United States District Court, D. Maryland, Southern Division
J. HAZEL, UNITED STATES DISTRICT JUDGE
patent infringement case, Defendant/Counter-Plaintiff EFC
Systems, Inc. asserts five counterclaims against
Plaintiff/Counter-Defendant Durr Systems, Inc. ECF No. 20.
Pending before the Court is Durr Systems, Inc.'s Motion
to Dismiss Counts III, IV, and V of EFC's Amended
Counterclaims, which assert violations of the Lanham Act, 15
U.S.C. § 1125 (Count III), unfair trade practices in
violation of Maryland Commercial Code §§ 13-301,
et seq. (2017) (Count IV), and tortious interference
with business expectancy in violation of Maryland common law
(Count V). ECF No. 25. No. hearing is necessary. See
Loc. R. 105.6 (D. Md. 2016). For the following reasons, Durr
Systems, Inc's partial Motion to Dismiss is granted.
Systems, Inc. (Durr) is a United States subsidiary of the
German parent company, Dürr AG. ECF No. 20 ¶ 10.
Dürr Systems AG is a German subsidiary of the same
parent company. See ECF No. 20-2. Neither Dürr
AG, the parent company, nor Dürr Systems AG, the German
subsidiary, are parties to this case. ECF No. 20 ¶¶
AG, the non-party parent company, manufactures robotic paint
systems for the automotive and industrial paint industries.
ECF No. 20 ¶ 10. Automatic and industrial paint
application is accomplished by using rotary atomization paint
systems that utilize a “bell cup, ” which
attaches to the end of a turbine and rotates at high speed.
Id. ¶ 7. Paint is injected into the center of
the bell cup from the rear, and the bell cup's rotation
moves paint to the edge of the cup by centrifugal force,
resulting in atomization of the paint into small droplets.
Id. Durr, the United States subsidiary that is a
party to this case, markets and sells its parent
company's robotic paint systems and components (i.e.,
turbines and bell cups) in the United States to automobile
manufacturers. Id. ¶ 9. Durr and Dürr AG
sell bell cups under the name Ecobell3. See Id.
¶ 47; ECF No. 20-2 at 4.
Systems, Inc. (EFC) is an alternative source for industrial
paint equipment. Id. ¶ 11. EFC does not
manufacture or sell robotic arms, robotic control systems, or
similar equipment but specializes in the design,
construction, and manufacture of turbines and bell cups, as
well as other critical parts for industrial paint equipment,
such as color changers and fluid valves. Id. ¶
alleges that Frank Herre, a Senior Manager for Process
Development at Dürr Systems AG-the German
subsidiary-made a presentation on February 8, 2018 to
automobile manufacturer Jaguar Landrover (JLR) in which he
indicated that certain EFC turbines infringed on patents for
the EcoBell3 turbine. Id. ¶ 45; ECF No. 20-2 at
2, 12. The last page of the presentation materials includes
Mr. Herre's contact information:
at 11. Every page of the presentation lists
Dürr Systems AG as the copyright holder of the
presentation. Id. at 2-11.
presentation was made in response to a complaint lodged by
JLR about the high cost of spare parts for turbines and
certain vibration issues “of the DURR turbines on the
EFC test stand.” ECF No. 20 ¶ 47; ECF No. 20-2 at
4. JLR is both an EFC, Durr, and Dürr Systems AG
customer, utilizing certain robotic paint systems in its
automobile assembly lines. ECF No. 20 ¶ 48; ECF No.
20-2. In connection with those paint robots, JLR utilizes
turbines and bell cups purchased from both Durr and EFC. ECF
No. 20 ¶ 48.
presentation's discussion of EFC's competing turbine,
Mr. Herre referred to the EFC turbine as a
“clone” of the “EcoBell3 turbine, ”
indicating that it infringed on the patent. Id. The
EFC turbine pictured in the presentation is EFC part number
34-1A00. Id. ¶ 49. In November of 2017,
Durr's counsel and EFC's representatives communicated
regarding EFC 34-1A00 parts being sold by EFC to JLR.
Id. More specifically, through those discussions,
Durr's counsel admitted that the EFC 34-1A00 parts being
sold to JLR did not infringe Durr's patents due to
certain distinctions between the EFC and Durr designs.
context, EFC alleges that Mr. Herre's statements to JLR
approximately three months later were knowingly false.
Id. ¶ 50. EFC further alleges that “those
statements were made with intent to cause harm to EFC”
and that they have caused reputational harm to EFC.
Id. ¶ 51. Since Mr. Herre's presentation,
JLR has not purchased any more of the turbines mentioned in
the presentation from EFC. Id.
separate incident at an unknown time, a Durr representative
met with an automobile manufacturer who had previously
purchased and installed robotic paint equipment sold by Durr.
Id. ¶ 56. The customer was at the time
considering the purchase of EFC bell cups to be used in place
of Durr's bell cups on the Durr robotic paint equipment.
Id. ¶ 57. When the Durr representative learned
that the customer was considering switching to EFC bell cups,
the Durr representative told the customer that they could not
purchase EFC's bell cups due to a patent infringement
issue. Id. EFC experienced economic and reputational
harm as a result of this and other similar incidents.
Id. ¶ 58.