U.S. ITC delays decision whether to investigate Kumho vs. Flexys patent dispute

Kumho is claiming victory in yet another aspect of the company’s ongoing patent dispute with Flexsys America L.P. In what Kumho’s lawyers called “a highly unusual move” in the increasingly complex case, the U.S. International Trade Commission (ITC) has announced that it will extend by 30 days the deadline for determining whether to embark upon a “Section 337 Investigation” in response to a complaint filed by Flexsys over Kumho and certain rubber antidegradants.

Citing “exceptional circumstances,” the ITC stated that it “will utilize the additional time to consider the possible legal impact of prior litigation involving the asserted patents.” The ITC’s decision is now expected to be issued around July 11.

Prior to the announcement, the companies against whom Flexsys brought its case, Korea Kumho Petrochemical Co., Ltd., Kumho Tire U.S.A., Inc. and Kumho Tire USA Co., Inc. and the Sinorgchem Co. had both urged the ITC, in separate letters, that the proposed investigation should not be instituted because the complaint was legally defective in light of prior litigation concerning the same patents.

In its new ITC complaint, Flexsys re-asserts infringement of its U.S. Patent No. 5,453,541 and U.S. Patent No. 5,608,111, regarding the processes for producing 4-ADPA and 6-PPD.

With Flexsys’ agreement, the U.S. District Court for the Northern District of Ohio ordered Flexsys in November of 2006 to never again file a patent infringement action against Kumho involving the processes currently being used to produce Kumho’s 6PPD products.

Flexsys’ new ITC action is in violation of that court order, according to Kumho’s lawyers. In July of 2006, the ITC entered a Final Determination in Flexsys’ previous ITC action against Kumho, saying that the company did not infringe on Flexsys’ “111 patent.” Flexsys chose not to appeal the Final Determination. In December of 2007, the U.S. Court of Appeals for the Federal Circuit also found that Kumho’s 4-ADPA supplier, Sinorgchem Co., “did not literally infringe” on the Flexsys patent. Flexsys’ request for a rehearing of that adverse appellate decision was denied, without comment, in April of this year.

Since 1975, the ITC has instituted 651 Section 337 investigations. Research by Kumho’s lawyers has revealed only three prior occasions in which the ITC has extended its institution decision deadline based on “exceptional circumstances,” none more recently than 1999.

For more information, visit www.kumhotireusa.com or www.flexsys.com.