CYPRESS. Calif.Toyo Tire & Rubber Co. Ltd. is claiming it is immune from antitrust claims in a design infringement case filed by Sentury Tire Americas.
In a motion filed Jan. 30 before the U.S. District Court for the Central District of California, Southern Division, Toyo sought to dismiss the first three claims in Sentury's lawsuit.
Toyo invoked the Noerr-Pennington doctrine against Sentury in the motion. Noerr-Penningtonnamed for two landmark cases decided by the U.S. Supreme Court in the 1960sstates that in most cases any party who petitions the federal government against allegedly unlawful conduct is exempt from antitrust actions.
One exception is if the petition is in any way a shamand this is what Sentury claimed about Toyo's 2013 patent infringement petition before the U.S. International Trade Commission (ITC). Toyo, however, said Sentury's allegations were invalid on their face.
Toyo filed design infringement petitions against 23 tire manufacturers, exporters, importers, distributors and dealers in China, Thailand and the U.S. Fifteen of these companies settled with Toyo. The ITC issued limited exclusion orders and cease-and-desist orders against the other eight in July 2014.
Sentury was not among the companies named in the original petition. Nevertheless, one of its tiresthe Landsail Trailblazer CLV6was named in the settlement agreements as violating Toyo's so-called 150 design patent, and was excluded from U.S. distribution by the ITC.
The term 150 design patent, according to a Toyo spokesman, is a legal reference to the actual number patent reflected in the article and motion, which is U.S. Design Patent No. 675,150.
It is not uncommon to settle an ITC proceeding with settlement agreements that exclude the importation of allegedly infringing products, Sentury said in its complaint filed on Sept. 4, 2014.
However, such agreements can only be lawful where they are generally limited to respondents in the ITC proceeding, the complaint continued. That was not the case with Sentury on the tire at issue.
Sentury denied that the CLV6 infringed on Toyo's 150 patent. If Toyo believes that Sentury infringed Toyo's '150' patent, then it would have added Sentury to the ITC complaint...instead of surreptitiously adding the Sentury tire to a list of tires in the settlement agreements, the tire importer/distributor said.
By adding the CLV6 and other tires not listed in the petition to the settlement agreements, Sentury claimed that Toyo misused its patent rights to block lawful competition in the U.S. market.
In November 2014, Toyo filed for a motion to dismiss Sentury's antitrust claims.
Sentury revised its complaint, dropping the antitrust allegations and asking the California court to consider only two claims of tortious interference and one of violating California's Business & Professions Code.
According to the Toyo document, the exclusion of the CLV6 was part of its settlement agreement with tire distributor American Omni Trading Co.
The CLV6 was the only Sentury tire listed in the agreement, Toyo said. Accordingly, nothing in the Omni agreement, which Sentury alleges is representative of the other agreements, prevented Omni from doing business with Sentury or selling any other Sentury tire.
Furthermore, in any ITC action, it is the ITC itselfan agency of the federal governmentthat determines the merits of any petition for relief and initiates any remedy, according to the Toyo motion.
That process immunizes the ITC action against any notion that it is a sham or objectively baseless, Toyo said.
Even if motivation were to be considered, however, there is nothing in the settlement agreements to indicate anything other than Toyo legitimately seeking to enforce its intellectual property rights.
A hearing on Toyo's motion is scheduled for March 2.