Case 1:16-cv-00215-JMS-MJD Document 1 Filed 01/26/16 Page 1 of 15 PageID #: 1

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UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION

CUMMINS LTD. and CUMMINS INC.

)
)
Plaintiffs
)
vs.
)
)
ADP DISTRIBUTORS USA, INC. and ADP )
DISTRIBUTORS, INC.,
)
)
Defendants.
)
)

Case No. 16-CV-215

JURY TRIAL DEMANDED

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiffs, Cummins Ltd., including through its division Cummins Turbo Technologies,
and Cummins Inc., by and through their attorneys, Foley & Lardner LLP, hereby submit their
Complaint against Defendants, ADP Distributors USA, Inc. and ADP Distributors, Inc.,
collectively doing business as Rotomaster, and allege as follows:
NATURE OF THE ACTION
1.

This is a civil action arising in part under the Patent Laws of the United States,

35 U.S.C. 1 et seq., and, in particular, 35 U.S.C. 271.

2.

Plaintiffs seek injunctive relief and monetary damages resulting from Defendants

infringement of its patent rights under United States Patent Nos. 6,401,563 and 5,941,684, as set
forth more fully below.
THE PARTIES
3.

Plaintiff Cummins Ltd. is a limited company organized under the laws of England

and Wales, and has principal places of business located at St. Andrews Road, Huddersfield,
United Kingdom HD16RA. Cummins Ltd., including through its division Cummins Turbo

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Technologies, manufactures and distributes turbochargers for diesel engines primarily in the
medium and heavy duty diesel engine markets.
4.

Plaintiff Cummins Inc. is a corporation organized under the laws of the State of

Indiana, and has a principal place of business at 500 Jackson Street, Columbus, Indiana 47201.
Cummins Inc. is a global power leader that designs, manufactures, distributes and services diesel
and natural gas engines and engine-related component products, including turbochargers,
filtration, aftertreatment, fuel systems, controls systems, air handling systems, and electric power
generation systems.
5.

Upon information and belief, Defendant ADP Distributors USA, Inc.

(Rotomaster USA) is a corporation organized under the laws of the State of California, is
doing business as Rotomaster, and has a principal place of business at 2420 West 14th Street,
Suite A, Tempe, Arizona 85281.
6.

Upon information and belief, Defendant ADP Distributors, Inc. (ADP

International) is a corporation organized under the laws of Canada, is doing business as

Rotomaster, and has a principal place of business at 18940 94th Avenue, Surrey, British
Columbia V4N 4X5, Canada.
7.

Upon information and belief, Defendant ADP International is the parent company

of Defendant Rotomaster USA (collectively Rotomaster or Defendants).

JURISDICTION
8.

This Court has exclusive subject matter jurisdiction over the claims asserted

herein pursuant to 28 U.S.C. 1331 and 1338(a).

9.

This Court has personal jurisdiction over Defendant Rotomaster USA, which does

business within the State of Indiana and within this Judicial District, and has committed acts of
infringement within this Judicial District, and/or has advertised or otherwise promoted its
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accused products as available in this Judicial District and placed its products within the stream of
commerce with the expectation and/or knowledge that such products would be purchased by
customers and/or used by customers within this Judicial District.
10.

This Court has personal jurisdiction over Defendant ADP International, which

does business within the State of Indiana and within this Judicial District, and has committed acts
of infringement within this Judicial District, and/or has advertised or otherwise promoted its
accused products as available in this Judicial District and placed its products within the stream of
commerce with the expectation and/or knowledge that such products would be purchased by
customers and/or used by customers within this Judicial District.
11.

Defendants, individually or collectively, maintain a website (www.rotomaster.

com) promoting their turbochargers and replacement parts that is accessible in the United States,
including in this Judicial District.
12.

Defendants, individually or collectively, solicit orders for, and/or offer to sell,

and/or sell, the accused products to, or on behalf of, entities in the United States, including
entities located within this Judicial District.
13.

Upon information and belief, Defendant ADP International imports the accused

products into the United States for sale or use in the United States, including in this Judicial
District.
14.

Upon information and belief, the conduct of Defendants as alleged herein has

been systematic and continuous within the Southern District of Indiana.

VENUE
15.

Venue in this Judicial District is proper under 28 U.S.C. 1391(b), in that a

substantial part of the events that give rise to this action have occurred and continue to occur in
this Judicial District.
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16.

Venue is proper in this Judicial District at least pursuant to 28 U.S.C. 1391(b)

and (d) and 1400(b) because, upon information and belief, various acts and transactions
constituting at least a substantial portion of the claims arose in this Judicial District. Venue is
also proper in this Judicial District because Defendants are subject to personal jurisdiction in this
Judicial District pursuant to 28 U.S.C. 1391(c).
U.S. PATENT NO. 6,401,563
17.

United States Patent No. 6,401,563 (the 563 patent), entitled Actuating

Mechanism For A Slidable Nozzle Ring, was duly and legally issued on June 11, 2002. A true
and correct copy of the 563 patent is attached hereto as Exhibit 1.
18.

Plaintiff Cummins Ltd. is the owner of all right, title and interest in the 563

patent, including the right to sue thereon and the right to recover for infringement thereof.
Cummins Ltd., including through its division Cummins Turbo Technologies, sells turbochargers
and turbocharger components in the original equipment and first-fit fields of use.
19.

Plaintiff Cummins Inc. is an exclusive licensee to the 563 patent for sales of

turbochargers and turbocharger components.

20.

The 563 patent is directed to certain components of a turbocharger or

turbomachine. A turbocharger is a device used in connection with internal combustion engines

that is driven by exhaust gases and supplies air to the engine at a higher pressure to increase the
engines power.
21.

The claims of the 563 patent are generally directed to a linkage assembly for

linking together certain components within a turbocharger or turbomachine, including in part a

nozzle ring, at least one rod guided for movement in a direction parallel to the central axis of the
nozzle ring, and wherein the rod is (a) pivotally connected to the nozzle ring and (b) is pivotal
with respect to its central axis.
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22.

Independent claim 1 of the 563 patent provides:

1. In a turbomachine having a turbine inlet, a linkage assembly
comprising: [an] annular nozzle ring incorporated into said turbine
inlet, said nozzle ring having a central axis and guided for
movement parallel to said central axis, [at] least one rod guided for
movement in a direction parallel to the central axis of said annular
nozzle ring, and [a] linkage mechanism connected to one end of
said rod and pivotally connected to said annular nozzle ring, said
rod being pivotal with respect to the central axis of said rod.

23.

Claims 2 through 8 of the 563 patent are dependent claims.

24.

Dependent claim 2 of the 563 patent provides:

2. Apparatus as claimed in claim 1 wherein said linkage
mechanism comprises a foot member having a first end face
abutting said annular nozzle ring and a second end face fixed to
said rod, one end of said foot member being pivotally connected to
said annular nozzle ring on the first end face of said foot member.

25.

Defendants have had prior knowledge of the 563 patent since at least as early as

July 12, 2013 when Rotomaster was sent correspondence from Plaintiffs regarding the 563
patent.
U.S. PATENT NO. 5,941,684
26.

United States Patent No. 5,941,684 (the 684 patent), entitled Variable

Geometry Turbine, was duly and legally issued on August 24, 1999. A true and correct copy of
the 684 patent is attached hereto as Exhibit 2.
27.

Plaintiff Cummins Ltd. is the owner of all right, title and interest in the 684

patent, including the right to sue thereon and the right to recover for infringement thereof.
Cummins Ltd., including through its division Cummins Turbo Technologies, sells turbochargers
and turbocharger components in the original equipment and first-fit fields of use.
28.

Plaintiff Cummins Inc. is an exclusive licensee to the 684 patent for sales of

turbochargers and turbocharger components.

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29.

The claims of the 684 patent are generally directed to a turbine, such as one used

in connection with a turbocharger, having one or more springs which provide non-linear length
to spring force characteristics on a displaceable sidewall.
30.

Independent claim 1 of the 684 patent provides:

1. A variable geometry turbine comprising a housing, a turbine
wheel mounted to rotate about a predetermined axis within the
housing, a gas inlet passage to the turbine defined between a fixed
wall and an annular sidewall which is mounted in the housing and
is displaceable relative to the fixed wall between axially spaced
first and second positions, at least one spring biasing the sidewall
away from the fixed wall towards the first position, and means for
applying an axial force to the sidewall in opposition to the at least
one spring to thereby control the axial position of the sidewall,
wherein the said at least one spring has a non-linear length to
spring force characteristics such that the resultant of the applied
spring force and an axial force applied to the sidewall as a result of
gas flow through the passage increases continuously as the
sidewall is displaced from the first position to the second position.

31.

Claims 2 through 7 of the 684 patent are dependent claims.

32.

Dependent claim 2 provides:

2. A variable geometry turbine according to claim 1, wherein the
rate of change of spring force with sidewall displacement increases
as the sidewall is displaced from the first position to the second
position.

33.

Upon information and belief, Defendants have had prior knowledge of the 684

patent since at least as early as July 12, 2013 when Rotomaster was put on notice of the
Cummins patent portfolio, which portfolio Rotomaster investigated in response to prior
correspondence from Plaintiffs.
DEFENDANTS INFRINGING ACTIVITIES AND ACCUSED PRODUCTS
The Accused Rotomaster Turbocharger (Model No. H1550112N)
34.

Upon information and belief, Defendants are in the business of manufacturing

turbochargers and replacement parts for turbochargers.

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35.

Upon information and belief, Defendants, individually or in concert with others or

each other, advertise for sale, offer for sale, import, sell and/or use within the United States
turbochargers identified by Rotomaster Model. No. H1550112N (the Accused Rotomaster
Turbocharger).
36.

Photographs of component parts of the Accused Rotomaster Turbocharger are

shown below:

37.

Upon information and belief, the Accused Rotomaster Turbocharger is intended

by Defendants to be used with Cummins engines.

38.

Each and every claim element of independent claim 1 of the 563 patent is

present, either literally or under the doctrine of equivalents, in the Accused Rotomaster
Turbocharger.

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39.

Further, each and every claim element of one or more of dependent claims 2

through 8 of the 563 patent is present, either literally or under the doctrine of equivalents, in the
Accused Rotomaster Turbocharger. For example, and without limitation, each and every claim
element of dependent claim 2 of the 563 patent is present, either literally or under the doctrine
of equivalents, in the Accused Rotomaster Turbocharger.
40.

Each and every claim element of independent claim 1 of the 684 patent is

present, either literally or under the doctrine of equivalents, in the Accused Rotomaster
Turbocharger.
41.

Further, each and every claim element of one or more of dependent claims 2

through 7 of the 684 patent is present, either literally or under the doctrine of equivalents, in the
Accused Rotomaster Turbocharger. For example, and without limitation, each and every claim
element of dependent claim 2 of the 684 patent is present, either literally or under the doctrine
of equivalents, in the Accused Rotomaster Turbocharger.
The Accused Rotomaster Replacement Part
42.

Upon information and belief, Defendants, individually or in concert with others or

each other, advertise for sale, offer for sale, import, sell and/or use within the United States
turbocharger replacement parts, including a nozzle ring assembly (the Accused Rotomaster
Replacement Part).
43.

A photograph of the Accused Rotomaster Replacement Part is shown below:

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44.

Upon information and belief, the Accused Rotomaster Replacement Part is

intended by Defendants to be used with Cummins engines and/or turbochargers.

45.

Each and every claim element of independent claim 1 of the 563 patent is

present, either literally or under the doctrine of equivalents, in the Accused Rotomaster
Replacement Part or a turbocharger containing the Accused Rotomaster Replacement Part.
46.

Further, each and every claim element of one or more of dependent claims 2

through 8 of the 563 patent is present, either literally or under the doctrine of equivalents, in the
Accused Rotomaster Replacement Part or a turbocharger containing the Accused Rotomaster
Replacement Part.

For example, and without limitation, each and every claim element of

dependent claim 2 of the 563 patent is present, either literally or under the doctrine of
equivalents, in the Accused Rotomaster Replacement Part or a turbocharger containing the
Accused Rotomaster Replacement Part.

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COUNT I: DIRECT INFRINGEMENT OF U.S. PATENT NO. 6,401,563

47.

Plaintiffs reallege and incorporate Paragraphs 1 through 46 of this Complaint as if

specifically set forth herein.

48.

Upon information and belief, Defendants have, individually or in concert with

others or each other, directly infringed at least claim 1 and one or more dependent claims of the
563 patent, including, without limitation, dependent claim 2, by advertising for sale, offering for
sale, importing, selling and/or using within the United States turbochargers, including by way of
example and not by way of limitation as to infringing products, the Accused Rotomaster
Turbocharger and the Accused Rotomaster Replacement Part.
49.

The Accused Rotomaster Turbocharger and the Accused Rotomaster Replacement

Part include a linkage assembly for linking together certain components within a turbocharger or
turbomachine, including a nozzle ring, at least one rod guided for movement in a direction
parallel to the central axis of the nozzle ring, linkage mechanism connected to one end of the rod
and pivotally connected to the nozzle ring, and wherein the rod is pivotal with respect to its
central axis, as claimed in the 563 patent.
50.

Additionally, the Accused Rotomaster Turbocharger and the Accused Rotomaster

Replacement Part include a foot member having a first end face abutting said annular nozzle ring
and a second end face fixed to said rod, one end of said foot member being pivotally connected
to said annular nozzle ring on the first end face of said foot member, as claimed in dependent
claim 2 of the 563 patent.
51.

Upon information and belief, Defendants infringement of the 563 patent has

been willful.
52.

The activities of Defendants as complained of in this Count have injured and been

to the detriment of, and continue to injure and be detrimental to Plaintiffs and, as a result thereof,
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Plaintiffs are entitled to recover damages adequate to compensate it for the infringement
complained of herein, including lost profits, but in no event less than a reasonable royalty.
53.

Defendants complained-of activities have caused, and continue to cause,

Plaintiffs substantial damage and irreparable injury by virtue of their past and on-going
infringement.
COUNT II: DIRECT INFRINGEMENT OF U.S. PATENT NO. 5,941,684
54.

Plaintiffs reallege and incorporate Paragraphs 1 through 53 of this Complaint as if

specifically set forth herein.

55.

Upon information and belief, Defendants have, individually or in concert with

others or each other, directly infringed at least claim 1 and one or more dependent claims of the
684 patent, including, without limitation, dependent claim 2, by advertising for sale, offering for
sale, importing, sellingand/or using within the United States turbochargers, including by way of
example and not by way of limitation as to infringing products, the Accused Rotomaster
Turbocharger.
56.

The Accused Rotomaster Turbocharger includes a turbine comprising a housing, a

turbine wheel, a gas inlet passage defined between a fixed wall and a sidewall, at least one spring
biasing the sidewall away from the fixed wall, and means for apply an axial force to the sidewall
in opposition to the spring to control the axial position of the sidewall, wherein the spring has
non-linear length to spring force characteristics such that the resultant of the spring force and
axial force applied to the sidewall as a result of gas flow through the passage increases
continuously as the sidewall is displaced, as claimed in the 684 patent.
57.

Additionally, the rate of change of spring force in the Accused Rotomaster

Turbocharger increases as the sidewall is displaced from a first position to a second position, as
claimed in dependent claim 2 of the 684 patent.
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58.

Upon information and belief, Defendants infringement of the 684 patent has

been willful.
59.

The activities of Defendants as complained of in this Count have injured and been

to the detriment of, and continue to injure and be detrimental to Plaintiffs and, as a result thereof,
Plaintiffs are entitled to recover damages adequate to compensate it for the infringement
complained of herein, including lost profits, but in no event less than a reasonable royalty.
60.

Defendants complained-of activities have caused, and continue to cause,

Plaintiffs substantial damage and irreparable injury by virtue of their past and on-going
infringement.
COUNT III: INDUCEMENT TO INFRINGE THE 563 PATENT
61.

Plaintiffs reallege and incorporate Paragraphs 1 through 60 of this Complaint as if

specifically set forth herein.

62.

Upon information and belief, Defendants had knowledge of the 563 patent.

63.

With knowledge of the 563 patent, Defendants actively induced infringement of

the 563 Patent by advertising for sale, offering to sell, selling and/or importing into the United
States the Accused Rotomaster Replacement Part, and providing instructions for installing such
part in turbochargers to produce turbochargers which directly infringe at least claim 1 and one or
more dependent claims, including, without limitation, dependent claim 2, of the 563 patent.
64.

Upon information and belief, Defendants Accused Rotomaster Replacement Part

has been installed within the United States into turbochargers to produce turbochargers which
directly infringe at least claim 1 and one or more dependent claims, including, without limitation,
dependent claim 2, of the 563 patent.
65.

Defendants knew or should have known that the sales of the Accused Rotomaster

Replacement Part would induce, and actively induce, actual infringement of the 563 patent.
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COUNT IV: CONTRIBUTORY INFRINGEMENT OF THE 563 PATENT

66.

Plaintiffs reallege and incorporate Paragraphs 1 through 65 of this Complaint as if

specifically set forth herein.

67.

Defendants offered for sale, sold and/or imported within the United States the

Accused Rotomaster Replacement Part, which is a material part and a component of

turbochargers which directly infringe the 563 patent.
68.

Defendants knew that its Accused Rotomaster Replacement Parts were especially

made or especially adopted for inclusion in turbochargers which directly infringe at least claim 1
and one or more dependent claims including, without limitation, dependent claim 2, of the 563
patent.
69.

Upon information and belief, Defendants Accused Rotomaster Replacement

Parts were installed within the United States into turbochargers to produce turbochargers which
directly infringe at least claim 1 and one or more dependent claims including, without limitation,
dependent claim 2, of the 563 patent.
70.

Defendants Accused Rotomaster Replacement Parts are not a staple article or

commodity of commerce suitable for substantial noninfringing use.

DEMAND FOR JURY TRIAL

Plaintiffs hereby demand a jury trial of all issues in the above-captioned action which are
triable to a jury.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs, Cummins Ltd. and Cummins Inc., pray for their relief against
Defendants, ADP Distributors USA, Inc. and ADP Distributors, Inc., as follows:

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1.

Judgment that Defendants have directly infringed one or more claims of the 563

2.

Judgment that Defendants have directly infringed one or more claims of the 684

3.

Judgment that Defendants have actively induced infringement one or more claims

patent;

patent;

of the 563 patent;

4.

Judgment that Defendants have contributorily infringed one or more claims of the

563 patent;
5.

A preliminary and permanent injunction enjoining Defendants, their officers,

agents, servants, employees, representatives, licensees, successors, assigns, and those persons in
active concert or participation with any of them, from directly or indirectly infringing the 563
patent and 684 patent;
6.

Awarding Plaintiffs damages adequate to compensate them for the infringement

of the 563 patent and 684 patent, but in no event less than a reasonable royalty for use of the
invention together with interest and costs under 35 U.S.C. 284;
7.

Awarding pre-judgment and post-judgment interest on the damages assessed;

8.

Awarding treble damages on the damages assessed if the infringement is

determined to be willful;
9.

Declaring that this action be an exceptional case pursuant to 35 U.S.C. 285 and

awarding to Plaintiffs their attorneys fees;

10.

Awarding to Plaintiffs their costs; and

11.

Awarding to Plaintiffs such other and further relief as the Court deems just and

proper.

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Dated: January 26, 2016

Respectfully submitted,
/s/ James D. Dasso
James D. Dasso (Ill. ARDC 6193545, admitted
to practice before S.D. Indiana)
Jeanne M. Gills (Ill. ARDC 6225018, Pro Hac
Vice admission to be applied for)
Aaron J. Weinzierl (Ill. ARDC 6294055, Pro
Hac Vice admission to be applied for)
Jason A. Berta (Ill. ARDC 6295888, Pro Hac
Vice admission to be applied for)
FOLEY & LARDNER LLP
321 North Clark Street, Suite 2800
Chicago, Illinois 60654-5313
312.832.4500
312.832.4700 (Fax)
Attorneys for Plaintiff
Cummins Ltd. and
Cummins Inc.

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