Before Prost, Dyk, and Wallach. Appeal from the United States District Court for the Northern District of California.

Summary: When the Federal Circuit holds that a combination of references does not teach a particular limitation, that does not foreclose all other obviousness theories based on the same combination of references.

TEK sued SSI for infringing its patent covering an emergency tire repair kit. The District Court initially found the patent valid and infringed, but the Federal Circuit vacated as to validity and ordered a new trial. Specifically, the Federal Circuit overturned the claim construction, and held that using the proper claim construction, neither of the two prior art references relied on disclose a particular limitation. The Federal Circuit remanded with an explanation that SSI “has not had an opportunity to make a case for invalidity in light of this court’s claim construction.”

On remand, SSI presented a new obviousness theory using the same two prior art references, and argued that “it would have been obvious... to modify” one of the previously raised prior art references, such that it would meet the properly construed limitations. However, the district court believed that the Federal Circuit had already foreclosed SSI’s invalidity theory, and instructed the jury that it was “not permitted to conclude that [two references], alone or in combination with one another, discloses” the limitation in question. In this second appeal to the Federal Circuit, the court determined that the district court misunderstood its prior holding, and SSI should have been allowed to present its new obviousness theory that was not at issue in the prior appeal. The Federal Circuit remanded for a partial new trial on validity.

For judicial economy, the Federal Circuit affirmed the infringement finding, damages award, and permanent injunction. For the permanent injunction, the Federal Circuit analyzed the Ebay factors in the context of a two-supplier market and concluded the injunction included a “well-crafted sunset provision [that] mitigates any negative effects” on the public interest.

This case is: TEK Global, S.R.L. v. Sealant Systems International

Editor: Paul Stewart

Written by: David C. Kellogg and Mark Kachner