Paice LLC of Bonita Springs, Florida filed a complaint on September 2, 2009 asking the ITC to investigate Toyota Motor Corp., Toyota Motor North America, Inc., and Toyota Motor Sales U.S.A., Inc. (collectively, “Toyota”) regarding certain Toyota hybrid electric vehicles and components thereof.

According to the Complaint, Paice previously filed two lawsuits against Toyota in the U.S. District Court for the Eastern District of Texas, asserting U.S. Patent No. 5,343,970 (the ‘970 patent), the same patent asserted in Paice’s ITC complaint.  A jury in the first lawsuit (Paice I) found the ‘970 patent was not invalid and was infringed by Toyota‘s Prius II, Highlander Hybrid and Lexus RX400h vehicles.  Paice’s complaint further alleges that Toyota received a court-imposed limited license for those vehicles.

The second lawsuit (Paice II), which is still pending, accuses different Toyota vehicle models of infringement.  According to the complaint, Toyota has admitted in that case that the Camry Hybrid, Prius III, Lexus HS250h and Lexus RX450h are not materially different from the RX400h, which was found to infringe the ‘970 patent in Paice I.

Paice’s ITC complaint further asserts that Toyota is collaterally estopped from contesting infringement, validity and enforceability of the ‘970 patent because those issues were “fully and finally litigated against Toyota” in Paice I.  Paice further asserts that res judicata precludes Toyota from challenging the validity and enforceability of the ‘970 patent because the parties in the ITC complaint and Paice I are identical and the accused vehicles are materially identical.  In support of its res judicata argument, Paice points to the fact that the district court in Paice II struck Toyota’s invalidity defenses, finding that res judicata barred Toyota from asserting invalidity as a defense to infringement of the ‘970 patent.

Because Toyota is barred from litigating the infringement, validity and enforceability of the ‘970 patent, Paice asserts in its complaint that “[a]ll that remains for consideration in the liability determination here are domestic industry issues.”  Specifically, Paice alleges that it “has made substantial investments in the United States with respect to engineering, research and development activities relating to the ‘970 patent” and has also “made substantial investments in the United States with respect to licensing activities relating to the ‘970 patent.”  Paice further alleges that it intends to file a motion for summary determination within 30 days of service of the complaint and notice of investigation, or as soon as practical under the established schedule.