IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF SOUTH CAROLINA COLUMBIA DIVISION Hengst of North America,

Inc., Plaintiff, vs. Champion Laboratories, Inc. and Fram Group Operations, LLC, Defendants. ) ) ) ) ) ) ) ) ) ) ) Civil Action No.

COMPLAINT

Jury Trial Requested

Plaintiff Hengst of North America, Inc., by and through its attorneys, hereby demands a jury trial and alleges, upon information and belief, in this Complaint against Defendants Champion Laboratories, Inc. and FRAM Group Operations, LLC, as follows: THE PARTIES 1. Plaintiff Hengst of North America, Inc. (hereinafter Hengst or Plaintiff) is a

corporation organized under the laws of the State of South Carolina having its principal offices at 29 Hengst Drive, Camden, South Carolina 29020. 2. Upon information and belief, Defendant Champion Laboratories, Inc. (hereinafter

Champion) is a corporation organized under the laws of the State of Delaware, having its principal place of business at 200 S. 4th Street, Albion, IL 62806-1313, and has appointed The Corporation Trust Company located at Corporation Trust Center, 1209 Orange Street, Wilmington Delaware, 19801, as registered agent authorized to accept service of process on behalf of Defendant Champion. 3. Upon information and belief, Defendant FRAM Group Operations, LLC

(hereinafter FRAM), is a corporation organized under the laws of the State of Delaware; and having a place of business at 1900 W. Field Court, Lake Forest, Connecticut, 60045-4828.

Upon information and belief, FRAM has appointed The Corporation Trust Company located at Corporation Trust Center, 1209 Orange St, Wilmington DE 19801, as registered agent authorized to accept service of process on behalf of Defendant FRAM. collectively referred to herein as Defendants. JURISDICTION AND VENUE 4. This is an action for patent infringement under the Patent Laws of the United Champion and FRAM are

States of America, 35 U.S.C. 101, et seq. 5. 1338. 6. Personal jurisdiction over the Defendants is invoked under the provisions of Subject matter jurisdiction of this Court is proper under 28 U.S.C. 1331 and

South Carolina Code 36-2-802, 36-2-803, and 36-2-805. Upon information and belief, each of the Defendants is subject to this Courts jurisdiction because each of the Defendants has, upon information and belief, transacted business in this District. Specifically, each Defendant either directly and/or through intermediaries, upon information and belief, ships, distributes, offers for sale, and/or sells products in this District. Each Defendant thus has, upon information and belief, minimum contacts with this District, has purposefully availed itself of the privilege of conducting business in this District, regularly conducts and solicits business within this District, and has committed in this District acts of patent infringement as described in this Complaint. 7. Venue for the present action properly lies in this District under 28 U.S.C.

1391(c) and 1400(b). THE PATENT-IN-SUIT 8. United States Patent No. 5,770,054 (hereinafter the 054 patent), entitled Fluid

Filter With Filter Bypass Valve And Sealing Surface On Filter Element Side was duly and legally issued on June 23, 1998 and thereafter reissued.
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9.

United States issued Reissue Patent No. US RE38,917 (hereinafter the RE 917

patent) (based upon the 054 patent), entitled Fluid Filter With Filter Bypass Valve And Sealing Surface On Filter Element Side was duly and legally re-issued on December 13, 2005. A true and correct copy of the RE 917 patent is attached hereto as Exhibit 1. 10. Plaintiff Hengst is the assignee and owner of the entire right, title and interest in

and to the RE 917 patent (hereinafter the patent-in-suit). 11. All appropriate maintenance fees for the patent-in-suit have been properly paid to

the United States Patent & Trademark Office (hereinafter the USPTO). BACKGROUND 12. Plaintiff develops, produces and distributes various products in the United States

in the automotive and industrial filtration field. 13. Plaintiffs products include filtration products. Plaintiff further manufactures

filtration products for third parties on an OEM basis. 14. Plaintiff sells and distributes filtration products in the United States that directly

compete with Defendants accused filtration products. 15. 16. The RE 917 patent is directed to, inter alia, such filtration products. At all times relevant hereto, Plaintiff has marked all or substantially all of its

filtration products covered by the RE 917 patent in accordance with 35 USC 287. 17. since 2006. 18. The parties have been negotiating a release and covenant not to sue under the RE Upon information and belief, Defendants have been aware of the RE 917 patent

917 patent since early 2012. 19. The negotiations have identified numerous of Defendants filtration products that

infringe the RE 917 patent, examples of which are identified in Exhibit 2.

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20. of this matter. 21.

The parties met face-to-face in November 2012 seeking to negotiate a resolution

The parties have continued to negotiate this matter unsuccessfully since then.

COUNT ONE INFRINGEMENT OF U.S. REISSUED PATENT NO. US RE38,917 E

22.

Plaintiff incorporates by reference the allegations of paragraphs 1 through 21

above, as if fully set forth herein.

Defendant Champion

23.

Defendant Champion has either literally infringed and/or contributorily infringed

and/or induced infringement of the RE 917 patent in violation of 35 U.S.C. 271, and is still doing so by having made, making, using, offering to sell, selling, and/or importing without authority its filtration products identified in Exhibit 2 in the United States and its territories, and such other filtration products as will be discovered during discovery, and will continue to do so unless enjoined by this Court. 24. Plaintiff has notified Defendant Champion that its filtration products identified in

Exhibit 2 infringe the RE 917 patent. 25. Despite such notification, Defendant Champion has refused to cease its infringing

activities, and continues to infringe the RE 917 patent. 26. Plaintiff has been and continues to be injured by Defendant Champions

infringement of the RE 917 patent because, among other reasons, Defendant Champions actions have resulted in the wrongful diversion of sales and profits from Plaintiff. 27. Defendant Champions acts of infringement of the RE 917 patent were done with

full knowledge of the RE 917 patent. Upon information and belief, Defendant Champion has
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deliberately, intentionally and willfully disregarded Plaintiffs patent rights. Thus, Defendant Champion has willfully infringed, and continues to willfully infringe, the RE 917 patent, making this an exceptional case within the meaning of 35 U.S.C. 285.

Defendant FRAM

28.

Defendant FRAM has either literally and/or contributorily infringed and/or

induced infringement of the RE 917 patent in violation of 35 U.S.C. 271, and is still doing so by making, having made, using, offering to sell, selling, and/or importing without authority its filtration products identified in Exhibit 2 in the United States and its territories, and such other filtration products as will be discovered during discovery, and will continue to do so unless enjoined by this Court. 29. Defendant FRAM has been notified that its filtration products identified in

Exhibit 2 infringe the RE 917 patent. 30. Despite such notification, Defendant FRAM has refused to cease its infringing

activities, and continues to infringe the RE 917 patent. 31. Plaintiff has been and continues to be injured by Defendant FRAMs infringement

of the RE 917 patent because, among other reasons, Defendants actions have resulted in the wrongful diversion of sales and profits from Plaintiff. 32. Defendant FRAMs acts of infringement of the RE 917 patent were done with

full knowledge of the RE 917 patent. Upon information and belief, Defendant FRAM has deliberately, intentionally and willfully disregarded Plaintiffs patent rights. Thus, Defendant FRAM has willfully infringed, and continues to willfully infringe, the RE 917 patent, making this an exceptional case within the meaning of 35 U.S.C. 285.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff seeks a judgment against Defendants as follows: a. That Defendants have either literally infringed and/or contributorily infringed

and/or induced infringement of one or more claims of the RE 917 patent. b. c. Awarding Plaintiff damages for Defendants infringement of the RE 917 patent. That Defendants, their subsidiaries, affiliates, parents, successors, assigns,

officers, agents, servants, employees, attorneys, and all persons acting in concert or in participation with them, or any of them, be temporarily and preliminarily enjoined during the pendency of this action, and permanently enjoined thereafter from infringing, contributing to the infringement of, and inducing infringement of the RE 917 patent, and specifically from directly or indirectly making, using, selling, offering for sale, or importing any products or services embodying the inventions of the RE 917 patent during the life of the claims of the patent, without the express written authority of Plaintiff. d. and willful. e. f. g. h. i. proper. Awarding Plaintiff treble damages pursuant to 35 U.S.C. 284. Deeming this case exceptional pursuant to 35 U.S.C. 285. Awarding Plaintiff its reasonable attorneys fees. Awarding Plaintiff its costs of suit, and an assessment of interest. Awarding Plaintiff such other and further relief as the Court may deem just and That Defendants infringement of the patent-in-suit is and has been intentional

DEMAND FOR JURY TRIAL Plaintiff hereby demands a jury trial as to all issues so triable. NELSON MULLINS RILEY & SCARBOROUGH LLP

By: Dwight F. Drake Federal Bar No. 598 E-Mail: dwight.drake@nelsonmullins.com Craig N. Killen Federal Bar No. 6291 E-Mail: craig.killen@nelsonmullins.com Jessica Peters Goodfellow Federal Bar No. 11329 E-Mail: jessica.goodfellow@nelsonmullins.com NELSON MULLINS RILEY & SCARBOROUGH LLP 1320 Main Street / 17th Floor Post Office Box 11070 (29211-1070) Columbia, SC 29201 (803) 799-2000 OF COUNSEL: GREENBLUM & BERNSTEIN, P.L.C. Neil F. Greenblum, Esq. ngreenblum@gbpatent.com P. Branko Pejic, Esq. bpejic@gbpatent.com Jill M. Browning, Esq. jbrowning@gbpatent.com 1950 Roland Clarke Place Reston, Virginia 20191 (703) 716-1191 Attorneys for Hengst of North America, Inc. Columbia, South Carolina August 23, 2013