IN THE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO

DURACOTE CORPORATION 350 N. Diamond St. Ravenna, Ohio 44266 Plaintiff, vs. KAPPLER, INC. c/o George P. Kappler, Jr., Statutory Agent 115 Grimes Drive Guntersville, Alabama 35976 Defendant.

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CASE NO.: JUDGE: Magistrate: COMPLAINT 1. Correction of Inventorship Pursuant to 35 U.S.C. 256 2. Breach of Contract 3. Unjust Enrichment Demand for Jury Trial

NOW comes Plaintiff DURACOTE CORPORATION, by and through its attorneys, Darren W. DeHaven, of DeHaven & Blair, Ltd., and Roger D. Emerson and Nathan B. Webb, of Emerson Thomson Bennett, LLC, and hereby complains against Defendant KAPPLER, INC., as follows:

I.

PARTIES 1. Plaintiff Duracote Corporation (Plaintiff or Duracote) is an Ohio

corporation whose principal place of business is located at 350 N. Diamond St., Ravenna, Ohio 44266. 2. Defendant Kappler, Inc. (Defendant or Kappler), is an Alabama

corporation whose principal place of business is located at 115 Grimes Dr., Guntersville, Alabama 35976.

3. hereinafter.

Plaintiff and Defendant shall collectively be referred to as the Parties,

II.

JURISDICTION 4. Plaintiff repeats and re-avers the allegations contained in the preceding

paragraphs, as appropriate, as if fully set forth herein. 5. This action arises under the patent laws of the United States, 35 U.S.C. 1 et

seq., for correction of patent inventorship of United States Letters Patent No. 8,156,576 pursuant to 35 U.S.C. 256(b). 6. Still further, Plaintiff is a corporation incorporated under the laws of Ohio with

its principal place of business in Ohio, whilst Defendant is a corporation incorporated under the laws of Alabama with its principal place of business in Alabama. 7. The amount in controversy, without interest and costs, is believed to exceed

the sum or value specified by 28 U.S.C. 1332.

III.

VENUE 8. Plaintiff repeats and re-avers the allegations contained in the preceding

paragraphs, as appropriate, as if fully set forth herein. 9. A substantial part of the acts and events giving rise to the below claims

occurred in Portage County, Ohio, where Plaintiff: (a) invented the novel compositions, products and methods disclosed in United States Letters Patent 8,156,576; and (b) executed a Mutual Exchange Non-Disclosure Agreement and disclosed under a duty of confidence various confidential information and inventive concepts (as described below) to Defendant. Furthermore, the effects of Defendants breach of contract and unjust enrichment, as further discussed below, are felt by Plaintiff in Portage County, Ohio. 10. Venue of this action is proper in the United States District Court for the

Northern District of Ohio, Eastern Division, pursuant to 1391(b)(2) and Rule 3.8 of the Local Rules for the United States District Court for the Northern District of Ohio (L.R.).
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IV.

BACKGROUND OF THE CASE

11.

Plaintiff repeats and re-avers the allegations contained in the preceding

paragraphs, as appropriate, as if fully set forth herein. 12. Upon information and belief, Defendant Kappler is a manufacturer of chemical

and fire resistant protective garments. 13. Plaintiff Duracote is a provider of custom materials solutions that provide high

performance insulation, isolation, barrier, and fire-resistant properties in a wide variety of industrial applications. 14. Upon information and belief, in September and October of 2007 the Parties

began exploring a business relationship wherein Duracote would laminate fabrics provided by Kappler for use in association with disposable fire retardant protective garments. 15. On October 22, 2007, the Parties executed a valid and binding Mutual

Exchange Non-Disclosure Agreement (NDA), a copy of which is attached hereto and incorporated herein as Exhibit A. 16. Pursuant to the NDA, Defendant was obligated to hold, treat, preserve and

maintain in the strictest of confidence any Confidential Information disclosed by Plaintiff. 17. Pursuant to the NDA, Defendant was obligated to refrain from disclosing or

using said Confidential Information for any purpose not related to the purpose of the NDA (a Discussion, wherein the parties desire to discuss and explore the possibility of entering into a transaction or transactions with one another.). 18. Pursuant to the NDA, Defendant was prohibited from conducting materials

testing that were not ordinary and necessary for the materials or services being rendered, and in no event was Defendant permitted to conduct chemical analysis of provided materials samples without the prior written consent of Plaintiff.

19.

Upon information and belief, during the term of the NDA, Plaintiff disclosed

certain Inventive Concepts and Confidential Information that is covered by the NDA to Defendant. 20. Specifically, during the term of the NDA, Plaintiff provided Defendant with

Inventive Concepts, materials samples, certain technical specifications, and access to its manufacturing facilities for the purpose of observing production of an adhesive laminate with improved fire retardant properties. 21. Upon information and belief, Defendant was unaware of adhesive laminates

containing intumescents (a substance that swells as a result of exposure to heat) prior to signing the NDA with Plaintiff. 22. Upon information and belief, during the term of the NDA, Plaintiff disclosed

to Defendant the Inventive Concept of using an adhesive laminate containing an intumescent for the lamination of fabrics having improved fire resistant properties. 23. Upon information and belief, during the term of the NDA, Defendants first

learned that adhesive laminates containing an intumescent (preferably, expanding graphite) would be an effective fire retardant in composite fire resistant fabrics. 24. Upon information and belief, during the term of the NDA, Defendant

conducted chemical testing, and/or other prohibited analysis, of materials samples provided by Plaintiff, without the consent of Plaintiff and in violation of the NDA. 25. Upon information and belief, on July 21, 2008, without the knowledge or

consent of Plaintiff Duracote, Defendant filed provisional patent application number 61/135,457 (hereafter, Provisional Application) with the United States Patent and Trademark Office (USPTO) listing Defendants employees Adam J. Terrell and Al Horton as the sole inventors of an invention entitled Flash Fire Resistant Fabric and Garments. 26. The Provisional Application disclosed that the fabric contained various layers

of materials and an adhesive layer includes a thermally stable adhesive matrix layer and preferably also includes a particulate material which will expand in response to exposure to

elevated temperature; notably, Defendant disclosed that one particularly useful laminating adhesive is available from Duracote, Inc. of Ravenna, Ohio. 27. The Provisional Application further disclosed that an expanding graphite

adhesive was preferably used to laminate certain fabric layers. 28. Upon information and belief, on July 21, 2009, without the knowledge or

consent of Plaintiff Duracote, Defendant filed utility patent application number 12/506,888 with the USPTO (hereafter, Utility Application) claiming priority to the Provisional Application, and listing Defendant Kapplers employee Adam J. Terrell as the sole inventor of the invention entitled Flash Fire and Chemical Resistant Fabric and Garments. 29. The Utility Application disclosed a flash fire and chemical barrier composite

fabric similar to the version disclosed in the Provisional Application, but removed any attribution of the laminating adhesive to Plaintiff Duracote Corporation. 30. Of the original thirty-one Utility Application claims, only oneclaim 14

included an adhesive layer containing an intumescent (expanding graphite). 31. In an Office Action dated September 7, 2011, the USPTO patent examiner

rejected all claims after concluding that it would have been obvious to persons of ordinary skill in the art to combine known composite fabrics as claimed in the Utility Application. 32. An interview with the patent examiner was held on December 5, 2011, and on

December 7, 2011, a response to Office Action (hereafter, Amendment) was entered containing numerous claim amendments and arguments. 33. Specifically, in the Amendment all Utility Application claims were amended to

require inclusion or use of an intumescent. 34. Furthermore, in arguing that the patent examiners obviousness rejections were

now overcome, the Amendment asserted that none of the cited references teach or reasonably suggests an intumescent material positioned between the flame resistant fibrous basic layer and the radiant heat and chemical permeation barrier; indeed, the Amendment explicitly stated that the inclusion of the intumescent is what patentably distinguish the

claimed invention over the cited references (claims 1-31) and is what distinguished over the art of record (claims 32-35). 35. The patent examiner found the arguments contained in the Amendment

persuasive, and issued a Notice of Allowance on December 15, 2011. 36. On April 17, 2012, United States Letters Patent No. 8,156,576 (hereafter,

Patent 576) issued to inventor Adam J. Terrell and listing the assignee as Defendant Kappler, Inc., of Guntersville, Alabama. 37. All Patent 576 claims contain either: A) a flash fire and chemical barrier

composite fabric containing an intumescent material positioned between fabric layers; or B) a method for protecting a wearer exposed to chemical and flash fire utilizing composite fabrics containing an intumescent material positioned between fabric layers. 38. Upon information and belief, in breach of Defendants obligations, identified

in the preceding paragraphs, Defendant has used disclosed Confidential Information and Inventive Concepts for purposes other than those specified in the NDA, and has otherwise failed to hold, treat, preserve and maintain in the strictest of confidence Plaintiffs Confidential Information and Inventive Concepts. 39. As a direct and proximate cause of Defendants erroneous inventorship claim,

Plaintiff has been denied its right to be named as the sole inventor, or co-inventor, of Patent 576. 40. As a direct and proximate result of Defendants breach of the NDA, Plaintiff

has suffered and will continue to suffer damages. 41. As a direct and proximate cause of Defendants breach of the NDA, Defendant

has been unjustly enriched.

V.

CAUSES OF ACTION First Cause of Action [Complete Substitution of Inventors Pursuant to 35 U.S.C. 256]

42.

Plaintiff repeats and re-avers the allegations contained in the preceding

paragraphs, as appropriate, as if fully set forth herein. 43. Employees of Plaintiff Duracote Corporation were the first persons to conceive

the patentable subject matter described and claimed in Patent 576, and the conception of such patentable subject matter occurred during and within the scope of said employees employment. 44. Employees of Plaintiff Duracote Corporation, who have assigned the

inventions at least partially disclosed in Patent 576, are the true and only inventors of the patentable products and methods disclosed and claimed in Patent 576. 45. Pursuant to 35 U.S.C. 256, the Duracote employee inventors should be

substituted for Adam J. Terrell as the sole inventors of the patentable products and methods disclosed in Patent 576. Second Cause of Action [Addition of Co-Inventors Pursuant to 35 U.S.C. 256] 46. Plaintiff repeats and re-avers the allegations contained in the preceding

paragraphs, as appropriate, as if fully set forth herein. 47. Employees of Plaintiff Duracote Corporation were the first persons to conceive

the use of an adhesive laminate containing an intumescent for composite fire resistant fabrics, and/or an adhesive laminate containing expanding graphite for use with composite fire resistant fabrics, as described and claimed in Patent 576, and the conception of such patentable subject matter occurred during and within the scope of said employees employment. 48. Employees of Plaintiff Duracote Corporation, who have assigned the

inventions at least partially disclosed in Patent 576, are co-inventors of the patentable products and methods disclosed and claimed in Patent 576. 49. Pursuant to 35 U.S.C. 256, the Duracote employee inventors should be added

as co-inventors of the patentable products and methods disclosed in Patent 576.

Third Cause of Action [Breach of Contract] 50. Plaintiff repeats and re-avers the allegations contained in the preceding

paragraphs, as appropriate, as if fully set forth herein. 51. The Parties executed a valid and binding contract entitled Mutual Exchange

Non-Disclosure Agreement (NDA). 52. Plaintiff fully performed its obligations under the NDA, disclosed its own

Confidential Information to Defendant, and did not disclose in violation of the NDA any of Defendants confidential information that was protected by the NDA. 53. Defendant breached the NDA by disclosing Confidential Information and

Inventive Concepts in the Provisional Application and Utility Applications, using disclosed Confidential Information and Inventive Concepts for purposes other than those explicitly permissible under the NDA, and/or conducting testing of materials samples in violation of the NDA, all without the consent of Plaintiff Duracote. 54. As a direct and proximate result of Defendants breach of the NDA, Plaintiff

has suffered and will continue to suffer damages. Fourth Cause of Action [Unjust Enrichment]

55.

Plaintiff repeats and re-avers the allegations contained in the preceding

paragraphs, as appropriate, as if fully set forth herein. 56. A consequence of the unlawful conduct, detailed above, is that Defendant

holds moneydue to sales of patented articleswhich, in equity and good conscience, belongs to Plaintiff Duracote, and/or holds money which was improperly paid to Defendant because of mistake or fraud. 57. Specifically, the donor of Defendants monetary benefits acted under a mistake

of fact or in misreliance on a right or duty owed to the sole listed owner of Patent 576

(Kappler), and/or Defendant received benefits after having engaged in unconscionable acts namely, fraud or abuse of a confidential relationshipas detailed herein. 58. As a direct and proximate cause of Defendants unlawful conduct it would be

unjust for Kappler to retain benefits derived from sales of patented articles for which Defendant was not the inventor, and such benefits are instead properly awarded to Plaintiff.

WHEREFORE, Plaintiff prays for judgment against Defendant as follows: 1. That, as to the First or Second Causes of Action, the Court issues an Order

correcting inventorship of Patent 8,156,576 pursuant to 35 U.S.C. 256(b). 2. That, as to the First Cause of Action, the Court issues an Order nullifying

Adam J. Terrells assignment of rights in Patent 8,156,576 to Defendant Kappler. 3. That, as to the Third Cause of Action, the Court grants relief and damages in

favor of Plaintiff against Defendant for the Defendants breach of the NDA in an amount unknown at this time, but believed to be in excess of $75,000. 4. That, as to the Fourth Cause of Action, the Court grants relief and damages in

favor of Plaintiff against Defendant: for Plaintiffs loss caused by Defendants misappropriation of Plaintiffs Inventive Concepts in an amount unknown at this time, but believed to be in excess of $75,000 and to be determined at trial; for Defendants unjust enrichment and profits caused by said misappropriation; for the imposition of liability upon Defendant for a reasonable royalty that is equitable under the circumstances; for reasonable attorneys fees for Defendants willful and malicious misappropriation of Plaintiffs Inventive Concepts; for punitive damages for Defendants willful and malicious misappropriation of Plaintiffs Inventive Concepts; and/or for a preliminary and permanent injunction enjoining further misappropriation or eliminating Defendants commercial advantage that was derived from the misappropriation. 5. and proper. Dated: August 2, 2013.
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That the Court grants further relief and damages as the Court deems reasonable

Respectfully submitted,
DeHAVEN & BLAIR, Ltd.

/s/ Darren W. DeHaven Darren W. DeHaven (#0065312) dwdehaven@dehavenblair.com H. Gilson Blair (#0065354) gblair@dehavenblair.com Attorneys for Plaintiff 19 North High Street Akron, Ohio 44308 (330) 256-4444 (888) 651-6446 Fax

EMERSON THOMSON BENNETT, LLC

/s/ Nathan B. Webb Nathan B. Webb (#0084506) nbw@etblaw.com Roger D. Emerson (#0037731) rde@etblaw.com Attorneys for Plaintiff 1914 Akron-Peninsula Road Akron, Ohio 44313 (330) 434-9999 (330) 434-8888 Fax

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JURY DEMAND Plaintiff hereby demands a trial by jury for all triable issues pursuant to Rule 38 of the Federal Rules of Civil Procedure. Dated: August 2, 2013. Respectfully submitted,
DeHAVEN & BLAIR, Ltd.

/s/ Darren W. DeHaven Darren W. DeHaven (#0065312) dwdehaven@dehavenblair.com H. Gilson Blair (#0065354) gblair@dehavenblair.com Attorneys for Plaintiff 19 North High Street Akron, Ohio 44308 (330) 256-4444 (888) 651-6446 Fax

EMERSON THOMSON BENNETT, LLC

/s/ Nathan B. Webb Nathan B. Webb (#0084506) nbw@etblaw.com Roger D. Emerson (#0037731) rde@etblaw.com Attorneys for Plaintiff 1914 Akron-Peninsula Road Akron, Ohio 44313 (330) 434-9999 (330) 434-8888 Fax

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