Indag GmbH & Co. Betriebs KG v. IMA S.P.A.

• Decision Date: 09 December 2015
• Docket Number: 15 C 4973
• Court: U.S. District Court — Northern District of Illinois
• Parties: Indag GmbH & Co. Betreibs KG and Wild Parma S.r.L, Plaintiffs, v. IMA S.P.A, IMA North America, Inc., IMA Industries, Inc., IMA Industries North America, Inc., and Fillshape S.R.L., Defendants.

150 F.Supp.3d 946

Indag GmbH & Co. Betreibs KG and Wild Parma S.r.L, Plaintiffs,

v.IMA S.P.A, IMA North America, Inc., IMA Industries, Inc., IMA Industries North America, Inc., and Fillshape S.R.L., Defendants.

15 C 4973

United States District Court, N.D. Illinois, Eastern Division.

Signed December 9, 2015

Binni N. Shah, Stroockl & Stroock & Lavan LLP, Steven B. Pokotilow, Stroock, Stroock & Lavan, New York, NY, Andrew Dylan Campbell, Novack and Macey LLP, Chicago, IL, for Plaintiffs.

James F. Hurst, Cristina Q. Almendarez, Nyika Onyesi Strickland, Russell Evan Levine, Vishesh Narayen, Kirkland & Ellis LLP, Chicago, IL, for Defendants.

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Court Judge:

This is a case of alleged patent infringement and misappropriation of trade secrets between a former employee, the employee, and the new employer. Plaintiffs INDAG GmbH & Co. Betriebs KG (“INDAG”) and Wild Parma, S.r.L. (“Wild Parma,” collectively with INDAG, “Plaintiffs”) filed a Complaint on June 5, 2015, against Defendants IMA S.p.A., IMA North America, Inc. (“IMA North America”), IMA Industries Inc. (“IMA Industries”), IMA Industries North America Inc. (“IMA Industries North America,” collectively the “IMA Defendants”), and FillShape S.r.l. (“FillShape,” collectively with the IMA Defendants, “Defendants”). (See generally , R.1, Compl.) Plaintiffs allege that Defendants infringed U.S. Patent No. 7,648,017 (“the '017 patent”)

by offering for sale within the United States pouch filling machinery. (Id. , ¶¶ 42-49, Count I.) Plaintiffs further allege a violation of the Illinois Trade Secrets Act, 765 Ill. Comp. Stat. 1065/1 et seq. (“ITSA”). (Id. , ¶¶ 50-60, Count II.) In the alternative to the ITSA claim, Plaintiffs allege violations of the Italian Industrial Property Rights Code. (Id. , ¶¶ 61–63, Count III.) Defendants filed a Motion to Dismiss Plaintiffs' Complaint on three grounds. First, Defendants move for dismissal of Plaintiffs' Complaint under Rule 12(b)(2) on the basis that the Court cannot, consistent with due process, exercise personal jurisdiction over Defendants IMA S.p.A., IMA Industries North America, IMA North America, and FillShape (collectively, the “non-resident Defendants”). (See R.24.) Second, Defendants move under Rule 12(b)(6) asserting that Count I of the Complaint fails to state a claim for patent infringement. (Id. ) Lastly, Defendants move under Rule 12(b)(6) for dismissal of the claim of trade secret misappropriation under Illinois law (Count II) and Italian law (Count III) as to IMA Industries because Plaintiffs do not set forth any facts to show they are entitled to relief. (Id. ) Plaintiffs have also filed a motion for jurisdictional discovery related to the non-resident Defendants. (See R.32.) For the following reasons, the Court grants Defendants' motion to dismiss and denies Plaintiffs' request for jurisdictional discovery.

BACKGROUND

I. The Parties

Plaintiff INDAG is a German corporation with its principal place of business located in Heidelberg, Germany. (R.1, ¶ 8.) Plaintiff Wild Parma, an Italian corporation, is a wholly owned subsidiary of INDAG with its principal place of business in Collechio, Italy. (Id. , ¶ 9.)

Defendant IMA S.p.A. is an Italian corporation with its principal place of business located in Bologna, Italy. (Id. , ¶ 10.)

The remaining Defendants are all subsidiaries of IMA S.p.A.: IMA North America, IMA Industries, and IMA Industries North America as wholly owned U.S. subsidiaries and Fillshape as an Italian subsidiary. (Id. , ¶¶ 11-14.) IMA Industries is an Illinois corporation with its principal place of business in Mundelein, Illinois. (Id. , ¶ 12.) IMA North America is a Connecticut corporation with its principal place of business in Leominster, Massachusetts. (Id. , ¶ 11.) IMA Industries North America is a Massachusetts corporation with its principal place of business in Leominster, Massachusetts. (Id. , ¶ 13.) FillShape is an Italian corporation with its principal place of business in Bologna, Italy. (Id. , ¶ 14.)

II. Facts Alleged

A. Plaintiffs' Products & the '017 Patent

Plaintiffs have been in the business of developing pouch technology for over 35 years. (R.1, ¶¶ 4, 23.) Spouted pouch technology has been in development since 2002 and over the years, Plaintiffs have worked in the design and construction of pouch making and filling machines to increase efficiency. (Id. , ¶ 23.) Pouch welding and filling machinery can be used to fill a beverage pouch with liquid, e.g., fruit flavored beverages. (Id. , ¶ 22.) A machine will, for example, first weld spouts and pouches and then sterilize and fill the pouch with product. (Id. ) INDAG is the owner by assignment of all right, title, and interests in U.S. Patent No. 7,648,017 (“the '017 Patent”)

, entitled “Apparatus and Method for Feeding Pouches and Spouts for Processing”. (Id. , ¶¶ 1, 43.) The United States Patent and Trademark Office (“PTO”) issued the '017 Patent on January 19, 2010. (Id. , ¶ 43; see R.1-1, the '017 Patent, attached to Compl. as Ex. A.) The '017 Patent is directed to technology related to continuously feeding pouches and spouts to a pouch processing machine. Claim 1, for example, is directed to a system comprised of a transfer assembly that can simultaneously transfer a spout and pouch to an apparatus. (R.1, ¶ 44.)

Plaintiffs develop, sell, and license pouch making and filling machinery, including hot filing machinery and aseptic cold filling machinery. (R.1, ¶ 4.) Plaintiffs have developed numerous systems and have patented certain aspects of their machinery, while keeping other proprietary aspects as trade secrets. (Id. , ¶ 5.) Plaintiffs' methods for aseptic filling and capping, construction of welding grippers and the pouch portioning unit are examples of the types of information Plaintiffs allege they keep confidential or as trade secrets. (Id. , ¶ 22.) Plaintiffs protect their information by, for example, including warnings on their drawings against unauthorized third-party use, physically surrounding their property with fencing and natural barriers, placing signs indicating authorized access only on their building, using an installed alarm and camera systems, and requiring visitors to be buzzed in through multiple doors. (Id. , ¶ 55.) Plaintiffs also restrict computer network access through requiring passwords, and all licensees of Plaintiffs' trade secrets sign confidentiality agreements. (Id. )

B. The Alleged Misappropriation & Defendants' Products

Plaintiffs hired Mr. Filippo Furlotti in November 2007 to develop spouted pouch making and filling technology at Wild Parma. (R.1, ¶ 24.) While at Wild Parma, Mr. Furlotti also worked on aseptic spouted pouch making and filling technology and had access to confidential drawings of Plaintiffs' machines, schematics of the individual machinery parts, and the identity of vendors and suppliers. (Id. , ¶¶ 24, 25.) Mr. Furlotti also worked, from time to time, on various packaging technology for INDAG, who in turn provided drawings to Mr. Furlotti related to its machines. (Id. , ¶ 24.) Plaintiffs allege that Mr. Furlotti met with Defendants and Defendants' subsidiaries multiple times beginning as early as April 2012. (Id. , ¶ 26.) In August 2013, Mr. Furlotti gave notice to Wild Parma of his resignation and negotiated for an expedited termination of his employment effective September 24, 2013. (Id. , ¶¶ 24, 27.) In October 2013, Mr. Furlotti began working for FillShape. (Id. )

Plaintiffs allege that Defendants hired Mr. Furlotti to develop a competing machine. (R.1, ¶ 6.) Plaintiffs further allege that prior to joining Defendants, Mr. Furlotti devised a scheme to steal and exploit Plaintiffs' confidential and trade secret information and misappropriated such information for use in developing competing pouch making and filling machines for Defendants. (Id. , ¶¶ 6, 25.) Plaintiffs also allege that Defendants' employees entered the Wild Parma facility, at night, with Mr. Furlotti to see how the machinery operated. (Id. , ¶ 26.)

According to the Italian Register of Companies, FillShape was incorporated in February of 2013, but remained dormant until November 2013. (Id. , ¶ 28.) After Mr. Furlotti's arrival, FillShape began marketing filling machines that compete with Plaintiffs' machines. (Id. ) FillShape and IMA distributed a flyer dated September 2013 that highlighted an aseptic pouch-filling solution. (Id. ; R.1-1, attached to Compl. as Ex. B, IMA-FillShape Spouted Pouches Flyer (the “Flyer”).) According to Plaintiffs, this timing raises suspicions because it can take over 10 years to develop pouch filling machinery, and prior to September 2013, FillShape was not in the business of making, using or selling aseptic pouch filling machines. (R.1, ¶ 28.)

C. Plaintiffs' Investigation of Defendants' Products

In July 2014, Plaintiffs learned that FillShape may be offering for sale competitive hot filling and aseptic cold filling machinery. (R.1, ¶ 29.) Plaintiffs responded and began an investigation to determine if Mr. Furlotti and Defendants misappropriated any of Plaintiffs' technology and/or utilized INDAG's patented technology in the design of Defendants' hot filling machine and aseptic cold filling machine. (Id. ) During the investigation, Plaintiffs learned that on multiple occasions shortly prior to Mr. Furlotti's resignation, he copied over 25,000 electronic files onto an external hard drive without permission. (Id. , ¶ 30.) The copied files include Plaintiffs' drawings and schematics and the identification of vendors that supply components for Plaintiffs' pouch making and filling technology. (Id. ) Mr. Furlotti copied, for example, technical schematics of a gripper and linear filler portion of a pouch filling machinery. (Id. , ¶ 32.) In addition, Mr. Furlotti and Defendants contracted with Plaintiffs' vendors to construct their parts—vendors who Plaintiffs endeavored to keep their identity confidential and proprietary. (Id. , ¶ 33.) Plaintiffs allege that...