Sealant Systems International v. Tek Global, S.R.L.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SEALANT SYSTEMS INTERNATIONAL, INC.,
ACCESSORIES MARKETING, INC.,
Plaintiffs-Cross-Appellants
v.
TEK GLOBAL, S.R.L., TEK CORPORATION,
Defendants-Appellants
______________________
2014-1405, 2014-1428
______________________
Appeals from the United States District Court for the
Northern District of California in Nos. 5:11-cv-00774-PSG
and 5:11-cv-01649-PSG, Magistrate Judge Paul S. Grew-
al.
______________________
Decided: June 11, 2015
______________________
STANLEY M. GIBSON, Jeffer, Mangels, Butler & Mar-
maro, LLP, Los Angeles, CA, argued for plaintiffs-cross
appellants. Also represented by GREGORY S. CORDREY,
ANDREW I. SHADOFF.
DANIEL E. JACKSON, Keker & Van Nest, LLP, San
Francisco, CA, argued for defendants-appellants.
______________________
2 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
Before DYK, O’MALLEY, and WALLACH, Circuit Judges.
WALLACH, Circuit Judge.
In this patent infringement suit, each side asserts the
other infringed its patent on tire repair technology.
Because the district court erred in certain aspects of its
claim construction and obviousness analysis, this court
reverses the summary judgment of obviousness with
respect to the asserted claims of U.S. Patent No.
7,789,110 (the “’110 patent”). This court also reverses the
district court’s denial of judgment as a matter of law
(“JMOL”) on obviousness with respect to the asserted
claims of U.S. Patent No. 6,789,581 (the “’581 patent”),
vacates the injunction imposed by the district court,
affirms the district court’s denial of attorney fees, and
remands for further proceedings.
BACKGROUND
TEK Global, S.R.L. (“TEK Global”) is an Italian lim-
ited liability company and assignee of the ’110 patent,
which is generally directed to a kit for repairing and
inflating inflatable articles, particularly tires. See ’110
patent col. 1 ll. 1–3. In November 2010, TEK Global sued
Sealant Systems International, Inc. (“Sealant”), a Califor-
nia corporation engaged in the sale and manufacture of
tire repair kits, for infringement of the ’110 patent in the
United States District Court for the Southern District of
New York.
In February 2011, Sealant filed suit against TEK
Global in the United States District Court for the North-
ern District of California, seeking declaratory judgment of
invalidity and noninfringement of the ’110 patent. As-
serting a lack of personal jurisdiction in the New York
court, Sealant successfully moved to transfer the New
York case to the Northern District of California and the
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 3
two cases were consolidated in May 2011. TEK Global’s
affiliate TEK Corp., a Michigan corporation (collectively,
“TEK”), was later named as a defendant in Sealant’s
Second Amended Complaint.
Accessories Marketing Inc. (“AMI”) is the “manufac-
turing arm” of Sealant, and the two entities are described
as “sister companies.” J.A. 72 n.187. Both AMI and
Sealant are owned by Illinois Tool Works, and both are
California corporations with their principal place of
business in Grover Beach, California.
On April 29, 2011—two months after Sealant’s initial
complaint for declaratory relief was filed—AMI purchased
the ’581 patent, which also claims a kit for repairing and
inflating tires, from non-party IDQ Operating, Inc. AMI
was added as a plaintiff in Sealant’s consolidated action
in a First Amended Complaint dated June 17, 2011,
which asserted AMI (but not Sealant) suffered damages
caused by TEK Global’s infringement of the ’581 patent.
In March 2014, the district court granted Sealant and
AMI’s motion for summary judgment of invalidity of the
’110 patent and denied TEK’s motion for summary judg-
ment of invalidity of the ’581 patent. The district court
found substantial evidence supported the jury’s infringe-
ment verdict as to the ’581 patent, and thus declined to
grant JMOL that the ’581 patent was invalid and not
infringed, and entered a permanent injunction. Sealant
Sys. Int’l, Inc. v. TEK Global, S.R.L., No 5:11-cv-0074-
PSG (N.D. Cal. Mar. 7, 2014) (“Order Granting Post-Trial
Motions”) (J.A. 31–94).
TEK appeals the district court’s (1) denial of its mo-
tion for JMOL that the ’581 patent is invalid and not
infringed, (2) damages award based on the ’581 patent, (3)
issuance of a permanent injunction based on the ’581
patent, and (4) grant of summary judgment of invalidity
of the ’110 patent. Sealant and AMI cross-appeal the
4 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
denial by the district court of their motion for attorney
fees. This court has jurisdiction under 28 U.S.C.
§ 1295(a)(1) (2012).
DISCUSSION
I. Although Sealant Lacks Standing to Assert the ’581
Patent, AMI Properly Asserted It
“[A] suit for infringement of patent rights [must] ordi-
narily be brought by a party holding legal title to the
patent.” Propat Int’l Corp. v. Rpost, Inc., 473 F.3d 1187,
1189 (Fed. Cir. 2007). “The question of standing to sue is
a jurisdictional one, which we review de novo.” Rite–Hite
Corp. v. Kelley Co., 56 F.3d 1538, 1551 (Fed. Cir. 1995) (en
banc). “‘[J]urisdiction of the [c]ourt depends upon the
state of things at the time of the action brought.’”
Karstens Prods., Inc. v. Fed. Deposit Ins. Corp., 74 F.3d
1258, at *3 (Fed. Cir. 1995) (unpublished) (quoting Keene
Corp. v. United States, 508 U.S. 200, 207 (1993)). “The
party bringing the action bears the burden of establishing
that it has standing.” Sicom Sys. v. Agilent Techs., Inc.,
427 F.3d 971, 976 (Fed. Cir. 2005).
TEK argues Sealant does not have standing to assert
claims based on the ’581 patent because Sealant has
never held title to that patent, and AMI lacks standing
because it did not own the ’581 patent when the suit was
originally filed by Sealant. In Morrow v. Microsoft Corp.,
499 F.3d 1332 (Fed. Cir. 2007), this court explained how
standing requirements apply to three categories of patent
plaintiffs: (1) patentees; (2) exclusive licensees; and (3)
“those that hold less than all substantial rights to the
patent and lack exclusionary rights under the patent
statutes to meet the injury in fact requirement.” Id. at
1340. Sealant is not an owner or assignee of the ’581
patent, nor does it allege it is an exclusive licensee under
the ’581 patent. Under Morrow, Sealant cannot cure a
standing deficiency with respect to the ’581 patent by
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 5
adding AMI to the suit. See id. at 1341 (A “standing
deficiency cannot be cured by adding the patent title
owner to the suit.”).
Although Sealant’s standing to request declaratory re-
lief with respect to the ’110 patent is not in dispute,
Sealant cannot establish standing to assert the ’581
patent based on the case or controversy associated with
the ’110 patent. “[S]tanding is not dispensed in gross.
Rather, a plaintiff must demonstrate standing for each
claim he seeks to press and for each form of relief that is
sought.” Davis v. Fed. Election Comm’n, 554 U.S. 724,
734 (2008) (internal quotation marks and citations omit-
ted). Sealant therefore lacks standing to assert the ’581
patent.
The more relevant dispute over standing, however,
centers not on Sealant but on AMI. TEK acknowledges
AMI’s assertion that it could have brought a separate suit
following its purchase of the ’581 patent, but argues this
is irrelevant because AMI instead elected to assert its
claims in Sealant’s previously-filed suit.
It is true the Supreme Court has stated “the standing
inquiry . . . focus[es] on whether the party invoking juris-
diction had the requisite stake in the outcome when the
suit was filed,” Davis, 554 U.S. at 734, and that AMI did
not have such a stake in February 2011 when the suit it
later joined was filed. However, the relevant standing
inquiry focuses on the time at which a given claim is
asserted, which will often (as in Davis) be the time the
suit is filed. See id. at 731 (indicating Davis “request[ed]
that § 319 [of the Bipartisan Campaign Reform Act of
2002] be declared unconstitutional” at the time he filed
suit). The claim of infringement of the ’581 patent was
not asserted until after the suit was in process. Because
AMI owned the ’581 patent at the time it first asserted its
claim against TEK, it has standing.
6 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
TEK’s standing objection is more properly viewed as
an objection to the joinder of AMI to Sealant’s existing
suit rather than to AMI’s standing. AMI asserted in-
fringement of the ’581 patent in a First Amended Com-
plaint dated June 17, 2011. If TEK opposed AMI’s joinder
or assertion of the ’581 patent as part of Sealant’s earlier-
filed suit, it could have objected. See, e.g., Fed. R. Civ. P.
21 (“Misjoinder and Nonjoinder of Parties”). Instead, on
October 6, 2011, TEK stipulated to the filing of a Second
Amended Complaint in which AMI again asserted the
’581 patent. J.A. 6467–69 (TEK “hereby stipulate[s] that
Plaintiffs may file a Second Amended Complaint for . . .
(2) Patent Infringement [of the ’581 patent] . . . , a copy of
which is attached hereto.”). The Second Amended Com-
plaint asserted “AMI is now the assignee of the entire
right, title and interest in and to the ’581 Patent,” and
alleged infringement by TEK. J.A. 250, 329. The district
court found TEK did not object to AMI’s “standing” to
seek damages for infringement of the ’581 patent. J.A. 24
(“[A]s agreed upon by the parties, . . . AMI has stand-
ing.”). TEK has therefore waived any argument as to
misjoinder of AMI. See P.J. McCluskey v. Marysville & N.
Ry. Co., 243 U.S. 36, 40 (1917) (“[I]n view of the stipula-
tion of the parties in the court below, agreeing to the
substitution as plaintiff in error of the administrator of
Nordgard, who died while the cause was [] pending, the
motion to dismiss on the ground . . . that the administra-
tor is not a proper party[] is based upon a mere irregulari-
ty which was waived.”).
II. The District Court Erred in Construing the ’110
Patent
Claim construction is a question of law, reviewed de
novo, based on underlying findings of fact, which are
reviewed for clear error. Teva v. Sandoz, 135 S. Ct. 831,
837–38 (2015). When construing claims, “courts are
permitted to consider extrinsic evidence like expert testi-
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 7
mony, dictionaries, and treatises, [but] such evidence is
generally of less significance than the intrinsic record.”
Virnetx, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1316 (Fed.
Cir. 2014) (citing Phillips v. AWH Corp., 415 F.3d 1303,
1317 (Fed. Cir. 2005)). “The intrinsic record includes the
specification and the prosecution history.” C.R. Bard, Inc.
v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004).
The parties agree the prior art discloses all the ele-
ments of Claim 1, the broadest claim, except for “a three-
way valve” and “an additional hose.” SSI Sys. Int’l, Inc. v.
TEK Global S.R.L., No. 11-cv-00774 PSG, at 7 (N.D. Cal.
Mar. 7, 2013) (“Order Re TEK’s Motions for Summary
Judgment of Damages and Invalidity”) (J.A. 1–25). The
district court’s claim construction analysis therefore
focused on these terms. Claim 1 recites:
A kit for inflating and repairing inflatable arti-
cles; the kit comprising a compressor assembly (2),
a container (3) of sealing liquid, and connecting
means (4, 5) for connecting the container to the
compressor assembly (2) and to an inflatable arti-
cle for repair or inflation, and being characterized
by comprising an outer casing (6) housing said
compressor assembly (2) and defining a seat (7)
for the container (3) of sealing liquid, said con-
tainer (3) being housed removably in said seat (7),
and by comprising container connecting means (4,
40) for stably connecting said container to said
compressor assembly (2), so that the container,
when housed in said seat (7), is maintained func-
tionally connected to said compressor assembly
(2), said kit further comprising of an additional
hose (83) cooperating with said inflatable article;
and a three-way valve (81) input connected to said
compressor assembly (2), and output connected to
said container (3) and to said additional hose (83)
8 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
to direct a stream of compressed air selectively to
said container (3) or to said additional hose (83).
’110 patent col. 5 ll. 43–61 (emphases added).
The district court rejected TEK’s asserted claim con-
struction of “cooperating with” as meaning “directly
connected to.” Order Re TEK’s Motions for Summary
Judgment of Damages and Invalidity at 8. Because the
district court relied upon only intrinsic evidence in reach-
ing this conclusion, this court’s review is de novo. See
Teva, 135 S. Ct. at 841 (“[W]hen the district court reviews
only evidence intrinsic to the patent (the patent claims
and specifications, along with the patent’s prosecution
history), the judge’s determination will amount solely to a
determination of law, and the Court of Appeals will
review that construction de novo.”).
The court explained that although the terms “con-
nected to” and “connecting” appear earlier in claim 1, the
applicant chose to use the term “cooperating with” in
regard to the additional hose. Order Re TEK’s Motions
for Summary Judgment of Damages and Invalidity at 8.
The district court cited this court’s statement that “[t]he
fact that [] two adjacent claims use different terms in
parallel settings supports the . . . conclusion that the two
terms were not meant to have the same meaning.” Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335,
1349 (Fed. Cir. 2012). The fact pattern here differs from
that in Aspex, however, because the term “additional
hose” does not appear earlier in Claim 1; it is by reference
to the term “additional hose” that the term “cooperating
with” must be understood.
In this case a person having ordinary skill in the art
(“PHOSITA”) considering “addition hose 83” in the con-
text of the specification could only conclude that it is
connectable to a tire. The specification explicitly states
“additional hose 83 [is] connectable to the tyre.” ’110
patent col. 5 l. 13. It also states “[a]dditional hose 83 . . .
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 9
enables compressor assembly 2 to be used quickly and
easily to inflate a flat tyre,” a function consistent with
connection to the tire. Id. col. 5 ll. 29–31. Figure 7 shows
hose 83 as external to the device, and the end of hose 83
appears to be connectable to a tire valve. Compare ’110
patent fig.7 with ’110 patent fig.4 (illustrating hose 5,
which the specification indicates is connected to a tire
valve); see id. col. 2 ll. 47–48.
The district court did not find these statements in the
specification to be controlling because they “merely de-
scribe[] Figure 7 [which is] . . . a preferred . . . embodi-
ment.” Order Re TEK’s Motions for Summary Judgment
of Damages and Invalidity at 8 (internal quotation marks
and citation omitted). Such reasoning requires this court
to consider two general principles that are often in some
tension with one another. On the one hand, the patentee
is generally “entitled to the full scope of his claims, and
we will not limit him to his preferred embodiment or
import a limitation from the specification into the claims.”
Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348
(Fed. Cir. 2009) (citing Phillips, 415 F.3d at 1323); see
also Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1350
(Fed. Cir. 2013). Indeed, “[t]his court has expressly
rejected the contention that if a patent describes only a
single embodiment, the claims of the patent must be
construed as being limited to that embodiment.” Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.
Cir. 2004).
On the other hand, “the ordinary and customary
meaning of a claim term is the meaning that the term
would have to a [PHOSITA],” and the PHOSITA “is
deemed to read the claim term . . . in the context of the
entire patent, including the specification.” Phillips, 415
F.3d at 1313. Indeed, the specification is “the single best
guide to the meaning of a disputed term.” Id. at 1315,
1321 (internal quotation marks and citation omitted).
10 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
This court has “recognize[d] that the distinction between
using the specification to interpret the meaning of a claim
and importing limitations from the specification into the
claim can be a difficult one to apply in practice.” Id. at
1323.
In this case, neither Sealant/AMI nor the district
court point to any language in the specification describing
the “additional hose 83” as sometimes not connectable to a
tire. See Plaintiffs-Cross-Appellants’ Br. (“Sealant Br.”)
52–56; Order Re TEK’s Motions for Summary Judgment
of Damages and Invalidity at 6–8. 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. See Phillips, 415 F.3d at 1321
(Adoption of “a dictionary definition entirely divorced
from the context of the written description” is improper.).
The meaning of “cooperate with” is therefore 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 Commc’ns, Inc. v.
Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (dis-
tinguishing between amorphous claim terms and those
that are “clear and well-defined”).
Sealant and AMI argue the district court’s construc-
tion is correct because “the ordinary meaning of ‘cooperat-
ing with’ means ‘working together, directly or indirectly.’”
Sealant Br. 52–53. However, if such a dictionary defini-
tion of “cooperating with” were adopted, as Sealant and
AMI propose, the patent would claim more than the
patentee actually invented. See Smith v. Snow, 294 U.S.
1, 14 (1935) (“[I]f the claim were fairly susceptible of two
constructions, that should be adopted which will secure to
the patentee his actual invention, rather than to adopt a
construction fatal to the grant.”). There is nothing in the
patent indicating the patentee conceived of how the hose
might “cooperate with” an inflatable article other than by
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 11
connecting to it directly as a conduit for air. See ’110
patent col. 5 l. 31 (The additional hose can be “used quick-
ly and easily to inflate a flat tyre.”). More generally, this
court has cautioned against “elevating the dictionary” to
excessive prominence. Phillips, 415 F.3d at 1321.
For these reasons, the “cooperating with” limitation is
properly construed as requiring direct connection to the
tire, and the district court erred in finding otherwise.
III. The District Court Erred in Granting Summary
Judgment that the ’110 Patent Would Have Been Obvious
A patent is obvious and therefore invalid if “the dif-
ferences between the subject matter sought to be patented
and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to
which said subject matter pertains.” 35 U.S.C. § 103(2006). 1 Obviousness is a question of law based on (1) the
scope and content of the prior art, (2) the differences
between the claims and prior art, (3) the level of ordinary
skill in the pertinent art, and (4) objective indicia of
nonobviousness. Graham v. John Deere Co. of Kan. City,
383 U.S. 1, 17–18 (1966).
A. The District Court Clearly Erred in Evaluating
the Scope and Content of the Prior Art
“The content of prior art presents an issue of fact that
this court reviews only for clear error.” Nat’l Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1335 (Fed.
1 Section 103 has since been amended. See Leahy
Smith America Invents Act, Pub. L. No. 112-29, § 3(c), 125
Stat. 284, 287–88 (2011) (“AIA”). However, because the
application that led to the ’110 patent was filed before
March 16, 2013, the pre-AIA § 103(a) applies. See AIA,
125 Stat. at 293.
12 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
Cir. 2004). Two prior art references, U.S. Patent Applica-
tion Publication 2003/0056851 (“Eriksen”) and Japanese
Patent No. 2004-338158 (“Bridgestone”), were considered
by the district court. TEK conceded “Eriksen disclose[s]
all the elements within claim[s] 1, 26 and 27 of the ’110
Patent except ‘a three-way valve’ and ‘an additional
hose.’” Order Re TEK’s Motions for Summary Judgment
of Damages and Invalidity at 7. The district court found
Bridgestone, which was not before the examiner, discloses
an air tube 54 that works together with a tire, even
though it is not directly connected to the tire, and that air
tube 54 therefore represents the element of “an additional
hose 83 cooperating with” the tire. See id. at 9.
Bridgestone fig.1.
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 13
’110 patent fig.7.
Under the proper construction of “cooperating with,”
however, Bridgestone does not disclose an “additional
hose cooperating with” the tire because air tube 54 is not
directly connected to the tire as is additional hose 83 in
the ’110 patent (see figures, above). Air tube 54 also
cannot, without joint hose 66, “be used quickly and easily
to inflate a flat tyre,” id. col. 5 ll. 29–31, because only joint
hose 66 is connected to the tire in Bridgestone. See
Bridgestone fig.1. In light of these differences, the district
court clearly erred in finding Bridgestone disclosed the
element of an “additional hose [] cooperating with” the
tire.
B. There Was Insufficient Evidence of a Motiva-
tion to Combine Eriksen with Bridgestone to
Produce the Claimed Invention
The motivation to combine prior-art references is a
question of fact, reviewable only for clear error. See Grp.
One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1304
(Fed. Cir. 2005). The district court found a motivation to
combine Eriksen and Bridgestone, noting “both Eriksen
and Bridgestone offer nearly identical solutions,” to “the
same problem” of “repairing deflated tires with air and/or
14 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
sealing liquids.” Order Re TEK’s Motions for Summary
Judgment of Damages and Invalidity at 10 (citing Tokai
Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1371 (Fed.
Cir. 2011) (This court has “consistently stated that courts
may find a motivation to combine prior art references in
the nature of the problem to be solved, and that [t]his
form of motivation to combine evidence is particularly
relevant with simpler mechanical technologies.”) (internal
quotation marks and citation omitted)).
Based on its erroneous interpretation of claim scope,
the district court erred in determining that Sealant and
AMI “‘demonstrate[d] by clear and convincing evidence
that a skilled artisan would have had reason to combine
the teaching[s] of [Eriksen and Bridgestone] to achieve the
claimed invention.’” Order Granting Post-Trial Motions
at 23 (quoting In re Cyclobenzaprine Hydrochloride Ex-
tended-Release Capsule Patent Litig., 676 F.3d 1063,
1068–69 (Fed. Cir. 2012)) (emphasis added). Even if a
skilled artisan would be motivated to combine the two
references, as the district court found, this would not
produce the claimed invention because neither Bridge-
stone nor Eriksen teach the use of “an additional hose []
cooperating with” the tire.
For these reasons, the district court erred in granting
summary judgment that the asserted claims of the ’110
patent would have been obvious. While we reverse the
district court’s grant of summary judgment of obviousness
with respect to the asserted claims of the ’110 patent,
Sealant has not had an opportunity to make a case for
invalidity in light of this court’s claim construction. A
remand is therefore required.
IV. The ’581 Patent Is Invalid and the District Court
Erred in Denying Judgment as a Matter of Law
When reviewing a denial of JMOL, this court applies
the standard of review according to the law of the regional
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 15
circuit, in this case the Ninth Circuit. See Wechsler v.
Macke Int’l Trade, Inc., 486 F.3d 1286, 1290 (Fed. Cir.
2007). The Ninth Circuit “reviews de novo an order
granting or denying JMOL,” and will reverse a denial of
JMOL where “‘the evidence, construed in the light most
favorable to the nonmoving party, permits only one rea-
sonable conclusion, and that conclusion is contrary to the
jury’s verdict.’” Id. at 1291 (quoting Pavao v. Pagay, 307
F.3d 915, 918 (9th Cir. 2002)).
Sealant and AMI argue substantial evidence supports
the jury’s finding that TEK failed to prove the prior art
disclosed both the receptacle and port of independent
claim 27. Sealant Br. 17–18. Claim 27 of the ’581 patent
recites:
A tire repair device, comprising:
a housing;
an air compressor disposed within said housing;
an air flow path from said air compressor adapted
to be connected to a tire;
a receptacle formed in said housing in communica-
tion with said air flow path;
and a port disposed in said receptacle in communi-
cation with said air flow path adapted to sealingly
receive a bottle of tire sealant,
wherein when said air compressor is activated
and a bottle of tire sealant is received in said re-
ceptacle, air from said air compressor is forced in-
to the bottle and pushes tire sealant out of the
bottle, into said receptacle, into said air flow path,
and into the tire.
’581 patent col. 9 l. 58–col. 10 l. 5 (emphases added).
The specification indicates port 40 (fig.3) is located at
the base of cap 48 (figs.1 & 3) in receptacle 14 (fig.1). See
16 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
’581 patent figs.1, 3. Figure 5, reproduced below, illus-
trates “a sectional view of the receptacle port of [Figure
3].” Id. col. 3 ll. 63–64.
’581 patent figs.1, 3, 5.
U.S. Patent Application Publication 2004/0173282 A1
(the “’282 publication”) discloses both the receptacle and
port elements of claim 27 of the ’581 patent. See ’581
patent col. 9 ll. 63–67. Figure 4 of the ’282 publication
illustrates “screw socket 18,” ’282 publication ¶ 18 (see
J.A. 2363, 2365), into which the “container [of sealant] 4”
is inserted, id. ¶¶ 15, 18. The “screw socket” of the ’282
publication is a “port” within the meaning of the ’282
patent. See Sealant Sys. Int’l, Inc. v. TEK Global, S.R.L.,
No 11-cv-0074-PSG, at 10–12 (N.D. Cal. Aug. 29, 2012)
(“Claim Construction Order”) (J.A. 25.1–25.31). AMI’s
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 17
expert Dr. King conceded this during trial, stating “socket
18 . . . meets the court’s definition of a port in the claim
construction order.” J.A. 4381; see also id. (Question:
“You just testified screw socket 18 is a port . . . .” Answer:
“That’s correct.”). The port of claim 27 of the ’581 patent
is therefore disclosed in the form of screw socket 18 of the
’282 publication.
’282 publication fig.4.
However, Dr. King opined screw socket 18 does not
meet the requirements of the claim element because it is
not disposed in a receptacle. J.A. 4381. He stated the
’282 publication did not disclose a receptacle “because
there’s not a wall [around the port],” i.e., around screw
socket 18. J.A. 4384. However, claim 27 does not recite a
“wall,” and the district court construed “receptacle formed
in said housing” according to its ordinary meaning. Claim
Construction Order at 7. The district court explained that
“[t]he word ‘receptacle’ connotes depth” and a PHOSITA
would understand the term to mean “something that
receives or contains something.” Id. No reasonable juror
could conclude that the unnumbered hole in the housing
in Figure 4 of the ’282 publication, which contains the
screw socket, does not possess depth. See J.A. 4385 (Dr.
King: “[The ’282 publication] has a hole that the socket
18 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
goes in.”). This indicates the ’282 publication discloses
both the port and the receptacle as claimed in the ’581
patent. See Blackboard, Inc. v. Desire2Learn, Inc., 574
F.3d 1371, 1381 (Fed. Cir. 2009) (“[T]he conclusion of
anticipation is dictated by the testimony of [the patent
owner’s] own witnesses and the documentary evidence
that was presented to the jury.”).
The district court, however, found “a genuine dispute
exists whether [the ’282 publication] discloses ‘a recepta-
cle formed in the housing,’” as required by claim 27 of the
’581 patent, citing the argument of Sealant and AMI that
“the hole in the housing [of the ’282 publication] does not
perform the function of sealingly receiving the container
of sealant,” and that “only the screw socket identified as
18 does.” Order Re TEK’s Motions for Summary Judg-
ment of Damages and Invalidity at 20–21 (capitalization
omitted). However, claim 27 states “a port disposed in
said receptacle . . . [is] adapted to sealingly receive a
bottle of tire sealant.” ’581 patent col. 9 ll. 65–66 (empha-
sis added). Claim 27 does not require the receptacle to
sealingly receive the bottle of sealant, except to the extent
the port, which is in the receptacle, does so. See id. col. 9
l. 63–col. 10 l. 5.
Because claim 27 of the ’581 patent is anticipated by
the ’282 publication, the district court’s finding of no
anticipation is reversed and the jury’s infringement
verdict and damages award, as well as the district court’s
order permanently enjoining TEK from infringing the ’581
patent, are vacated. 2
With one exception, Sealant and AMI do not separate-
ly argue the validity of claims other than claim 27, so this
2 Because we vacate the jury’s damages award, the
parties’ dispute over how the award was calculated is
moot.
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 19
court will not separately consider them. See Sud-Chemie,
Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed.
Cir. 2009) (declining to consider the independent validity
of certain claims where the appellant did not separately
argue they were patentable). The one exception is claim
42, which recites:
A tire repair device, comprising:
a housing;
an air compressor within said housing;
an air flow path from said air compressor adapted
to be connected to a tire; and
a reservoir formed in said housing in communica-
tion with said air flow path adapted to receive tire
sealant,
wherein when said air compressor is activated
and tire sealant is received in said reservoir, air
from said air compressor is forced into said reser-
voir and pushes tire sealant out of said reservoir,
into said air flow path, and into the tire.
’581 patent col. 11 ll. 29–41 (emphasis added). When
asked “[w]hat difference, if any, existed between the
claimed invention [of the ’581 patent] and the prior art,”
the jury stated only “[t]he two piece system (receptacle
and port).” J.A. 28. Claim 42 recites neither a receptacle
nor a port. See ’581 patent col. 11 ll. 29–41.
Nevertheless, the district court denied TEK’s motion
for JMOL that claim 42 was anticipated, reasoning that
“testimony from both parties’ experts [that none of the
prior art disclosed a reservoir] constitutes substantial
evidence supporting the jury’s verdict on anticipation.”
Order Re TEK’s Motions for Summary Judgment of
Damages and Invalidity at 23. However, in light of the
expert testimony and the disclosure of the ’282 publica-
20 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
tion, no reasonable juror could conclude the ’282 publica-
tion fails to disclose a reservoir.
The district court construed “reservoir” to mean “cavi-
ty where sealant collects separate from the container.”
Claim Construction Order at 12. The ’282 publication
discloses “a cavity 25 . . . from where the air passes be-
tween the inner walls of the cavity 25 and the outer walls
of the connector pipe 19 down to the continuation of the
compressed air duct 21.” ’282 publication ¶ 19. See J.A.
4099 (Dr. Kazerooni: “Once you put a cap in there, there’s
a cavity.”). As described in the ’581 patent, a user can
“pour[] tire sealant into reservoir 215, replace[] the cap on
orifice 214, and activate[] switch 18 to turn on the air
compressor.” ’581 patent col. 7 ll. 36–38. Nothing in the
record suggests the cavity of the ’282 publication could not
receive sealant in a similar manner, such as by applying
sealant to the inside of the cap prior to inserting it into
the socket. Figure 3 (below) illustrates cavity 25, which
includes the triangular region between connector pipe 19
and plug 22 as well as the space between the inner walls
of plug 22 and the outer walls of the connector pipe 19.
’282 publication fig.3.
SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L. 21
Although the cavity disclosed in the ’282 publication
may be small, AMI’s expert Dr. King indicated there is no
minimum size for the cavity in order for it to constitute a
reservoir. See J.A. 4345 (agreeing that “even one millili-
ter [of sealant flowing out of the container] would be a
sufficient amount to have a reservoir”). The ’282 publica-
tion therefore anticipates claim 42 of the ’581 patent. The
district court’s denial of JMOL as to claim 42 is thus also
reversed, and the jury’s infringement verdict and damag-
es award, and the district courts’ injunction as to claim
42, are also vacated.
V. Sealant and AMI’s Request for Attorney Fees Is
Denied
“The court in exceptional cases may award reasonable
attorney fees to the prevailing party.” 35 U.S.C. § 285.
Applying this court’s precedent in Brooks Furniture
Manufacturing, Inc. v. Dutailier International, Inc., 393
F.3d 1378, 1381 (Fed. Cir. 2005), the district court denied
Sealant and AMI’s motion for attorney fees.
Sealant and AMI argue the district court’s denial of
its motion for attorney fees should be vacated and re-
manded because the Supreme Court’s intervening deci-
sion in Octane Fitness, LLC v. ICON Health & Fitness,
Inc., 134 S. Ct. 1749 (2014), has rendered the standard
applied by the district court no longer valid. The Court in
Octane Fitness “reject[ed] the Federal Circuit’s require-
ment that patent litigants establish their entitlement to
fees under § 285 by clear and convincing evidence,” there-
by overruling Brooks Furniture. Octane Fitness, 134 S.
Ct. at 1758. It also rejected this court’s requirement that
a case may be deemed exceptional under § 285 only “when
there has been some material inappropriate conduct, or
when the litigation is both brought in subjective bad faith
and objectively baseless.” Id. at 1752 (internal quotation
marks and citation omitted).
22 SEALANT SYS. INT’L, INC. v. TEK GLOBAL, S.R.L.
However, Octane Fitness did not alter the require-
ment that attorney fees may be awarded “to the prevail-
ing party.” 35 U.S.C. § 285. Because this court holds
AMI’s ’581 patent invalid, and reverses summary judg-
ment of invalidity with respect to TEK’s ’110 patent,
Sealant and AMI are no longer “prevailing parties” for
purposes of § 285. See SSL Servs., LLC v. Citrix Sys.,
Inc., 769 F.3d 1073, 1086 (Fed. Cir. 2014) (“To be the
prevailing party, we require: (1) that the party received at
least some relief on the merits, and (2) [t]hat relief must
materially alter the legal relationship between the parties
by modifying one party’s behavior in a way that directly
benefits the opposing party.”) (internal quotation marks
and citation omitted). The district court’s denial of Seal-
ant’s attorney fees request, predicated on the now vacated
judgment, is therefore affirmed.
CONCLUSION
For these reasons, the decision of the district court is
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED FOR
FURTHER PROCEEDINGS