Tek Global, S.R.L., Tek Corp. v. Sealant Sys. Int'l, Inc.
920 F.3d 777
| Fed. Cir. | 2019Background
- TEK owns U.S. Patent No. 7,789,110 directed to a compact tire emergency repair kit (compressor, sealing-liquid container, conduits, outer casing, and a three-way valve). TEK sued OEM SSI for infringement of claims 26, 28, and 31.
- Claim 26 is the independent claim and recites conduits connecting the container to the compressor and to an inflatable article, an outer casing defining a seat for a removable container, an additional hose cooperating with the inflatable article, and a three-way valve.
- At claim construction SSI argued “conduit” invoked 35 U.S.C. § 112, ¶ 6 (means-plus-function); the district court construed “conduit” as hoses and fittings and declined to apply § 112, ¶ 6.
- The district court initially granted SSI summary judgment of obviousness based on Eriksen and Bridgestone, but this court (Sealant Sys. II) reversed, holding “cooperating with” requires a direct connection and remanded for further proceedings.
- On remand the district court barred SSI from presenting certain Eriksen+Bridgestone obviousness theories as foreclosed by Sealant Sys. II; the case proceeded to a jury verdict finding infringement and no invalidity, awarding lost profits and a reasonable royalty, and the district court entered a permanent injunction.
- On appeal this Court vacated/reversed the district court’s denial of a partial new trial on validity (allowing SSI to present preserved obviousness theories not decided in Sealant Sys. II) but affirmed the other rulings in the event the patent survives retrial.
Issues
| Issue | Plaintiff's Argument (TEK) | Defendant's Argument (SSI) | Held |
|---|---|---|---|
| Whether jury should have been allowed to consider additional obviousness theories based on Eriksen+Bridgestone after this court’s prior opinion | Sealant Sys. II only foreclosed one theory; TEK argued remand should not reopen issues already decided | SSI argued remand permitted full re-litigation of obviousness and sought to present alternative Eriksen+Bridgestone combinations | Court: SSI is entitled to a partial new trial on validity limited to preserved obviousness theories not decided in Sealant Sys. II (vacated final judgment as to validity and reversed denial of partial new trial) |
| Whether “conduit” invokes § 112, ¶ 6 (means-plus-function) requiring a fast-fit coupling | TEK: “conduit” is structural (hose/fittings) and prosecution history shows avoidance of means language | SSI: “conduit” is a nonce/generic term so § 112, ¶ 6 applies, which would require a fast-fit coupling that accused product lacks | Held: Term connotes sufficiently definite structure; § 112, ¶ 6 does not apply; district court’s construction affirmed |
| Whether product-to-product comparisons and TEK’s use of its commercial embodiment improperly influenced jury | TEK: comparison appropriate because TEK’s commercial product practices the patent and SSI’s witnesses and experts invited comparison | SSI: product-to-product comparison is improper and prejudicial | Held: District court did not abuse discretion; SSI and its expert had invited comparison and jury instruction mitigated prejudice; no new trial on infringement |
| Whether damages and permanent injunction were supported by the record | TEK: lost-profits established via Panduit factors; irreparable harm, inadequacy of monetary remedies, balance/public interest support injunction | SSI: TEK lacked manufacturing/marketing capacity, causal nexus for irreparable harm, and lost-profits proof; injunction harms OEM customers | Held: Substantial evidence supported lost profits and injunction; district court did not abuse discretion (injunction includes nine-month sunset and allows design-arounds; injunction conditioned on patent surviving retrial) |
Key Cases Cited
- Sealant Sys. Int’l, Inc. v. TEK Global, S.R.L., [citation="616 F. App'x 987"] (Fed. Cir.) (remanding because prior claim construction required direct connection for “cooperating with” and foreclosed only the particular obviousness theory presented)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction principles and reliance on intrinsic evidence)
- Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir.) (nonce words and means-plus-function framework)
- Diebold Nixdorf, Inc. v. ITC, 899 F.3d 1291 (Fed. Cir.) (presumption against means-plus-function when claim lacks the word “means”)
- i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir.) (irreparable harm and inadequacy of monetary remedies factors)
- Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir.) (framework for establishing entitlement to lost profits)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S.) (four-factor test for permanent injunction)