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

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

July 23, 2018

TOYO TIRE & RUBBER CO., LTD, et al., Plaintiffs,
v.
ATTURO TIRE CORPORATION, et al., 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. (collectively, “Toyo”), brought this action against Defendants Atturo Tire Corporation (“Atturo”) and Svizz-One Corporation, Ltd., alleging in part that Atturo had infringed the trade dress on Toyo's Open Country Mountain Tires (“OPMT tires”). Now that discovery has concluded, Atturo moves for sanctions under Rule 37, contending that Toyo improperly disclosed a new definition of the trade dress at issue for the first time in its expert reports. For the reasons that follow, Atturo's motion for sanctions [390] is granted.

         Background

         Toyo filed its complaint on January 13, 2014, asserting a trade dress in “the overall appearance” of OPMT tires. Compl. ¶ 16, ECF No. 1. The complaint described the trade dress as

includ[ing] fingerlike projections on the left outer edge of the tire tread that slope slightly upward toward the center of the tread, fingerlike projections on the right outer edge of the tire tread that slope slightly downward toward the center of the tread, and two rows of hook-shaped tread blocks sloped downwardly from left to right, in a back to back orientation, whose openings align with the ends of the fingerlike projections on the tread edge.

Id. ¶ 17. There was no visual depiction of the trade dress in the complaint.

         During discovery, Atturo served Toyo with an interrogatory, requesting that Toyo “[i]dentify and describe any and all alleged trade dress of the Open Country M/T, including an identification and description of any and all alleged trade dress asserted in this Action, including whether each alleged trade dress pertains to Toyo's product or packaging.” Def.'s Mem. Supp. Mot. Sanctions (“Def.'s Mem.”), Ex. A, Pl.'s Am. 2d. Supp. Resp. Def.'s 3d. Set Interr. No. 16 (“Pl.'s Am. Resp. Interr. 16”) at 2, ECF No. 390-3.

         Toyo's response reiterated the description of the trade dress in the complaint, although it added additional verbiage that seemed to confuse, rather than clarify, matters:

The Open Country M/T tire is a protected by trade dress that is embodied in its distinctive tread design. As set forth in paragraph 18 of Toyo's Complaint, the Open Country M/T trade dress may be described as including fingerlike projections on the left outer edge of the tire tread that slope slightly upward toward the center of the tread, fingerlike projections on the right outer edge of the tire tread that slope slightly downward toward the center of the tread, and two rows of hook-shaped tread blocks sloped downwardly from left to right, in a back to back orientation, whose openings align with the ends of the fingerlike projections on the tread edge. The Open Country M/T trade dress may be articulated using different words that describe or characterize the appearance of this distinctive tread design. The Open Country M/T trade dress does not include product packaging.

Id. (emphasis added).

         Arguing that Toyo's description of its trade dress lacked “certainty, ” Atturo a motion, asking the Court to compel Toyo to identify and describe “each of the elements” of the alleged trade dress in the OPMT tire. Def.'s Mot. Compel at 1, ECF No. 114-1; Def.'s Mem. Supp. Mot. Compel at 7, ECF No. 114-2. The motion was referred to Magistrate Judge Susan Cox, and she granted the motion, ordering Toyo “to fully answer interrogatory #16 without qualification” by December 12, 2014. Order of 12/4/2014, ECF No. 118. Judge Cox further explained to Toyo that

at a minimum Atturo[ ] [is] entitled very specifically to know what it is you're claiming is protectable intellectual property right here. And that answer [to Interrogatory No. 16] doesn't answer the question. It's-it basically allows you wiggle room to either include more later or less. And at this point in the litigation I don't think that's appropriate.

Def.'s Mem., Ex. C, Transcript of 12/4/2014 Proceedings before Judge Cox (“12/4/2014 Tr.”) at 4:19-25, ECF No. 390-5. Judge Cox also warned Toyo that they would be “stuck with [their revised] answer [to Interrogatory No. 16] because that is basically . . . the basis on which [they] brought this case.” Id. at 5:23-6:1.

         On December 12, 2014, Toyo provided a supplemental answer to Interrogatory No. 16 (“the 2014 Supplemental Answer”), summarizing the OPMT trade dress as “the ‘OPMT look,' i.e., the overall visual appearance and impression conveyed by the Open Country M/T tire tread design.” Pl.'s Am. Resp. Interr. 16 at 3 (emphasis added).[1] It went on to describe the trade dress as of December 12, 2014, as

ha[ving] center blocks and shoulder blocks. The center blocks are hook-shaped and placed in offset, back-to-back, double-row configurations (see Image A), with each block having [ ] an opening generally adjacent to the end of a shoulder block (see Image B). The shoulder blocks are alternatingly paired on each side of the tire (see Image C), and are positioned in rows on opposite sides of the tire such that one row slopes upward toward the center blocks (see Image D) and the opposite row slopes downward toward the center blocks (see Image E).”

Id. at 4-5. The images referenced by the description are all color photographs of tires, with the lighting illuminating the three-dimensional nature of the tires and the varying heights of the tire tread components, including details within the grooves between the blocks and patterns on the surface of the blocks. See Id. at 5. Four of the images, Images A, B, D, and E, depict a portion of a tire tread straight-on. See id. The other image, Image C, shows the tire angled away from the viewer, with part of the side of the tire visible. See Id. Each image includes a highlighted portion of the tread that corresponds with a portion of the written description in the 2014 Supplemental Answer. See Id. Only the surface area of the relevant tread portions is highlighted. See id.

         On July 1, 2015, Atturo deposed Toyo's Rule 30(b)(6) designee, Amy Coleman, who stated that the OPMT “tread design” consisted of “two shoulder blocks, ” “two center blocks, ” “grooves, ” “stone ejectors, ” and “sipes.”[2] Def.'s Mem., Ex. D, Coleman 7/1/15 Dep. at 59:16-60:9; 60:22-61:3 ECF No. 390-6. When asked what about the “tread design” makes the tires recognizable as OPMT tires, she identified “the hook-shaped center blocks” and “the way that we've done the siping.” Id. at 64:21-65:5. Coleman emphasized that the siping “is a differentiator” that allows a consumer to identify it as a Toyo tire. Id. at 66:11-19.

         Later in Coleman's testimony, however, Toyo produced photographs of both a modified commercial OPMT tire with no sipes and a square-patterned OPMT racing tire that did not feature the hook-shaped center blocks. Def.'s Mot. Compel. at 6-7, citing id., Exs. T, U, and S, ECF Nos. 192-20-22. Even though these depictions of OPMT tires lacked features Coleman had identified as central to OPMT tread design, Coleman stated that “all of the OPMT tires have the OPMT trade dress, ” Def.'s Mot. Compel, Ex. J, Coleman 7/1/15 Dep. at 16:18-19; 16:20-22, ECF No. 192-11.

         After the deposition, Toyo submitted errata sheets that, Judge Cox found, attempted to revise Coleman's testimony. Order of 9/22/2015 at 3, 3 n.1, ECF No. 228. Judge Cox rejected these as impermissible changes to Coleman's deposition testimony. See Id. (“We agree with Atturo that this ‘errata' sheet is more accurately described as a revision of Ms. Coleman's prior testimony and is probably impermissible under Fed. R. C. P. Rule 30(e).” (citing Thorn v. Sundstrand Aerospace Corp., 207 F.3d 383, 389 (7th Cir. 2000))).

         Atturo then filed a motion to compel additional discovery as to the multiple OPMT tread patterns that Coleman had stated embodied the asserted trade dress. Def.'s Mot. Compel at 2, ECF No. 192.

         Judge Cox granted Toyo's motion, finding that Toyo had neglected to “point out in its discovery responses that there were models of tires marketed under the OPMT moniker which it was specifically excluding from trade dress protection.” Order of 9/22/2015 at 2, ECF No. 228. Judge Cox found that the logical inference from Toyo's assertion that the trade dress was “the overall visual appearance and impression conveyed by the Open Country M/T tire tread design” was that all OPMT tires bore the protected design. Id. at 2.

         In response to Judge Cox's order, Toyo provided a second supplemental answer to the interrogatory (the “2015 Supplemental Answer”). See Pl.'s Am. Resp. Interr. 16 at 6-8, “Supplemental Answer (dated October 2, 2015 and amended October 13, 2015).” In the 2015 Supplemental Answer, Toyo clarified that the racing-car tires that Coleman discussed in her deposition were not included in its trade dress theory and that “the Department of Transportation (DOT) compliant [OPMT] commercial tire tread, described and shown” in ...


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