Anticipate This!™ | Patent and Trademark Law Blog

Flexsys 6PPD Suit to Proceed in District Court (N.D. Ohio)

Posted in Litigation Commentary by Jake Ward on August 27, 2006

According to the Rubber & Plastics News (subscription required), the U.S. District Court for the Northern District of Ohio has recently allowed Flexsys America L.P. to proceed with a $20 million patent infringement lawsuit against Chinese chemical producer Sinorgchem Co.; its U.S. distributor, Akron-based Sovereign Chemical Co.; South Korean tire maker Kumho Tire Co. Inc.; and its U.S. subsidiary, Kumho Tire U.S.A. Inc.  The district court case had originally been stayed while a companion case was pending before the U.S. International Trade Commission (ITC).

Flexsys asserted in the ITC complaint that the above parties infringed on Flexsys’ U.S. Pat. Nos. 5,117,063 (the 063 patent), 5,608,111 (the 111 patent) and 6,140,538 (the 538 patent) related to N-(1,3-dimethylbutyl)-N’-phenyl-p-phenylenediamine (“6PPD”).  This chemical is a rubber antidegradant found in most tires sold in the United States.

On July 13, the ITC ruled that Sinorgchem violated Flexsys patents drawn to methods of manufacturing 6PPD and a precursor feedstock, 4-ADPA.  The ITC further ruled that Sovereign infringed by selling Sinorgchem’s versions of those products in the U.S.

Notably, the ITC exonerated Kumho, but Flexsys kept the tire maker and its U.S. arm in the lawsuit, stating the issues in the suit were different from those in the ITC case.

The limited exclusion order by the ITC may be viewed here:  Investigation No. 337-TA-533.

JW Note:  As a former rubber compounder in the tire industry (and thus being very familiar with 6PPD), I found this article to be of great interest . . . at the crossroads of my legal and technical expertise.  It will be interesting to watch how this case develops!

Meade Instruments v. Yamcon

Posted in Opinion Commentary by Jake Ward on August 27, 2006

Directional Arrows Provided by the Accused Device Were Not “Data” Within the Meaning of the Claims. 

(Fed.Cir. 2006, 05-1555), non-precedential

The District Court (C.D. Cal.) granted summary judgement for Yamcon under a holding of non-infringement of Meade U.S. Pat. No. 5,311,203 (the 203 patent).  On appeal, the CAFC upheld the claim construction of the district court and the finding of non-infringement of the 203 patent.

The 203 patent technology relates to a handheld device for locating and identifying visible celestial objects.  The accused Yamcon product (the “Skyscout”) is also a handheld device with an eyepiece to see a portion of the sky.  The Yamcon device also has a find mode with directional arrows for finding objects.  Notably, the display screen of the device is situated on one side and not in the user’s field of view.

In particular, Meade challenged the construction of term “data” and the requirement that the data be “simultaneously presented to the user as the user observes the field of view” and “be  provided to the user . . . in real-time as the user observes the field of view of the apparatus.” 

With respect to the “data” term, the CAFC held that the specification made it clear that the term referred to a predetermined set of data entered into the device’s database and “not merely to an abstract bit of data in the broadest sense of the term.”   Thus, the directional arrows provided by the Yamcon device in find mode were not the “data” of the 203 patent.

The CAFC also held that the Yamcon device lacked the “simultaneity” feature of the 203 patent claims.  Because one using the Yamcon device would have to look to the side screen, the data is not presented or provided to the user at the same time as the user observes the field of view.  Regardless of the claim differentation argument made by Meade (narrower dependent claims drawn to real-time displays), the broadest scope that can be construed for the claims at issue does not encompass the Yamcom device.

On this basis, the CAFC concluded that the Yamcom device does not infringe the 203 patent and the summary judgment was upheld.  Affirmed.

Fuji Photo Film Co., LTD. v. Benun, et al.

Posted in Opinion Commentary by Jake Ward on August 27, 2006

General Exclusion Order by the ITC Does Not Alter a District Court’s Authority to Enjoin Importation of Products Subject to the Order.

(Fed. Cir. 2006, 05-1445)

On appeal from the District Court (D.N.J) where a preliminary injunction was issued, Ribi Tech challenged the issuance on the theory that the district court lacks jurisdiction to enjoin importation of products already subject to a general exclusion order by the International Trade Commission (ITC).  Specifically, Ribi Tech argued that the International Trade Court has exclusive jurisdiction over matters relating to such goods. 

The allegedly infringing products were LFFPs or disposable cameras.  Benun et al. produced and imported a large number of LFFPs, many of which were seized under a general exclusion order by the ITC and barred from import at the request of Fuji Film.

The CAFC noted that a patentee can bring suit both in a district court and in the ITC against  an alleged infringer who is importing an allegedly infringing product.  With respect to ITC suits, 28 U.S.C. Section 1581(a) further states that “[t]he Court of International Trade shall have exclusive jurisdiction of any civil action commenced to contest the denial of a protest [of seizure of goods under general exclusion order].”  However, the CAFC states that even though this section provides exclusive jurisdiction for actions commenced to contest the denial of a protest, Fuji’s complaint is not such an action.  Also, “duplication of litigation efforts is simply not relevant to the jurisdictional inquiry.”

Accordingly, the CAFC held that the district court properly asserted jurisdiction and affirmed the preliminary injunction.