Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Toyo Tire & Rubber Co., Ltd. v. Atturo Tire Corp.

United States District Court, N.D. Illinois, Eastern Division

March 30, 2017

TOYO TIRE & RUBBER CO., LTD. and TOYO TIRE U.S.A. CORP., Plaintiffs,
v.
ATTURO TIRE CORP. and SVIZZ-ONE CORPORATION, LTD., Defendants.

          MEMORANDUM OPINION AND ORDER

          JOHN Z. LEE United States District Judge.

         Plaintiffs 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 [331] is denied.

         Background

         In 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 No. 340-3.

         At 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. ¶¶ 13-16.

         The 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.

         The 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”).

         Because 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, [1] 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. ¶¶ 16, 18.

         When 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. consumers.

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 directly.

         On 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.

         In its 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.

         Toyo 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.

         Atturo's counterclaims arise primarily from the settlement agreements that Toyo negotiated in the ITC action.[2] 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 ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.