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TEK Global, S.R.L. v. Sealant Systems International, Inc.

Prior Appeal’s Rejection of Specific Invalidity Argument Did Not Foreclose Presentation of Same Combination at Trial

TEK Global, S.R.L. v. Sealant Systems International, Inc., __ F.3d __, 2019 WL 1412538 (Fed. Cir. Mar. 29, 2019) (PROST, Dyk, Wallach) (N.D. Cal.: Chhabria) (2 of 5 stars)

Fed Cir vacates liability judgment and reverses denial of motion for a new trial on validity, affirming other issues. TEK’s patent related to a kit for sealing and re-inflating damaged tires. The district court erred in barring SSI from presenting to the jury argument that the claims were invalid over the combination of two references. Though one set of arguments under the two references had been presented to the Federal Circuit in a previous appeal, the resulting opinion (616 F. App’x 987 (Fed. Cir. 2015)) did not foreclose any argument surrounding that combination. It had only held that one particular element in a reference (“air tube 54”) could not satisfy a particular claim limitation. 616 F. App’x at 995. On remand, “the district court should not have barred SSI from presenting to the jury other preserved obviousness theories based on the combination [of the two references] that were not before this court [in the prior appeal].” Op. at 9. On remand, a partial new trial is appropriate. In a footnote, the opinion notes “that caution is advisable for purposes of retrial,” expressing concern about the district court allowing TEK to present evidence to the jury about a non-institution decision by the PTAB.

For judicial economy, the opinion reaches the other aspects of SSI’s appeal. The district court did not err in determining that the term “conduits connecting the container” and “container connecting conduit” had sufficient structure to avoid means-plus-function treatment. The opinion analyzes both intrinsic and extrinsic evidence to reject SSI’s contention that “conduit” was serving as a nonce word, noting the presumption against means-plus-function treatment in this case. And substantial evidence supported the jury’s infringement verdict as to a separate term. The district court also did not abuse its discretion in allowing TEK to compare SSI’s accused product to TEK’s commercial embodiment. Per Adams Respiratory Therapeutics, 616 F.3d 1283 (Fed. Cir. 2010), such comparison was appropriate because it was undisputed that TEK’s product was an embodiment of the patent. The opinion also affirms the district court’s damages award. The district court did not err in denying SSI’s motion for JMOL of no lost profits. The opinion analyzes the record and finds substantial evidence to support the jury’s finding as to TEK’s ability to meet demand, and TEK’s profit on recaptured sales. The district court also did not abuse its discretion in entering a permanent injunction, and the opinion describes how TEK presented sufficient evidence on each of the relevant factors.

KEYWORDS: INVALIDITY; LOST PROFITS; PERMANENT INJUNCTION; CLAIM CONSTRUCTION