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CASE NO.
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

David A. Makman (California State Bar No. 178195)
Robert C. Matz (California State Bar No. 217822)
Makman & Matz LLP
655 Mariners Island Blvd., Suite 306
San Mateo, CA 94404
Telephone: (650) 242-1560
Facsimile: (650) 242-1547
E-mail: david@makmanmatz.com
E-mail: robert@makmanmatz.com

Attorneys for Plaintiff Elite Materials Co., Ltd.




IN THE UNITED STATES DISTRICT COURT

FOR EASTERN DISTRICT OF CALIFORNIA

SACRAMENTO DIVISION

ELITE MATERIALS CO. LTD., a
Taiwan, R.O.C. corporation,

Plaintiff,
v.
ISOLA USA CORPORATION,

Defendant.
CASE NO.

ELITE MATERIALS CO., LTD.s COMPLAINT
FOR DECLARATORY JUDGMENT OF
PATENT INVALIDITY AND NON-
INFRINGEMENT
(28 U.S.C. 2201, 2202; 35 U.S.C. 100, et. seq.)




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CASE NO. 1
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

COMPLAINT AND REQUEST FOR DECLARATORY RELIEF

Plaintiff the Elite Material Co., Ltd. (EMC, by its attorneys, for its Complaint
against Defendant Isola USA Corporation (Isola), alleges as follows:
NATURE OF THE ACTION

1. This is an action for a declaratory judgment that U.S. Patent No. 6,083,855 (the
855 Patent), which was filed on January 4, 1999, and issued and published on July 4, 2000,
is invalid and unenforceable and therefore not infringed by EMC. A true and correct copy of
the 855 Patent is attached hereto as Exhibit 1.
2. The 855 Patent generally relates to the manufacture of prepregs and laminates.
Prepreg is a term used to describe pre-impregnated" composite fibers where a matrix material,
such as epoxy, is already present. The fibers and the matrix are bonded together and to other
components during manufacture. Prepregs are used to create printed circuit boards. The
abstract of the 855 Patent reads as follows:
A method for manufacturing a cured resin impregnated substrate comprising placing a
substrate into a impregnation zone including a solvent containing curable resin to
produce a resin impregnated substrate and at least partially curing the resin impregnated
substrate to produce a cured resin impregnated substrate, wherein the number of voids in
the cured resin impregnated substrate are reduced by processing the substrate in at least
one processing step that reduces the number of voids in the cured resin impregnated
substrate product.
THE PARTIES
3. EMC is a corporation organized and existing under the laws of Taiwan, ROC,
having its principal place of business at No. 18 Datong 1
st
Road, Guanyin Township, Taoyuan
County Taiwan, R.O.C. EMC manufactures prepregs products in Taiwan and sells them to
customers in United States and throughout the world.
4. On information and belief, Isola is a corporation organized and existing under
the laws of the State of Delaware and has business address in this district at 3233 Dwight
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CASE NO. 2
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

Road, Elk Grove, CA. Upon information and belief, Isola is the only entity with a present
interest in the 855 Patent.
5. Isola has a registered agent in Delaware having an address at the Corporation
Trust Company, Corporation Trust Center 1209 Orange Street, Wilmington, DE.
6. On information and belief, Isola does business in this District including the
manufacture, sale and/or purchase of goods and/or services in this district.
JURISDICTION AND VENUE

7. The claims asserted in this Complaint are brought pursuant to the Declaratory
Judgment Act, 28 U.S.C. 2201 and 2202, and arise under the patent laws of the United
States, 35 U.S.C. 100, et seq.
8. There is an actual justiciable case or controversy pursuant to 28 U.S.C. 2201
regarding the validity and infringement of the 855 Patent. A judicial declaration that the claims
of the 855 patent are invalid and that the Plaintiff has not infringed any valid claim of the 855
Patent is necessary and appropriate at this time so that the Plaintiff may ascertain its rights and
duties with respect to the 855 Patent.
9. This Court has jurisdiction over the claims asserted in this Complaint under 28
U.S.C. 1331, 1338, and 1367.
10. This Court has personal jurisdiction over the Defendant by virtue of the
Defendants business operations within the Eastern District of California, and in Elk Grove,
California, which is in this judicial district.
11. On information and belief, venue is proper in this Judicial District under 28
U.S.C. 1391 (b) and (c).
/ / /
/ / /
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CASE NO. 3
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

FACTUAL BACKGROUND

12. Isola is the assignee of the 855 Patent entitled Methods of Manufacturing
Voidless Resin Impregnated Webs which was filed on January 4, 1999 and issued on July 4,
2000.
13. The 855 Patent has a counterpart patent in Taiwan, R.O.C., Taiwan Patent No.
TWI230657 (the TW 657 Patent), which has an application date of July 11, 2000 and a
publication date of April 11, 2005.
14. On information and belief, the 657 patent is assigned to Isola Laminate
Systems which is a predecessor-in-interest to Isola.
15. EMC was established in March, 1992 and is in the business of manufacturing
base materials for the worldwide printed circuit board industry including laminates and
prepregs.
16. EMC manufactures and sells a limited product line of prepregs that generally
includes the following products: EM-370D, EM 827, EM828 and EM888 (the Products at
Issue).
17. EMC sells the Products at Issue in the US market and throughout the world and
EMCs products are used by numerous manufacturers that make, sell, and import printed circuit
boards into the United States.
18. On or about April 13, 2014, EMC received a letter from Mr. A. Blair Hughes
of the law firm of McDonnell, Boehnen, Hulbert & Bergoff, LLP of Chicago Illinois via
overnight courier (demand letter).
19. Isolas lawyer specifically advised EMC that it was aware of EMCs
manufacturing and sales activities relating to prepregs and laminates.
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CASE NO. 4
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

20. Isolas lawyers communication offered EMC lawful access to Isolas alleged
unique patented voids reduction technology that, it contended, would allow EMC to
continue to manufacture prepregs and laminates.
21. Isola contended that its void reduction technology was protected by Taiwan
Patent No. TWI230657 (TW 657) as well as patents in the US.
22. The demand letter further demanded that the recipient contact Mr. Hughes within
fourteen days of receipt.
23. Isola has asserted patent rights with respect to EMCs ongoing manufacturing
and sales activity and EMC contends that it has the right to engage in the accused activities
without a license from Isola. On information and belief, Isola has initiated lawsuits and other
actions to enforce its patents in the US courts, the Internal Trade Commission and in foreign
jurisdictions against other leading laminate and prepreg manufacturers.
24. On information and belief, Isola has initiated lawsuits and other actions to
enforce its patents in the US courts, the Internal Trade Commission and in foreign jurisdictions
against other leading laminate and prepreg manufacturers.
25. Isolas lawsuits and actions have named both leading foreign manufactures of
laminates and prepregs such as Taiwan Union Technology Corporation, Guangdong Shengyi
Sci. Tech Co., Ltd., Ventec Electronics (HK) Co., Ltd., and ITEQ as well as domestic
manufacturers.
26. Isolas has repeatedly represented to the industry and the public that it has a
responsibility to its shareholders, customers and employees to vigorously protect its investments
and its extensive patent portfolio.
27. Isolas actions have created uncertainty with respect to patent liability with
respect to EMCs ongoing manufacturing and sales activities in the U.S.
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CASE NO. 5
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

28. Isolas delays in enforcing the 855 Patent, a patent that issued more than ten
years ago, has resulted in the incurrence of a growing potential liability for patent infringement
and this action for a declaratory judgment would settle the conflict of interests between the
parties.
The 855 Patent
29. The 855 Patent is the U.S. Counterpart to the TW 657 Patent and relates to
technology for manufacturing prepregs.
30. The TW 657 claims priority to U.S. Application No. 09/224,991 which
matured into the 855 Patent.
31. Claim 1 of the 855 Patent, an independent claim, recites as follows:
A method for manufacturing a cured resin impregnated
essentially void free substrate comprising placing a substrate into
a first impregnation zone including a solvent containing curable
resin to produce a resin impregnated substrate and at least
partially curing the resin impregnated substrate to produce a cured
resin impregnated substrate, wherein the number of voids in the
cured resin impregnated substrate are reduced by processing the
substrate by at least one process step selected from the process
steps consisting of
(1) using a solvent containing curable resin having a relatively
low solids content;
(2) dipping the resin impregnated substrate into a second
impregnation zone including a solvent containing curable resin
having relatively high solids content;
(3) mechanically manipulating the substrate by a Meir rod;
(4) removing moisture from the substrate prior to placing the
substrate into the first impregnation zone;
(5) heating the solvent containing curable resin; and
(6) heating the resin impregnated substrate before placing the
resin impregnated substrate into a second impregnation step.
32. In the Notice of Allowance for the 855 Patent the Examiner provided a
statement of reasons for allowance as follows: there was no prior art found that teaches a
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CASE NO. 6
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

method of making a void-free resin impregnated substrate where the step of manipulation of
the substrate, is done so by means of presence of a Meir rod.
33. The specification and claims of the 855 Patent reference the use of a Meir
rod but the structure is otherwise undefined.
34. On information and belief, the term Meir rod as used in the patent
specification and claims was intended to refer to a Mayer Rod or Meyer Rod which refers
to device, first introduced as early as the 1930s and which is presently typically made of
stainless steel rod that is wound tightly with wire of varying diameter.
35. The U.S. Patent and Trademark Office conducted the examination of the
application that led to the issuance of the 855 without the benefit of consideration of relevant,
material and non-cumulative prior art.
36. Representative relevant, material and non-cumulative prior art to the 855
Olsen Patent and that was not considered during the examination is set forth in the following
table:
Patent or Reference No. Publication/Issue
Date
Filing Date Applicant/Assignee
Japanese Patent Pub.
No.
01-283113
11/14/89 5/11/88 Mitsubishi Electric
Corp.
Japanese Patent Pub.
No. 02-48930

2/19/90 8/10/88 Takuma Co., Ltd.
Japanese Patent Pub. 3/8/90 9/2/88 Matsushita Electric
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CASE NO. 7
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

Patent or Reference No. Publication/Issue
Date
Filing Date Applicant/Assignee
No. 02-69221

Works, Ltd.
U.S. Patent No.
5,104,698
4/14/92 2/12/91 Takuma Co., Ltd.
Japanese Patent Pub.
No. 09-118759

5/06/97 10/26/1995 Matsushita Electric
Works, Ltd.
U.S. Patent No.
5,630,874
5/20/97 6/7/95 Shell Oil Company
Japanese Patent Pub.
No. 62-151425

7/06/87 12/26/85 Toshiba Chemical
Corp.
Japanese Patent
No. 07-55502
6/14/95 11/5/96 Matsushita Electric
Works, Ltd.
Japanese Patent Pub.
No. 63-272513

9/05/88 2/27/87 Ube Nitto Kasei Co.
Japanese Patent Pub.
No. 63-212511

9/05/88 2/27/87 Takuma Co., Ltd.
37. Japanese patent publication 01-283113 (hereinafter referred to as "JP '113")
referenced above is prior art to the alleged invention recited in the 855 Patent.
38. JP '113 renders one or more claims of the 855 Patent, and in particular Claim 1,
invalid alone, or in combination, with other prior art under 35 U.S.C. 102 and/103.
39. The prior art listed in the table set forth in Paragraph 36 renders one or more
claims of the 855 Patent invalid under 35 U.S.C. 103.
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CASE NO. 8
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

40. Section 112 of the Patent Statute provides, inter alia: The specification shall
conclude with one or more claims particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the invention.
41. Certain claims of the 855 Patent do not comply with Section 112 of the Patent
Statue and are therefore invalid, including but not limited to claims 10 and 12.
42. EMC is entitled to declaratory judgment that all of the claims of the 855 Patent
are invalid and not enforceable.
43. EMC is entitled to declaratory judgment that the Products at Issue do not
infringe any valid claim of the 855 Patent.
COUNT 1
DECLARATORY JUDGMENT OF PATENT INVALIDITY
44. EMC hereby incorporates by reference each statement in paragraphs 1-43 above,
whether written above or below, as if each is fully re-written herein.
45. One or more of the claims of the 855 Patent are and have been invalid and void
on the grounds that the purported invention, attempted to be patented therein, fails to meet the
conditions of patentability specified in Title 35 of the United States Code, including, but not
limited to, the conditions specified in 35 USC 101, 102, 103, 112, and/or 305 of the Code.
46. EMC seeks a declaration that the claims of the 855 Patent are invalid for failure
to satisfy one or more of the conditions or requirements for patentability specified in Title 35
U.S.C., or the rules, regulations, and law related thereto, including, without limitation, in 35
U.S.C. 101, 102, 103, and/or 112.
47. A judicial declaration is necessary under the circumstances to resolve this
controversy.
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CASE NO. 9
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

48. The Plaintiff is entitled to a declaratory judgment that each of the claims of the
855 patent are invalid and therefore not infringed by EMC.
COUNT II
DECLARATORY JUDGMENT OF NON-INFRINGEMENT
49. EMC hereby incorporates by reference each statement in paragraphs 1-48 above,
whether written above or below, as if each is fully re-written herein.
50. To the extent that any of the claims of the 855 Patent are valid, the
manufacturing process used by EMC to make the Products at Issue do not infringe any valid
claim.
51. EMC seeks a declaration that the Products at Issue do not infringe any valid
claim of the 855 Patent under 35 U.S.C. 271, and that damages, if any, ought to be limited as
provided for under 35 U.S.C. 287.
52. A judicial declaration is necessary under the circumstances to resolve this
controversy.
53. The Plaintiff is entitled to a declaratory judgment that the Products at Issue do
not infringe the 855 Patent.
PRAYER FOR RELIEF

WHEREFORE, EMC respectfully requests that the Court enter an Order and
Judgment as follows:
A. that the Court declare that the making, using, selling, offering for sale and/or
importation into the United States the Products at Issue does not infringe any Patent owned by
Isola;
B. that the Court declare that the claims of U.S Patent No. 6,083,855 are invalid
and unenforceable;
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CASE NO. 10
ELITE MATERIALS CO. LTD.S
COMPLAINT FOR DECLARATORY
JUDGMENT

C. that the Court award EMC its reasonable attorneys fees, expenses and costs; and
D. that the Court award such other and further relief as the Court may deem
appropriate.
Respectfully submitted,

Dated: June 26, 2014

/s/ Robert C. Matz, Esq.

Robert C. Matz
MAKMAN & MATZ LLP
655 Mariners Island Blvd., Suite 306
San Mateo, CA 94404

Telephone: (650) 242-1560
E-mail; robert@makmanmatz.com

Attorney for Plaintiff Elite Materials Co., Ltd.