By Alex Gasser
On April 1, 2011, Kaneka Corporation of Japan (“Kaneka”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that SKC Kolon PI, Inc. of South Korea and SKC Corporation of Covington, Georgia (collectively, “SKC”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain polyimide films, products containing same, and related methods that infringe at least one of U.S. Patent Nos. 6,264,866 (the ‘866 patent), 6,746,639 (the ‘639 patent), 7,018,704 (the ‘704 patent), 7,691,961 (the ‘961 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents relate generally to polyimide films and methods of their production, and their applications in flexible printed circuits, base films in tape automated bonding carrier tape, cable coatings in aircraft, base films in magnetic recording tape, and coating materials for superconducting coil wire.  More specifically, the ‘866 patent relates to a method for producing a polyimide film wherein the imidization ratio and/or the amount of volatile constituents are controlled to improve the adhesive strength of the polyimide film.  The ‘639 Patent generally relates to a method for producing a polyimide film that exhibits increased thickness uniformity and reduced bubble inclusion while maintaining the mechanical strength of the film, wherein the method involves extruding, casting, and forming into a film a composition of resin solution obtained by adding a dehydrating agent and a chemically-imidizing catalyst to a low viscosity varnish.  The ‘704 patent relates to a polyimide film with increased dimensional stability and flexural endurance, and also relates to a flexible printed circuit that utilizes such a polyimide film that exhibits exceptional flexural endurance and is more resistance to temperature-induced curl, torsion and warpage.  Finally, the ‘961 patent generally relates to a polyimide film in which the rate of dimensional change is reduced when it undergoes a step of laminating a metal foil under heating or by etching the metal layer to form wiring.

In the complaint, Kaneka states that SKC Kolon PI, Inc. manufactures the accused products outside the U.S. and sells them for importation to the U.S. market, and SKC Corporation imports the accused products into the U.S. and sells them domestically after importation.  The complaint identifies the accused products as including but not limited to those products designated as IN, IF, LV, and LN polyamide films.

Regarding domestic industry, the complaint asserts that Kaneka made significant investments in plant and equipment, significant employment of labor and capital relating to the polyimide films at issue, and significant investments in its exploitation of the Kaneka Patents in the United States, including research and development, manufacturing, technical support, and marketing.  More specifically, with respect to the technical prong, Kaneka points to its Apical AV Film Types and NP Film Types, which are developed, marketed, sold and supported in the United States, as practicing at least one or more claims of the asserted patents.  With respect to the economic prong, Kaneka relies upon its wholly owned subsidiary’s plant in Houston Texas which makes and sells the Apical line of films, using methods relevant to the asserted patents.

As to related litigation, the complaint states that on July 26, 2010, Kaneka filed suit against SKC in the United States District Court for the Eastern District of Texas, alleging infringement of the same asserted patents.  The complaint further states that on September 29, 2010, SKC filed a lawsuit in the United States District Court for the Central District of California, seeking a declaratory judgment relating to the same asserted patents.  According to Keneka, both lawsuits are still pending.

With respect to potential remedy, Kaneka requests that the Commission issue a permanent exclusion order and permanent cease and desist orders directed at SKC.