sanders lead company v. stannum group et. al

8/2/2019 Sanders Lead Company v. Stannum Group et. al.

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UNITED STATES DISTRICT COURiFOR THE MIDDLE DISTRICT OF ALABAMA

NORTHERN DIVISION I.SANDERS LEAD COM PANY, INC.an Alabama corporation,Plaintiff) COMPLAINT FORV.DAMAG ES AND) DECLARATORY) RELIEFSTANNUM GROUP, LLCa Nevada Limited Liability Company,)) JURY TRIAL DEMA NDEDSTANNUM INTERNATIONAL, LLCa Nevada Limited Liability Company,and)S. P. METALS, INC.a Texas corporation,Defendants.

COMPLAINT FOR DAMAGESAND DECLARATORY JUDGMENT

Plaintiff, Sanders L ead Co mp any, Inc. ("Sanders"), alleges as follows for itsCom plaint for Dam ages and for D eclaratory Judgment against Defendants,Stannum G roup LLC , Stannum International, LLC, and S .P. Metals, Inc.:

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PARTIES1. Plaintiff Sanders is an Alabama corporation with its principal place of

business at I Sanders Road, Troy, AL 36079.2. Upon information and belief, Defendant Stannum Group, LLC

("Stannum Group") is a Nevada limited liability company whose registered agentis The Corporation Trust Company of N evada, 31 1 S. Division Street, Carson City,Nevada 89703. On information and belief, this defendant has its principal place ofbusiness in Texas.

3. Upon information and belief, Defendant Stannum International, LLC("Stannum International") is a Nevada limited liability company whose registeredagent is The Corporation Trust Company of Nevada, 311 S. Division Street,Carson City, Nevada 89703. On information and belief, this defendant has itsprincipal place of business in Texas.

4. Upon information and belief, Defendant S. P. Metals, Inc. ("S.P.Metals") is a Texas corporation whose registered agent is Robert Seebeck, 480 W.Highland St., Southlake, TX 76092, having its principal place of business in Texas.

JURISDICTION AND VENUE5. Sanders brings this action under Title 35 of the United States Code,

and under 28 U.S.C. 2201-2202, to obtain a declaration of non-infringementand invalidity and other matters with respect to U.S. Patent No. 8,105,416 ("the

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'416 patent" attached as Exh. A, also sometimes referred to as "application12/774,220").

6. Accordingly, this Court has subject matter jurisdiction under 28U.S.C. 1331 and 1338(a).

7. This is also an action to obtain compensatory damages for breach ofcontract arising under the law of the State of Alabama, and also for a declaration ofrights among the parties relating to contract between Sanders and Defendants.There is complete diversity between Sanders and the Defendants. As the amount incontroversy exceeds $75,000 exclusive of interests and costs, this Court hasdiversity of citizenship jurisdiction over Sanders' state law contract claimspursuant to 28 USC 13 32 .

8. The federal and state law claims alleged herein arise out of a commonnucleus of operative facts. Accordingly, this Court also has supplementaljurisdiction over the state law contract claims. Exercising supplementaljurisdiction over the state law claims asserted herein would promote judicialeconom y, convenience, and fairness to the parties.

9. This Court has personal jurisdiction over Defendants because eachDefendant has had systematic contacts in this district, including multiple businessmeetings, transacting business, such as providing technical assistance to and

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entering into contractual agreements with Sanders, and attempting to license the'416 patent.

10. Venue in this judicial district is proper under 28 U.S.C. 1391 in thata substantial part of the events or omissions giving rise to the claim occurred in thisdistrict. Venue is also proper under 28 U.S.C. 1400(b) in that a substantialquestion regarding patent infringement and invalidity exists concerning Sanders'activities in this judicial district, and a substantial question exists whether Sandershas committed or will commit acts of patent infringement in this judicial district,and Sande rs has a regular and established place of business here.

FACTUAL BACKGROUND11. Plaintiff Sanders is a lead recycling company founded in 1973 and

based in Troy. Sanders refines lead reclaimed from car batteries and other sourcesby removing impurities to produce metallic lead. Sanders sells metallic lead to itscustomers, and also processes and sells other materials obtained from the recyclingprocess. The reclamation process allows lead, an important metal for automobileand other batteries, to be reused and eliminates what would otherwise be anenvironmental hazard.

1 2 . Defendant Stannum Group holds itself out as owner of the '416patent, entitled "Method for Reclaiming Lead," filed on May 5, 2 010 and issued onJanuary 31, 2012 naming Jerry D. Schulz, Robert E. Seebeck, and Lawrence G.

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Eagan as inventors. The '416 Patent claims a process of detinning lead by addinga product of conventional detinning operations, such as tin dross (describedbelow), back into the kettle in the presence of caustic soda. This causes a slag ofimpurities to be formed on the surface of the kettle, which is removed, resulting inquality lead content remaining in the k ettle.

13. The '416 patent is invalid. On May 5, 2010, Stannum Group filedapplication 12/774,220 from which the '416 Patent was later issued. The PatentAct provides that a patent is invalid if the alleged inventions claimed in the patentwere in public use, on sale, or known an d used by others mo re than one year beforethe patent application was filed. See 35 U.S.C. 102(b). As such, the one-year dateprior to filing of the '416 patent is May 5, 2009. As shown below, Sanders wascommercially practicing the alleged inventions claimed in the '416 Patent as earlyas September 2005, more than 4 years before Stannum Group filed the applicationfor the '416 patent. Also, there exists other prior art which, alone or incombination, describes or discloses all of the steps of the '416 patent claims. ThePatent Act also provides that a patent is invalid if the patent applicant did nothimself invent the claimed invention. See 35 U.S.C. 102(f). It was not Schulz,Seebeck and Eagan who began using the detinning process claimed in the '416Patent, but Stannum Group obtained information relating to the process andsecretly filed a patent application on it when Stannum Group had no right to do so.

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The claims of the '416 patent are also invalid as anticipated by several prior artreferences, such as issued U.S. patents and certain published articles disclosingprocesses and methods for lead refining and lead detinning. The '416 patent is alsoinvalid because it went abandoned pursuant to 35 U.S.C. 122 because StannumGroup failed to rescind a nonpublication request filed in the 1 2 /774,2 2 0 applicationafter filing an international PCT application for the same alleged inventions andclaiming priority to the 12 /774,2 2 0 application.

14. Stannum Group is now trying to use this unlawfully obtained patentagainst Sanders to extract roya lties or other consideration from Sanders for aprocess that Sanders itself began using in 2005. Given the circumstances discussedbelow, if the patent were to be held valid, Sanders w ould be entitled to an equitable

license to it.S.P. Metals Came to Alabama to Transact Business with Sanders15. An individual named Robert Seebeck approached Sanders in the 2005

timeframe offering to improve Sanders' process for reclaiming tin from lead,which is also called detinning. Seebeck and his business associate, Mike Pizzuto,visited Sanders in Troy, Alabama and represented they could assist Sanders withimproving the detinning process. Seebeck said he and Pizzuto were acting onbehalf of S.P. Metals.

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1 6 . On or about June 6, 2005, Seebeck and Pizzuto came to Sanders' leadrecycling facility for the purpose of entering into an agre eme nt with Sanders. Onthat date, Sanders an d S.P. Me tals signed a letter of intent in this district underwhich S.P. M etals agreed to provide Sand ers with certain technical assistance inlead refining. Exh. B attached hereto. In return, Sanders agreed to supply to S.P.Metals at least fifty percent (50%) of the tin dross produc ed. Tin dross is abyproduct of conventional lead detinning operations such as those at Sanders. Tindross, as produced in Sanders' recycling process, contains tin oxide, lead oxide,and other metals and substances. Lead oxide comprises a large portion of the tindross produced at Sanders.

1 7. In 2005 Pizzuto, a metallurgist, was on site at Sanders' Troy facility

with its plant personnel and taught Sande rs to add lead oxide (PbO), which Sanderspurchased from a vendor, and caustic soda (NaOH ) to molten lead bullion toimprove extraction of tin. The addition of lead oxide and caustic soda, anArrhe nius base, improved the ex traction of tin by chemical oxidation, i.e., creatinga separate layer of tin dross at the top of the mo lten mixture that can be remo ved,ultimately reducing the am ount of tin in the remaining lead bullion, and reducinglead lost in the kettle.

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Sanders' Use of Tin Dross for Detinningand Sanders' Sale of Products from this Process

1 8 . By September 2005, Sanders did not have on hand a sufficient supplyof lead oxide from a vendor to perform the detinning, as taught by Pizzuto. At thattime, though, Sanders held in storage an abundance of tin dross produced from itsdetinning operations. Sanders' employees, including Edgar Fannin and BartSanders, proposed Sanders' own tin dross as a source of lead oxide to performdetinning in the absence of a sufficient supply of lead oxide from a vendor.

1 9 . In September 2005, after discussing with Pizzuto the use of tin drossas a source of lead oxide for detinning, the Sanders' employees then used tin dross,along with caustic soda, in a kettle containing lead bullion and then agitated. Theresultant chemical reaction between the tin dross, caustic soda, and lead bullionsimilarly drew tin out of the lead bullion in the form of a layer of slag on thesurface of the molten contents of the kettle. This layer of slag was then removedfrom the kettle, resulting in lead bullion with a lower tin content, and also in lesslead lost in the tin dross. Shortly afterward, in September 2005, Sanders sold tocustomers the lead produced by this process.

20. The use in detinning of caustic soda and lead oxide, first obtainedfrom a vendor and then later from Sanders' own tin dross, was termed the "RazorProcess" by a Sanders em ployee.

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Sanders' Agreements with S.P. Metals21. On September 13, 2005, Sanders and S.P. Metals executed a

"Confidentiality and Non-Disclosure Agreement" (hereinafter, "the September2005 NDA") in which Sanders agreed to engage S.P. Metals to provide Sanderswith "services involving lead refining, and such other services as [Sanders] and[S.P. Metals] may agree upon from time to time, and [S.P. Metals] hereby agree[d]to provide the Services to [Sanders]." S ee Exh. C attached hereto.

22. The September 2005 NDA also stated that the "Parties agree not todivulge, reveal, report or use, for any purpose, any confidential information whicheither of the Parties has obtained or which was disclosed to either of the Parties bythe other Party." Id. at 7. The September 2005 NDA provided that it wouldexpire after five (5 ) years. Id. at 6 .

23. On January 10, 2006, S.P. Metals and Sanders entered into a five-yearagreement entitled "General Agreement/Transaction: Lead Refining" (hereinafter,"the January 2006 Agreement") by which Sanders agreed to sell "a minimum 50%[tin] dross/slag produced using the 'Razor Process" to S.P. Metals in return for

S.P. Metals' agreement to "continue to provide Sanders with technical support andassistance as may be required." See Exh. D attached hereto. Sanders agreed to useits best efforts to insure the dross/slag provided contained 18-20% tin. The January

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2006 Agreement provided for a term of five (5) years from the date of execution,but could be terminated upo n thirty (3 0) days written notice to the other party.

24. Sanders provided tin dross from the Razor Process to S.P. Metals,making it available for S.P. Metals to pick up at Sanders' Troy facility. Sanders infact provided more than 50% of the tin dross from the Razor Process to Defendantsfor more than 6 years up to the present. The tin dross produced by the RazorProcess is a valuable product and Defendants' receipt of it for more than 6 yearswas a su bstantial benefit they received in this district.

25. On information and belief, in 2008, Pizzuto and S.P. Metals -including Seebeck and Schulz - parted company. S.P. Metals informed Sandersthat tin dross from Sanders would be shipped not to Pizzuto's Mexican companybut to an entity called ECS in Texa s.

26. The September 2005 NDA expired in September 2010, and was notrenewed.

27. On or about January 5, 2011, Seebeck, who had been a representativeof S.P. Metals in its dealings with Sanders since 2005, requested Sanders sign an

extension of the January 2006 Agreement" with Stannum International. Sandersagreed to an extension to June 1 0, 201 1 .

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28. Seebeck represented to Sanders that S.P. Metals had assigned therights to its contractual arrangements with Sanders to Stannum International, butSanders never received a copy of an executed assignment.

The So-Called "Improved" Razor Process29. Afterwards, in 2011 Stannum International requested Sanders also

extend the September 2 005 ND A, but Sanders did not do so. Stannum Internationalthen told Sanders it had developed an "Improved Razor Process" which StannumInternational would disclose to Sanders only if Sanders signed a new NDA.Stannum International communicated to Sanders that Sanders' execution of a newNDA was linked specifically to disclosure of the details of Stannum International's"Improved Razor Process" for testing and evaluation by Sanders.

30. In June 2011, Sanders Lead and Stannum International entered into anew "Confidentiality and Nondisclosure Agreement" ("June 2011 NDA"). SeeExh. E at p. 2. Paragraph L(a) of the June 2011 NDA states "ConfidentialInformation' means all information, data, knowledge and know-how (in whateverform and however communicated or maintained, whether orally, electronically,digitally, graphically, documentary or otherwise), described in Recital C to thisAgreement Disclosing Party, itself or through one of its Representatives, deliversor discloses to the Recipient... " Recital C was never delivered to Sanders byStannum International.

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31. Shortly after execution of the June 2011 NDA, Stannum Internationaldid in fact disclose information to Sanders relating to the "Improved RazorProcess" so that Sand ers could run trials and evaluate the process.

32. The January 2006 Agreement terminated on June 10, 2011. And theJune 2011 NDA contains no obligation for Sanders to provide to StannumInternational any of the tin dross produced by Sanders in its detinning operations.Therefore, Sanders is currently under no obligation to continue shipping 50% ofthe tin dross from its detinning using the Razor Proce ss to Stannum International.

33. The June 2011 NDA does not apply to any information disclosed priorto June 15, 2011. Accordingly, under the June 2011 NDA Sanders has noobligation to maintain as confidential any information disclosed pursuant to theSeptember 2005 NDA .

34. Beginning in or about August 2011, Sanders conducted trial runs ofthe "Improved Razor Process." Stannum International offered Sanders a licenseagreement on the "Improved Razor Process." Sometime after commencing trialruns of the "Improved Razor Process," Sanders informed Stannum International

that Sanders declined at that time to enter into a license agreement on the"Improved Razor Process."

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Defendants Threaten Sanders

35. On or about December 30, 2011, Stannum International sent Sandersan email demanding that Sanders stop shipping "Razor slag" to one or more thirdparties because Sanders was "using [Stannum International] intellectual propertyand not compensating [Stannum International]" and because such third partiescould "learn of our process and may be able to reverse engineer it by analyzing the

slag." See Exh. F attached hereto.36. In response, Sanders sent a letter dated January 6, 2012. Among other

things, this letter cited expiration of the September 2005 NDA and the January2006 Agreement, and denied any obligation by Sanders to provide to any of thedefendants 50% of the tin dross from Sanders' use of the Razor Process. This letteralso cited certain articles and publications authored by others in existence beforethe filing of the '416 patent, and stated that the Razor Process "has been in thepublic domain for a very long time. And its technology can no longer be held asconfidential or regarded as proprietary. Any associated intellectual property nolonger exists."

37. A meeting between Sanders and Defendants occurred in Troy onJanuary 24, 2012. During the discussions, Defendants provided to Sanders a letterfrom a lawyer for Stannum International and Stannum Group. The letter, datedJanuary 20, 2 01 2 , attached hereto as Ex. G, states, among other things,

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The information contained in the articles [cited in Sanders' January 6,2012 letter] generally relates to lead processing, but contains severalsubstantial differences from the claimed process in the pending patentapplications. The lead refining process disclosed and claimed in thepending applications contains novel elements that are not described inthe cited references. As such we are assisting Stannum Group, LLC, tovigorously pursue protection for its intellectual property. The statementin the January 6, 2012 letter that "any associated intellectual property nolonger exists" is therefore false. In fact, one of the applications hasreceived a notice of allowance and will be issuing in short order.Upon issuance, Stannum Group, LLC, will have the ability to stopothers from utilizing the lead refining process that is claimed.

(Emphasis added). The '416 patent issued just days later, on January 31, 2012, andthe defendants provided a copy of it to Sanders.

38. In prosecuting the application leading to the '416 patent, StannumGroup spec ifically requested the application not be published as would norma lly bedone. In making the non-publication request, as required by 35 U.S.C. 122,Stannum Group represented to the Patent Office that the patent application "hasnot and will not be the subject of an application filed in another country, or under amultilateral international agreement, that requires publication at eighteen monthsafter filing." Stannum Group, however, did file such a multilateral international

application on April 22, 2011 under the Patent Cooperation Treaty, WO2011/139603 A2, claiming priority to the application which was issued as the '416patent, but did not rescind the non-publication request as required by law. As a

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result, the application leading to the '416 patent was never published, and was notavailable to Sanders until after it was issued on January 31 , 201 2 .

39. Defendants Stannum International and Stannum Group and/or theirrepresentatives also demanded Sanders agree to pay royalties and sign a licenseagreement licensing the '416 patent in order to perform the "Razor process."Defendants sent a proposed license agreement to Sanders on or about February 21,2012, saying in a cover letter that the proposed license "allows Sanders to continuereaping the significant financial and operational benefits of the Razor Process."On March 16, 2012, Defendants re-sent the cover letter and proposed license toSanders, reasserting the demand for royalties.

40. Defendants have breached the September 2005 NDA by using anddisclosing the Razor Process - which was partially developed by Sandersemployees - in applying for and obtaining a patent on the Razor Process during theterm of the September 2 005 NDA . The September 2 005 NDA specifically providesthat both parties "agree not to divulge, reveal, report or use, for any purpose, anyconfidential information which either of the Parties has obtained or which was

disclosed to either of the Parties by the other Party." Exh. C at p. 3. ButDefendants have used the information about Sanders' own tin dross as a detinningagent for Defendants' own purposes by obtaining a patent secretly withoutdisclosing the application to Sanders until it was days away from issuance.

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Defendants' conduct has been to the detriment of Sanders. In furtherance of theirsecret scheme, Defendants filed a nonpublication request for the 12/774,220application to prevent publication of the application by the Patent Office in theordinary course.

41. In light of Defendants' recent actions and statements, Sanders is atrisk of being sued now for patent infringement for using its own tin dross in theRazor Process. Sanders is under a real and ongoing apprehension that it will besued by the Defendants for infringement of one or more claims of the '416 patentor be sued for breach of contract. Thus, Sanders faces the impossible situation inwhich a process it began using in 2005, and which has lost any cloak ofconfidentiality, is now being offered ba ck to Sande rs for a price.

42. As a result, Sanders has changed its detinning process so that it nolonger includes addition of tin dross into the kettle from a previous kettle run. Thischange in detinning is done at increased cost and loss of efficiency, and Sandersseeks an order from this Court giving Sanders the ability to use its own tin dross inits detinning process without the threat of patent infringement litigation by

Defendants.43. The Defendants have obtained U.S. patent 8,105,416 through the

efforts and expense of Sanders in developing and improving the process fordetinning using tin dross and caustic soda. By determining that tin dross could be

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used instead of lead oxide from a vendor, Sanders made a critical improvement tothe process which Pizzuto originally taught Sanders in 2005, and Sanders did sousing its own plant, equipment and personnel without any reimbursement byDefendants. Defendants contributed nothing towards improvement of the originalmethod taught by Pizzuto of adding caustic soda and lead oxide purchased from avendor. Defendants were more than fully compensated for their technicalassistance to Sanders by receipt of more than 50% of the tin dross resulting fromSanders' use of the Razor P rocess for a period in excess of 6 years.

44. Defendants encouraged Sanders to use the Razor Process inasmuch asSanders was providing tin dross to Defendants. Prior to January 2012, Defendantsdid not tell Sanders they planned to apply for a patent or would demand royaltiesfor using the process. If Defendants had told Sanders their intentions, Sanderswould have taken action to protect itself at the outset of the relationship withDefendants, and throughout.

45. Sanders' own plant, equipment and personnel directly contributed toDefendants' obtaining of a patent. Defendants demonstrated consent, acquiescence,inducement and/or assistance to Sanders' use of the process for more than 5 years.Defendants' actions and all the circumstances - including the agreements amongthe parties - demonstrate that all parties expected Sanders' obligation to provideDefendants with tin dross would terminate after June 10, 2 01 1 .

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46. In filing application 12/774,220 on May 5 , 2010 (from which the '416patent later issued), Schulz, Seebeck and Eagan were not the correct inventors of

the claimed process47. An actual, immediate, and justiciable controversy exists between

Plaintiff and the Defendants concerning whether the '416 patent is infringed,unenforceable, and invalid.

48. An actual, immediate, and justiciable controversy also exists betweenSanders and defendants with respect to whether Sanders breached or will breachthe January 2 006 Agreement between it and Defendants.

COUNT!(Breach of Contract: The September 2005 NDA)

49. Plaintiff incorporates the allegations contained in paragraphs 1through 48 of this Complaint as though set forth in full herein.

50. The Defendants have breached the September 2005 NDA - by usingand disclosing information obtained from Sanders - in secretly applying for and

obtaining a patent on the R azor Process, which Defendants obtained on January 3 1 ,2012. This has resulted in Defendants' holding of a patent by which they aredemanding Sanders pay patent royalties - possibly until the year 2030 when the'416 patent would expire. Sanders has suffered compensatory damages exceeding

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$75,000, exclusive of interest and costs, by being forced to alter its detinningprocess to conform to the patent, and has expended other sums as a proximateresult thereof.

COUNT II(Declaratory Judgment of Non-Infringement, 28 U.S.C. 2201-2202)

51. Plaintiff incorporates the allegations contained in paragraphs 1through 50 of this Com plaint as though set forth in full herein.

52. Plaintiff is entitled to a declaration that Plaintiff has not and is notinfringing, directly or indirectly, any valid or enforceable claim of the '41 6 patent.

53. Plaintiff is entitled to further necessary or proper relief based on theCourt's declaratory judgment or decree.

COUNT III(Declaratory Judgment of Invalidity, 28 U.S.C.20 1 - 220 2 )54. Plaintiff incorporates the allegations contained in paragraphs 1through 53 of this Com plaint as though set forth in full herein.55. The claims of the '416 patent are invalid for failure to meet the

requirements of the patent laws of the United States, including at least 35 U.S.C. 102, 103, and 112, or are otherwise unenforceable.

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56. The claims of the '416 patent are also invalid as anticipated by severalprior art references, such as issued U.S. patents and certain published articlesdisclosing processes and methods for lead refining and lead detinning. Suchanticipatory prior art includes, without limitation, U.S. Patent Nos. 1,573,830,2,155,545, and 2 ,241 ,806 .

57. The claims of the '416 patent are invalid as anticipated by inventions,disclosures, systems, and processes publicly used, known, patented, and/orpublished before the '416 patent was filed.

58. The claims of the '416 patent are invalid because the patentedinvention was sold, or offered for sale, more than one year before the applicationfor the '416 patent was filed on May 5, 2010, including by Sanders'commercialization of the claimed process in the '416 patent, and by Sanders' salesof products produced by the claimed process, all of which occurred before May 5,2009 .

59. The claims of the '416 patent are invalid as obvious and unpatentableover prior art references, taken alone or when taken together pursuant to the

holding in KSR International Co. v. Teleflex, Inc. 12 7 U.S. 172 7, 173 1 (2007).60. The claims of the '416 patent are invalid and indefinite for failing to

satisfy the requirements for an adequate invention disclosure and writtendescription in the patent specification, including but not limited to, failing to

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adequately disclose and particularly claim the subject matter that the applicantsregarded as their invention.

61. Under 35 Usc 1 2 2 (b)(2)(13 )(iii) , the '416 patent became abandoned45 days after Stannum Group's filing of a PCT application on April 22, 2011,because the ap plicant failed to rescind its non-publication request.

62. If the '416 patent were held valid despite the foregoing, under 35 usc102(f), the '416 patent would be invalid because it does not list the correctinventors.

63. Accordingly, Sanders is entitled to a declaration by the court that theclaims of the '416 patent are invalid or are otherwise unenforceable. Sanders isentitled to further necessary or proper relief based on the Court's declaratoryjudgment or decree.

COUNT IV(Unjust Enrichment)

64. Sanders incorporates Paragraphs 1 - 6 3 as if fully set forth herein.65. To the extent U.S. patent 8,105,416 is valid and enforceable,

Defendants have received a benefit from Sanders under circumstances whichwould make it unjust for Sanders not to receive the benefit of this patent.Defendants have been unjustly enriched by their conduct in taking for themselves

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exclusive rights to the Razor Process by secretly patenting it without Sanders'knowledge or consent. This taking not only deprived Sanders of the financial gainit could have realized had Defendants paid for an exclusive license or assignmentof rights, but also betrayed Sanders and deprived Sanders of its prerogative not topatent its own invention or to exclude others from benefiting from it.

66. Sanders is entitled to any financial gain obtained by the Defendantsfrom the patent, in addition to a fully paid up license to practice the processdescribed therein.

COUNTY(Equitable License to U.S. P atent 8,104,416)

67. Sanders incorporates Paragraphs 1- 6 6 as if fully set forth herein.68. To the extent the patent is held to be valid and enforceable, Sanders is

entitled to an equitable license to it, fully paid up, as well as to any other patent (inthe U.S. or internationally) which m ight issue in the future claiming sim ilar rights.

COUNT VI(Declaratory Judgm ent Relating to Contract)

69. Sanders incorporates Paragraphs 1- 6 8 as if fully set forth herein.70. Sanders has fully complied with its obligations under the terms of its

agreements with Defendants.

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71. Despite Sanders' compliance, a genuine controversy has arisenbetween the parties regarding Sanders' compliance with its obligations under theterms of the agreements between it and Defendants and whether such obligationsare ongoing or have since exp ired.

72. Sanders is entitled to a declaratory judgment that the September 2005NDA and the January 2 006 A greement have expired.

73. Sanders is entitled to a declaratory judgment that it is no longer boundby the January 2006 Agreement, and thus that Sanders is under no obligation toprovide any tin dross processed by the "Razor Process" to Defendants.

74. Sanders is entitled to a declaratory judgment that any informationdisclosed pursuant to the September 2005 NDA is no longer confidential due to theexpiration of the September 2005 NDA as well as the fact that all such informationis now publically available from three separate U.S. patent applications, includingthe application that ultimately issued as the '416 patent, each of which relates tothe Razor Process and lists Defendant Stannum Group as assignee.

75. Sanders is entitled to a declaratory judgment that the June 2 01 1 NDAapplies only to the "Improved Razor Process" or to any future disclosure ofconfidential information betwe en the parties, and thus does not apply to anyinformation exc hanged be tween the pa rties prior to its effective date of June 1 5,2 01 1 .

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W HERE FORE, Sanders respectfully prays the Court will:a. Em panel a jury to hear evidence and , after a full trial on the merits, award

Sanders compensatory damages;b. Enter an order de claring that Sanders is not infringing any va lid and

enforceable claim of the '41 6 patent either directly or indirectly;c. Enter an order declaring that the claims of the '41 6 patent are invalid and

unenforceable;d. Enter an order de claring that Sanders is entitled to any financial gain

obtained by the Defendants from the '416 patent, in addition to a fullypaid up license to it;

e. Enter an order declaring that Sanders has an equitable license to the '41 6patent;

f . Enter an order declaring that Defendants breached the September 2006NDA by using and disclosing Sanders' information in making the '416patent ap plication;

g. Enter an order declaring that Defenda nts have been unjustly enriched bythe issuance of a patent that was improperly and secretly obtained usingSanders' confidential information;

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h. Enter an order declaring that Sanders has not breached any agreementbetween it and Defendants;

i. Enter an order de claring that Sanders has fulfilled its contractualobligations to S.P. Metals;

j. Enter an o rder declaring that San ders fulfilled its contractual obligationsto Stannum International pursuant to any contract assigned to StannumInternational by S.P. Metals;

k. Enter an order declaring that the 2005 and 2 006 agreements betweenSanders and one or m ore of the Defendants are expired;

1. Enter an order declaring that ongoing sales of Sanders' tin dross to thirdparties will not constitute breach of contrac t since any applicable contractis expired;

m. Enter an order declaring that the June 2 01 1 NDA applies only to the"Improve d Razor Proc ess" or to any future disclosure of confidentialinformation betw een the parties, and thus does not apply to anyinformation exchanged between the parties prior to June 2 01 1 ;

n. Enter an awa rd of attorneys fees in favor of Sanders on acco unt of thisbeing an exceptional case under 35 U.S.C. 28 5;

o. Enter an order awa rding Sanders such other and further relief as theCourt may deem just and proper.

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Respectfully submitted this 2 0th day of March, 201 2 .

oseph S. B ird IIIBIROO 1

Plaintiff, Sanders Le ad Com pany, Inc., dem ands trial by jury.

Rfseph S. Bird IIIOf Counsel:BRADLEY ARANT BOULT CUMM INGS LLPPaul W. Sykes, Esq. (SYK003 )One Federal Place18 1 9 Fifth Avenue NorthBirmingham, AL 352 03-21 19Ph: 205.521 .8000Fax: 205.521 .88 00Quindall E. Segall, Esq.Alabama Center For Commerce401 Adams AvenueSuite 78 0Montgomery, AL 36 1 04P: 33 4.956.7700F: 3 3 4.9 56.7701Of Counsel:

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CERVERA RALPH & REEVES LLCGrady A. Reeves, Esq. (REE042 )Matthew M. Baker, Esq. (BAK O 1 7)P.O. Box 3259 1 4 South Brundidge StreetTroy, Alabama 36 081 -032 5Ph: 33 4.566 .011 6Fax 334.566.4073.Attorneys for Sanders Lead Company, Inc.

Please Serve the Summ ons & Com plaint on:Stannum Group, LLCdo The Corporation Trust Com pany of N evada31 1 S . Division StreetCarson City, Nevada 89 703Stannum International, LLCdo The Corporation Trust Company of Nevada31 1 S . Division StreetCarson City, Nevada 89 703SP Metals, Inc.do Robert Seebeck48 0 W. Highland St.Southlake, TX 7609 2

sanders lead company v. stannum group et. al

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