A US-based Dentons team won an unprecedented victory on behalf of a Chinese client over an intellectual property dispute settled in a federal court.
On February 16, 2015, the team, acting for Qingdao Sentury Tire Co., Ltd., obliged Toyo Tire & Rubber Co. Ltd. to sign a “Covenant Not to Sue” and acknowledge that Sentury’s products did not infringe Toyo’s patent.
In August 2013, targeted primarily on tire products from China, Toyo filed a complaint to US International Trade Commission (“ITC”) alleging that 22 tire manufacturers and distributors had infringed upon Toyo’s eight tire tread design patents and requested ITC to launch a Section 337 investigation against them. Due to high litigation costs, most of the respondents had to sign settlement agreements with Toyo, in which Toyo forced these respondents into promising not to manufacture, buy or sell certain products not covered by the Section 337 investigation, including the ultra-high performance CLV6 Trailblazer tire series produced by Sentury. Toyo had never named Sentury as a respondent or accused CLV6 Trailblazer tire of patent infringement in any administrative or judicial actions (including the Section 337 investigation in question).
Sentury ignored this. To further promote its products, Sentury released its LS588 tire series, the tire tread of which was designed on the basis of the CLV6 series. However, in August 2014, Toyo issued a warning to Sentury alleging that both CLV6 and LS588 tire tread design infringed upon Toyo’s US patents and requesting Sentury cease manufacturing and selling these products.
This time, Sentury stood up. On September 9, 2014, a Dentons team represented Sentury Americas and submitted a complaint to a federal court in Los Angeles, accusing Toyo of abusing patents and requesting the court stop Toyo’s act of unfair competition. The case drew wide attention from the legal profession and the tire industry in both China and the US.
Attorneys from both sides battled with each for more than 100 days, till Toyo was propelled to sign the “Covenant Not to Sue” and acknowledge unconditionally that the design of Sentury did not infringe upon Toyo’s US patents. For years, goods from China have been under frequent accusations of IP infringement in the US. Sentury’s unprecedented victory marks a milestone in the history of Chinese enterprises’ IP protection efforts and sets a good example for other Chinese enterprises involved in international IP disputes.
Dentons’ litigation practice has a good reputation in the US legal market. The chief attorney in this case is John Zhang, partner from the Los Angeles office. He has successfully represented Chinese clients in a number of key litigations.
Beijing Dacheng Law Offices, LLP ("大成") is an independent law firm, and not a member or affiliate of Dentons. 大成 is a partnership law firm organized under the laws of the People’s Republic of China, and is Dentons' Preferred Law Firm in China, with offices in more than 50 locations throughout China. Dentons Group (a Swiss Verein) ("Dentons") is a separate international law firm with members and affiliates in more than 160 locations around the world, including Hong Kong SAR, China. For more information, please see dacheng.com/legal-notices or dentons.com/legal-notices.
