CLEVELAND (July 19, 2010)—Flexsys America L.P. said it will appeal a Cleveland federal district court decision to grant summary judgment to Chinese and South Korean companies Flexsys had sued for alleged infringement of Flexsys' patented antidegradant manufacturing technology.
On July 15, Judge Sara Lioi of the U.S. District Court for the Northern District of Ohio granted the motions of Chinese chemical manufacturer Sinorgchem Co. and South Korean tire maker Kumho Tire Co. Inc. Her first ruling, on July 6, said erroneously that the case was dismissed; the second version acknowledged a number of counter- and cross-claims still to be decided.
The case, which Solutia Inc. subsidiary Flexsys filed in Cleveland in 2005 and renewed in 2009 after trying to obtain an exclusionary order from the International Trade Commission, accused Sinorgchem of using Flexsys' patented “PPD2” process to make 4-ADPA. the chemical intermediate for the rubber antidegradant 6PPD. It also accused Kumho of using the unauthorized substances to manufacture tires, and of selling those tires in the U.S.
The current case, Lioi said in her ruling, focused on Flexsys' patented method of coupling aniline and nitrobenzene to make 4-ADPA. Lioi used a two-phase test in determining whether to grant summary judgment. The first phase considers whether other commercially viable methods of making a substance exist, and the second determines whether the process creates a significant material change in the product.
Deciding that the answer in both phases was affirmative, Lioi granted summary judgment to both companies. “Flexsys concedes that there are other commercially viable alternative processes for making 4-ADPA,” she wrote.
Solutia said it would appeal the decision to the U.S. Court of Appeals for the Federal Circuit.
Earlier this year, Flexsys won court and agency battles in Europe and Asia reaffirming the validity of the PPD2 patent.
“While the decision was not our desired outcome for this regional case, we were prepared for this ruling, and it does not affect the validity of the patent,” said D. Michael Donnelly, president and general manager of Solutia's Technical Specialties Division, in a press release. Flexsys' PPD2 process patents will remain valid through 2019, Donnelly said.