United States District Court, N.D. Illinois, Eastern Division
TOYO TIRE & RUBBER CO., LTD. and TOYO TIRE U.S.A. CORP., Plaintiffs,
ATTURO TIRE CORP. and SVIZZ-ONE CORPORATION, LTD., Defendants.
MEMORANDUM OPINION AND ORDER
Z. LEE United States District Judge.
Toyo Tire & Rubber Co., Ltd. and Toyo Tire U.S.A. Corp.
(“Toyo”), brought this action against Defendants
Atturo Tire Corporation (“Atturo”) and Svizz-One
Corporation, Ltd., alleging patent infringement, trade dress
infringement, trade dress dilution, and other state law
claims concerning certain vehicle tires. Atturo filed seven
counterclaims arising under state common law and state and
federal statutes. Toyo has moved for summary judgment as to
all of Atturo's counterclaims based upon the
Noerr-Pennington doctrine, arguing that the
counterclaims arise out of Toyo's actions before the
United States International Trade Commission (ITC) and are,
therefore, protected from suit. For the reasons that follow,
Toyo's motion for summary judgment  is denied.
2013, prior to commencing its action before this Court, Toyo
filed a complaint with the ITC, requesting that it
investigate various manufacturers and distributors of foreign
tires (the “ITC respondents” or
“respondents”). Pl.'s LR 56.1(a)(3) Stmt.
¶¶ 5, 7, ECF No. 331-2. Toyo alleged that these
respondents were importing and selling tires that it believed
infringed various Toyo design patents. Id.
¶¶ 6, 8. Atturo was not among the named
respondents, nor were any Atturo tires listed among the
allegedly infringing tires in Toyo's complaint.
Def.'s LR 56.1(b)(3)(C) Stmt. ¶¶ 43, 45, ECF
Toyo's request, the ITC agreed to institute an
investigation. Pl.'s LR 56.1(a)(3) Stmt. ¶ 11. The
investigation, however, was never carried out. Instead, each
of the respondents identified in Toyo's complaint (which,
again, did not include Atturo) either defaulted, stipulated
to consent orders, or entered into settlement agreements with
Toyo, following which the ITC terminated its investigation as
to each individual entity at Toyo's request. Id.
terms of the relevant settlement agreements and the manner in
which the ITC terminated its investigation are central to the
issues raised in the present motion. The settlement
agreements, which were identical in all material respects,
provided that the named respondent would refrain from
importing and selling any “Accused
Tires”-i.e., the tires listed in the ITC
complaint-as well as additional tires that Toyo believed
infringed upon its intellectual property rights. Id.
¶ 26. One of these additional tires was the
“Atturo Trail Blade M/T, ” a tire produced by
Atturo. Id. ¶¶ 26, 28. Thus,
notwithstanding the fact that neither Atturo nor the Atturo
Trail Blade M/T was identified in Toyo's complaint, the
named respondents agreed in their settlement agreements with
Toyo not to sell the Atturo Trail Blade M/T. Id.
¶ 29; Def.'s LR 56.1(b)(3)(C) Stmt. ¶ 52.
agreements were negotiated, finalized, and executed solely
between Toyo and the individually named respondents; the ITC
took no part in the settlement negotiations. Def.'s LR
56.1 (b)(3)(C) Stmt. ¶¶ 50-51, 53. Moreover, the
agreements contained no provision requiring approval by the
ITC or any other government agency prior to taking effect.
Id. ¶¶ 50-51. Rather, the agreements were
self-executing and became binding even before Toyo requested
that the ITC terminate its investigation. Id.;
see Mot. Summ. J. Hr'g Tr. 48:1-2, ECF No. 360
(statement by Toyo's counsel that the agreements were
enforceable “as a matter of contract law”).
the ITC was not involved in the settlement negotiations, the
execution of the settlement agreements did not automatically
terminate the ITC proceedings. And so, with two exceptions,
Toyo submitted the settlement agreements to the ITC along
with requests that the ITC terminate its investigation of the
named respondents. Pl.'s LR 56.1(a)(3) Stmt. ¶¶
reviewing a request to terminate a proceeding based upon a
settlement agreement between the parties, the ITC regulations
provide as follows:
Regarding terminations by settlement agreement, consent
order, or arbitration agreement under § 210.21 (b), (c)
or (d), the parties may file statements regarding the impact
of the proposed termination on the public interest, and the
administrative law judge may hear argument, although no
discovery may be compelled with respect to issues relating
solely to the public interest. Thereafter, the administrative
law judge shall consider and make appropriate findings in the
initial determination regarding the effect of the proposed
settlement on the public health and welfare, competitive
conditions in the U.S. economy, the production of like or
directly competitive articles in the United States, and U.S.
19 C.F.R. § 210.50(b)(2). Nowhere do the regulations
require the administrative judge to consider the
reasonableness or fairness of the settlement terms or any
impact the settlement agreement may have on third parties
November 20, 2013, Atturo submitted a letter in response to
Toyo's requests for termination, noting its concern
“that various executed and proposed Settlement
Agreements in this investigation represent an abuse of the
[ITC] process, and are being used to unfairly restrict
competition in the United States market for tires.”
Pl.'s LR 56.1(a)(3) Stmt., Ex. 26, at 2, ECF No. 331-29.
The ITC staff then reviewed Toyo's requests to terminate
and provided its view for the administrative law judge's
consideration. See Id. ¶ 21.
written response, the staff at the ITC noted that it had no
objection to Toyo's requests, stating that “the
Staff does not believe that termination of the investigation
based on the settlement agreement[s] at issue would be
contrary to the public health and welfare, competitive
conditions in the U.S. economy, the production of like or
directly competitive articles in the United States, or U.S.
consumers.” Id. (citing 19 C.F.R. §
210.50(b)(2)). With respect to Atturo's letter, the staff
stated that it “apparently was found not to raise
public interest concerns that should prevent the settlements
submitted in this investigation.” Id. Soon
thereafter, stating its agreement with the staff's
analysis of these public interest factors, the ITC granted
Toyo's request that it terminate the investigation.
Id. ¶ 24. Although the ITC acknowledged that
Toyo's request was “based upon” the various
settlement agreements, id. ¶ 25, the ITC did
not review the agreements for their specific impact on
Atturo, nor did it mention Atturo in terminating the
investigation, see Def.'s LR 56.1(b)(3)(C)
¶¶ 50, 58.
filed its suit against Atturo in this Court on January 13,
2014, asserting claims of design patent infringement, trade
dress infringement, trade dress dilution, common law unfair
competition, common law unjust enrichment, and violation of
the Illinois Deceptive Trade Practices Act. Compl.
¶¶ 32-71, ECF No. 1. Atturo answered and asserted
seven counterclaims: (1) common law tortious interference
with existing contracts; (2) common law tortious interference
with prospective business expectancy; (3) common law
defamation; (4) common law unfair competition; (5) common law
unjust enrichment; (6) violation of the Illinois Deceptive
Trade Practices Act; and (7) violation of § 43(a)(1)(b)
of the Lanham Act. Am. Answer & Countercls. ¶¶
100-66, ECF No. 39.
counterclaims arise primarily from the settlement agreements
that Toyo negotiated in the ITC action. For example, in
its first counterclaim, Atturo states that “Toyo used
leverage as a Complainant in the Toyo ITC action to expand
the scope of the settlement agreement with [one of the named
ITC respondents] beyond the intellectual property at issue in
the Toyo ITC Action to include false trade dress infringement
allegations against the Atturo Trail Blade M/T Tire.”
Id. ¶ 105. On this basis, Atturo claims that
“Toyo unlawfully tortiously interfered with an existing
contract between Atturo and [one of the ...