Docket No. 2014-1405, 2014-1428
DYK, O’MALLEY, WALLACH
June 11, 2015
Brief Summary: AMI determined to have standing since it was added after Sealant filed the request for DJ regarding the ‘110 patent but before an infringement claim was made against TEK. Claim construction of ‘110 patent reversed based on specification. DC ‘110 obviousness conclusion reversed based on claim construction. DC finding of no anticipation of ‘581 patent also reversed based on expert testimony.
Summary: Sealant/AMI and TEK alleged infringement of their respective patents (US 6,789,581 and 7,789,110, respectively). TEK appealed DC denial of for JMOL that the US 6,789,581 (‘581) patent is invalid and not infringed, the ‘581 damages award, issuance of apermanent injunction based on the ‘581 patent, and grant of SJ of invalidity of US 7,789,110 (‘110) patent. Sealant/AMI cross-appealed the DC denial of their motion for attorney fees. Sealant first filed a complaint against TEK, seeking a DJ of invalidity and noninfringment of the ‘110 patent. AMI is the manufacturing arm of Sealant and purchased the ‘581 patent after Sealant filed its complaint but before an infringement claim was asserted against TEK; AMI was therefore determined to have standing. The FC concluded the DC erred in construing the meaning of “cooperating with” (reviewed de novo as based on intrinsic evidence (Teva, US 2015)) in the ‘110 patent as not “directly connected to” a tire. The FC disagreed because no one could “point to any language in the specification indicating “additional hose 83” could be “sometimes not connectable to a tire” (“There is simply no guidance or indication whatsoever of how the additional hose might ‘cooperate with’ a tire, except as provided by the preferred embodiment.” (citing Phillips, FC 2005 (“Adoption of ‘a dictionary definition entirely divorced from the context of the written description’ is improper.”)) The meaning of the term was found to be “sufficiently ‘amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification.’” (Comark, FC 1998). The FC panel also concluded the DC clearly erred in its ‘110 obviousness decision because the prior art does not show an air tube “directly connected to the tire” and, accordingly, no motivation to combine that art. The ‘581 patent was also found invalid for anticipation and reversed the contrary DC conclusion, finding that the prior art disclosed the “receptacle formed in the housing” of claims 27 and 42 based on expert testimony. Sealant/AMI also appealed the DC denial of its motion for attorney fees because Octane Fitness (US 2014) did not alter the requirement that fees may be awarded to the prevailing party and neither party prevailed in this case (‘581 invalid, SJ of ‘110 invalidity reversed).