SSI Systems International Inc. v. Tek Global S.R.L.
929 F. Supp. 2d 971
N.D. Cal.2013Background
- TEK Global S.R.L. and TEK Corp moved for summary judgment on damages and invalidity of the '581 patent; SSI and AMI moved for summary judgment of invalidity and non-infringement and TEK for infringement on the '110 patent.
- The court held a hearing on February 12, 2013 and granted SSI’s invalidity motion on the '110 patent, denied TEK’s invalidity motion on the '581 patent, and granted-in-part TEK’s damages motion.
- The original case involves TEK alleging infringement of the '110 patent by SSI/AMI’s On Board Tire Repair System; the secondary case involves SSI alleging infringement of the '581 patent by TEK.
- The '110 patent concerns a tire repair kit with a compressor, sealing liquid container, and conduits including a three-way valve and an additional hose; the '581 patent concerns a tire repairing device with a receptacle/port in the housing and related flow paths.
- The court addressed validity (obviousness/anticipation) of the '110 patent, noninfringement/infringement disputes as moot after invalidity ruling, validity of the '581 patent (anticipation/obviousness) in light of US 2004/0173282 ('282), and damages standing under 35 U.S.C. §287.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of the '110 patent as obvious | Eriksen and Bridgestone disclose missing limitations. | Need stronger teaching; not obvious. | Claims 1, 26, 27 (and 2–5, 12–15, 29–30) are obvious |
| Validity of dependent '110 claims with valve/additional hose | Combining Eriksen with Bridgestone yields all elements. | No motivation to combine;TEK asserts away | Claims 2–5, 12–15, 29–30 invalid as obvious |
| Other '110 patent claim elements (selector, relief/non-return valves, periphery groove) | Bridgestone/Eriksen disclose these features; obvious | TEK dispute remains unresolved | Claims 11, 21–25, 28, 31 obvious; relief/non-return valves and selector disclosed |
| Validity of the '581 patent in view of US '282 | US '282 discloses anticipated/obvious receptacle/port/reservoir concepts | Disclosures do not match the '581 terms; not anticipated | TEK failed to prove anticipation/obviousness; '581 not invalidated |
| Damages standing for the '581 patent | AMI owns the '581 patent and may recover; SSI may not | Marking issue and notice timing affect damages | AMI has standing; SSI not; marking does not bar AMI damages |
Key Cases Cited
- Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) (basis for the obviousness analysis (Graham factors))
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (scope and motivation to combine in obviousness)
- Teledyne Technologies, Inc. v. TE Connectivity, not cited properly here (not applicable) (not used)
- Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316 (Fed. Cir. 2001) (evidence required for summary judgment in patent cases)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (summary judgment standard; genuine issues of material fact)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (burden of persuasion and production in summary judgment)