1

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

ECKART GMBH, Plaintiff, v. SILBERLINE MANUFACTURING CO., INC., Defendant.

Civil Action No. JURY TRIAL DEMANDED Electronically filed

COMPLAINT AND DEMAND FOR JURY TRIAL

Plaintiff ECKART GmbH (hereafter, “ECKART”), by and through its undersigned

counsel, hereby files the following patent infringement complaint against Defendant Silberline

Manufacturing Co., Inc. (hereafter, “Silberline”), averring as follows:

THE PARTIES

1. ECKART is a Gesellschaft mit beschränkter Haftung (GmbH) organized and

existing under the laws of Germany having a place of business at Güntersthal 4, 91235 Hartenstein,

Germany. ECKART’s subsidiary, ECKART America Corporation, operates several locations in

the United States, including a location in Louisville, Kentucky and Painesville, Ohio.

2. ECKART traces its formation to 1876, and employs a world-wide work force of

approximately 1,800 people. ECKART develops, manufactures and sells metallic effect pigments

in powder, paste and pellet forms, metallic concentrates, dispersions and printing inks, as well as

pearlescent pigments. ECKART sells its products world-wide for use with a variety of

applications, including paints, coatings, graphic arts, plastics, lightweight concrete and cosmetics.

ECKART’s customers are located around the world, including within this District.

2

3. ECKART is the owner by assignment of all right, title, and interest in and to United

States Patent No. 7,172,812 (hereafter, “‘812 Patent”) entitled, “Effect Pigments Coated with

Reactive Orientation Aids.” The named inventors of the ‘812 Patent are Klaus Greiwe and Alfried

Kiehl. A true and correct copy of the ’812 Patent, which issued on February 6, 2007, is attached

hereto as Exhibit A.

4. Upon information and belief, Silberline is a corporation organized and existing

under the laws of the state of Indiana, having a place of business at 130 Lincoln Drive, P.O. Box

B, Tamaqua, Pennsylvania 18252.

5. Silberline advertises its products, including the SILBERCOTE® AQ line of

products via its website, www.silberline.com, which is accessible all over the United States,

including within this District.

JURISDICTION AND VENUE

6. ECKART brings this action for patent infringement under the patent laws of the

United States, Title 35 of the United States Code. This Court has jurisdiction pursuant to 28 U.S.C.

§§ 1331 and 1338.

7. Silberline advertises its infringing products in this District. On information and

belief, Silberline also regularly conducts business in this District, and has offered the infringing

products for sale in this District.

8. This Court has personal jurisdiction over Silberline because of Silberline’s

activities within this District.

9. Venue is proper pursuant to 28 U.S.C. §§ 1391 and 1400(b) because, inter alia,

Silberline is subject to personal jurisdiction in this District and harm is being felt in this District as

infringing products are being marketed to potential and existing customers of ECKART.

3

SUMMARY OF THE FACTS

10. The ’812 Patent was duly and legally granted by the United States Patent and

Trademark Office on February 6, 2007 and claims, inter alia, a surface modified flake-form metal

pigment for use in a paint or lacquer containing a binding agent, comprising an initial flake-form

pigment having on its surface a layer with at least one reactive organic solvent based surface-

modifying agent, wherein the surface-modifying agent is a compound having at least two terminal

functional groups which are different from each other and which are spaced by a spacer, wherein

at least one terminal functional group is chemically bound to the surface of the initial pigment and

at least one other terminal functional group is chemically reactive with the binding agent, and

wherein the metal pigment is of a particle size between about 1 and about 200 µm, is easily wetted

by a binding agent or solvent of a paint or lacquer, is capable of being oriented in a liquid film of

the paint or lacquer and is capable of forming an intimate chemical bond with the binding agent of

said paint or lacquer upon baking or hardening of said paint or lacquer.

11. As described in the ’812 Patent, the inventive combination of a flake-form metal

pigment and surface-modifying agent creates a metal pigment that is easily wetted and exhibits

markedly improved orientation within the paint or lacquer matrix. The inventive metal pigment

also overcomes water diffusion and condensation issues that plagued other effect pigments that

existed at the time. Several examples are included near the end of the ’812 Patent to further

illustrate the invention.

12. Upon information and belief, Silberline has and continues to make, use, sell, and

offer for sale within the United States, and import into the United States, a series of aluminum

pigment products under the name SILBERCOTE® AQ (“Accused Products”). The

SILBERCOTE® AQ Star product line includes aluminum flake pigments for use in a paint or

4

lacquer that include on the surfaces thereof silicon dioxide having an aminoalkylalkoxysilane

bound to the surface thereof, and thus infringes one or more claims of the ‘812 Patent.

COUNT I: INFRINGEMENT OF THE ’812 PATENT

13. ECKART repeats and re-alleges each and every averment contained in paragraphs

1-12 hereof by reference as if fully set forth herein.

14. ECKART owns all right, title and interest in the ‘812 Patent.

15. The ‘812 Patent is a valid and enforceable U.S. Patent.

16. By making, using, selling, and/or offering for sale in the United States, and/or

importing into the United States the Accused Products, Silberline has infringed and is continuing

to infringe at least one claim of the ’812 Patent in violation of 35 U.S.C. § 271. Such infringement

has caused and is causing ongoing harm to ECKART.

17. Upon information and belief, Silberline has been and is still directly infringing, as

defined by 35 U.S.C. § 271, at least one claim of the ’812 Patent by making, using, selling, offering

to sell, and/or importing its Accused Products and will continue to do so unless enjoined by this

Court. By reason of the ongoing and continuous infringement by Defendant of the ’812 Patent,

ECKART is entitled to an entry of an injunction against Silberline, preventing further infringement

of ECKART’s patent rights, pursuant to 35 U.S.C. § 283.

WHEREFORE, ECKART respectfully requests judgment be entered against Silberline as

follows:

(a) Entering judgment that Silberline, by reason of the making, using, selling, and

offering for sale in the United States, and the importing into the United States, of the Accused

Products, infringed and is infringing the ’812 Patent in violation of 35 U.S.C. § 271;

5

(b) Awarding ECKART damages to the full extent permitted by 35 U.S.C. § 284,

including interest, by reason of Silberline’s infringement of the ’812 Patent;

(c) Entering a permanent injunction against Silberline, barring and enjoining further

making, using, selling, and offering for sale in the United States, and importation into the United

States, of all infringing products until the expiration date of the patent; and

(d) Awarding ECKART costs, disbursements and fees under 35 U.S.C. § 285, and all

other relief as this Court deems proper.

JURY DEMAND

Pursuant to Federal Rule of Civil Procedure 38(b), ECKART hereby demands a trial by

jury on all issues triable of right by a jury.

Respectfully submitted, Dated: August 8, 2014 /s/ Cecilia R. Dickson Kent E. Baldauf, Jr. (PA I.D. No. 70793) kbaldaufjr@webblaw.com Cecilia R. Dickson (PA I.D. No. 89348) cdickson@webblaw.com The Webb Law Firm One Gateway Center 420 Fort Duquesne Blvd., Suite 1200 Pittsburgh, PA 15222 (412) 471-8815 Counsel for Plaintiff ECKART GmbH