful and damages be trebled pursuant to 35 U.S.C. §284; d. Black & Decker and DeWalt be found to have misappropriated CDC’s trade secrets; e. CDC be awarded damages, in an amount equal to Black & Decker and DeWalt’s gross profits, due to the trade secret misappropriation; f. CDC be awarded punitive damages due to Black & Decker’s trade secret misappropriation; g. Black & Decker be found to have breached the nondisclosure agreement and that such breach be found to be tortious; h, CDC be awarded compensatory damages for Black & Decker’s breach of agreement and punitive damages due to Black & Decker’s tortious breach of agreement;i, Black & Decker and DeWalt be found to have been unjustly enriched and that CDC be compensated for the benefits conferred upon Black & Decker and DeWalt; J. Christy, Inc.be awarded prejudgment interest; k. CDC Larue Ine, and Christy, Inc.be awarded its attorney fees pursuant to 35 U.S.C. §285; and l. Any further and just relief the Court deems equitable and appropriate. JURY DEMAND Plaintiff hereby requests a trial by jury on all triable issues. Dated May 8, 2014 Respectfull; Ronald E. Durbin, Il Bar # DURBIN LAW FIRM, PLLC 1502 S Denver Ave. Tulsa, OK 74119 Telephone: (918) 712-7400 durbinlawfirm@gmail.com ) Mark M. Grossman (admission pending ) Nicholas J.R. Spear (admission pending) Kyle D. Wallenberg (admission pending) GROSSMAN LAW OFFICES, P.C. 309 W. Washington St., Suite 700 Chicago, Illinois. 60606 Telephone (312) 621-9000 mgrossman@grossmanlegal.com nspear@grossmanlegal.com kwallenberg@grossmanlegal.com ATTORNEYS FOR PLAINTIFFS CDC LARUE INC, AND CHRISTY, INC.