Sealant Systems International v. Tek Global, S.R.L.
616 F. App'x 987
Fed. Cir.2015Background
- TEK Global sued Sealant for infringement of U.S. Patent No. 7,789,110 (the ’110 patent); Sealant (and its sister AMI) counterclaimed and later AMI asserted U.S. Patent No. 6,789,581 (the ’581 patent).
- The Northern District of California consolidated related actions; the district court granted summary judgment that the ’110 patent was invalid as obvious, and a jury found TEK liable for infringing the ’581 patent, leading to damages and a permanent injunction.
- Sealant and AMI sought attorney fees; TEK moved for JMOL and other post-trial relief challenging validity, infringement, damages, and the injunctions.
- On appeal, the Federal Circuit addressed standing to assert the ’581 patent, claim construction of the ’110 patent term “cooperating with” (an additional hose), the obviousness ruling for the ’110 patent, and JMOL on invalidity/anticipation for the ’581 patent.
- The Federal Circuit held Sealant lacked standing to assert the ’581 patent but AMI had standing (it owned the patent when it first asserted the claim); it reversed summary judgment of obviousness for the ’110 patent, reversed denial of JMOL for the ’581 patent (finding anticipation), vacated the injunction, and affirmed denial of attorney fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing to assert the ’581 patent | Sealant argued it could press claims in consolidated suit; AMI (added later) sought to assert the ’581 patent | TEK argued Sealant never owned the ’581 patent and AMI lacked standing because it acquired the patent after the suit was filed | Sealant lacks standing for the ’581 patent; AMI has standing to assert it when AMI first asserted the claim; TEK waived misjoinder argument by stipulation |
| Construction of “additional hose … cooperating with [inflatable article]” (’110) | Sealant/AMI urged the ordinary meaning "working together, directly or indirectly" | TEK argued “cooperating with” requires direct physical connection to the tire (i.e., a hose connectable to a valve) | Court construed “cooperating with” to require direct connection to the tire; district court erred by adopting broader meaning |
| Obviousness of asserted claims of the ’110 patent | Sealant/AMI argued Eriksen combined with Bridgestone rendered claims obvious | TEK argued Bridgestone did not disclose a directly connected additional hose and there was no basis to combine to get the claimed device | Reversed summary judgment of obviousness for the ’110 patent because proper claim construction and factual issues (scope of prior art and motivation to combine) preclude the ruling; remanded |
| Anticipation / JMOL as to claim 27 and claim 42 of the ’581 patent | Sealant/AMI argued prior art (’282 publication) did not disclose a receptacle/port or reservoir as claimed | TEK argued ’282 disclosed screw socket (port), a hole with depth (receptacle), and a cavity (reservoir), anticipating claims | Reversed denial of JMOL: claims 27 and 42 are anticipated by the ’282 publication; jury verdict, damages, and injunction vacated |
Key Cases Cited
- Propat Int’l Corp. v. Rpost, Inc., 473 F.3d 1187 (Fed. Cir. 2007) (standing and who may sue on patent rights)
- Rite–Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (standing is jurisdictional and reviewed de novo)
- Davis v. Federal Election Comm’n, 554 U.S. 724 (2008) (standing must be shown for each claim and form of relief)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (claim construction: factual findings reviewed for clear error; legal issues reviewed de novo)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction: meaning to PHOSITA and role of specification)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) (framework for obviousness analysis)
- In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) (motivation to combine prior art references)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) (standard for awarding attorney fees under 35 U.S.C. § 285 changed)