Docket No. 2017-2507
REYNA, TARANTO, CHEN
March 29, 2019
Brief summary: DC finding of infringement, damages, and grant of PI affirmed; SSI granted a new trial on invalidity (on remand, DC improperly foreclosed SSI from presenting new obviousness theories).
Summary: SSI appealed DC finding of infringement of TEK’s US 7,789,110 directed to “[a] kit for inflating and repairing inflatable articles” (e.g., vehicle tires using a small compressor and a container of sealing liquid). SSI specifically appealed the DC’s orders regarding claim construction and its denial of SSI’s motion for a new trial and JMOL on invalidity, infringement, and damages, as well as its grant of a permanent injunction (PI). In earlier decisions, the DC construed “additional hose cooperating with said inflatable article” (DC decision “SSI I”) and the FC reversed as to construction of the “cooperating with” limitation (FC 2015, “SSI II”). In the FC SSI II opinion, the DC was found to have “clearly erred in finding Bridgestone disclosed the element of an ‘additional hose…cooperating with’ the tire” and remanded the case back to the DC to allow SSI to make its case for invalidity in light of the FC’s claim construction. The magistrate judge concluded that the FC had already rejected the obviousness arguments under the new construction, after which the jury found infringement and no invalidity, awarding TEK about $2.5 million in lost profits and about $250,000 in reasonable royalties. In this appeal, SSI argued TEK’s claims were invalid and can therefore not be infringed (Medtronic, FC 1983). The FC found that on remand the DC improperly foreclosed SSI from presenting obviousness theories that were not presented in SSI I or SSI II, and therefore “that a partial new trial on validity is appropriate here (see FN1 regarding evidence from a non-institution decision being “properly limited to the context of pre-issuance examination”) (Microsoft, US 2011). The FC panel also considered SSI’s argument that “conduits containing the container” and “container connecting conduit” are means-plus-function limitations (§ 112, para. 6; Diebold, FC 2018 (not applicable with ““sufficiently definite meaning as the name for structure”; without “means”, there is a rebuttable presumption that §112, para. 6 does not apply), and found those limitations are not (e.g., “dependent claim 27 recites ‘at least one of said conduits…comprises a hose’”, specification “clearly contemplates a conduit having physical structure”, “applicant’s intent” to avoid means-plus-function shown in prosecution history (TIP, FC 2008; Markman, FC 1995); supported by extrinsic evidence such as a dictionary definition (Greenberg, FC 1996)). The FC panel also found the DC did not abuse its discretion in instructing the jury not to “compare SSI’s Accused Product to TEK’s product” but “to the claims of the ‘110 Patent” in determining infringement (Catalina, FC 2002; Adams Resp., FC 2010 (“when a commercial product meets all the claim limitations, then a comparison [of the accused product] to that [commercial] product may support a finding of infringement”)). And the FC panel found the DC did not abuse its discretion in deciding damages and granting the PI (e.g., “the market appears to have been limited to two suppliers” (State Indus., FC 1989); “jury could reasonably infer manufacturing capacity from TEK’s prior activities” (Yarway, FC 1985); “it was enough for TEK to show that a significant reason consumers bought its device was the presence of the patented features”, “sunset provision mitigates any negative effects on end users” (Broadcom, FC 2013)).
Federal Circuit summaries 