In the complaint (paice_itc_complaint.pdf), Paice alleged that Toyota’s importation of the third generation Prius, the Camry Hybrid, the Lexus HS250h and RX450h (Accused Products) infringe U.S. Patent No. 5,343,970 (’970 Patent).
Earlier this month the ITC issued a Notice of Investigation announcing its decision to conduct an investigation into Paice’s allegations.
In a prior case in the Eastern District of Texas Paice won a jury verdict that the second generation Prius, the Highlander and the Lexus RX 400h infringed two claims of the ’970 Patent under the doctrine of equivalents, and the verdict was affirmed on appeal (see my previous post about the verdict and appeal here).
The court awarded Paice an ongoing royalty of $25 per infringing vehicle, which was later increased to $98.
In this ITC action, Paice asserts that Toyota is precluded from challenging the infringement, validity and enforceability of the ’970 Patent because those issues were previously adjudicated.
Paice also contends that the Accused Products infringe the ’970 Patent because of alleged judicial admissions by Toyota that the drivetrains of the Accused Products are materially the same as those that were found to infringe the ’970 Patent.
According to Paice, that leaves only issues relating to “domestic industry,” i.e., whether Paice has significantly invested in the patented technology in the U.S.
This issue could be dispositive here. Although licensing activity can suffice for domestic industry, it remains to be seen whether Paice’s court-imposed royalty arrangement with Toyota will be enough to meet this requirement.