TEK Global S.R.L. et.al. v. Sealant Systems International Inc. et.al.

Filing 564

PERMANENT INJUNCTION. Signed by Judge Chhabria on 8/11/2017. (vclc3S, COURT STAFF) (Filed on 8/11/2017)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

TEK GLOBAL, S.R.L., et al.,

Case No. 11-cv-00774-VC

Plaintiffs,
PERMANENT INJUNCTION

v.
SEALANT SYSTEMS INTERNATIONAL,
INC, et al.,
Defendants.
I.

PROHIBITED ACTIVITIES - U.S. PATENT NO. 7,789,110
IT IS HEREBY ORDERED that Defendants Sealant Systems International, Inc. and ITW

Global Tire Repair (collectively, "SSI"), and any of its parents, subsidiaries, successors, assigns,
officers, agents, servants, employees, attorneys, and persons or entities in active concert or
participation with them (including any affiliated entities), who receive actual notice of this
Permanent Injunction (collectively, the "Enjoined Parties"), are hereby permanently enjoined and
restrained from infringing, or inducing or contributing to, the infringement of claims 26, 28, and
31 of U.S. Patent No. 7,789,100 (the "'110 Patent"), until the expiration of the patent, by:
(a) making, using, selling, offering to sell, or importing into the United States, any tire
repair kit that includes features that infringe claims 26, 28, and 31 of the '110 Patent, including
following tire-repair kit models: 70006S, 70011S, 70012S, 70013S, 70015S, 70016S, 70019S,
70022S, 70023S, 70024S, 70027S, 70028S, 70029S, 70030S, 70031S, 70032S, 70039S, 70040S,
70045S, 70006, 70011, 70016, 70019, 70023, 70024, 70027, 70028, 70029, 70030, 70031,
70032, 70039, 70040, 70041, 70045, and those no more than colorably different (collectively,
"Enjoined Products"); and/or

(b) assisting others in making, using, selling, offering to sell, or importing into the United
States, any Enjoined Products, by engaging in activities including, without limitation, the
following: (i) advertising, marketing, or otherwise promoting Enjoined Products; (ii) entering or
fulfilling product orders, or setting, determining, or approving terms of sale, for Enjoined
Products; (iii) providing customer service or other technical support relating to Enjoined
Products; (iv) negotiating or entering into licensing, representative, reseller, or distributor
agreements relating to Enjoined Products; (v) developing, designing, manufacturing, or having
manufactured products substantially similar to Enjoined Products; (vi) writing, modifying,
updating, drafting or otherwise preparing documentation regarding the operation, use, or
intended of any Enjoined Product.
II.

SUNSET PROVISION
With respect to the Enjoined Products, the injunction against activities listed in

paragraphs (a) and (b) above shall be stayed until 9 months after the date of entry of this
injunction, subject to the following limitations:
(a) Sunset Sales are permitted only to existing SSI customers who (i) before March 17,
2017 qualified or validated an Enjoined Product for use in a particular customer platform; and
(ii) before March 17, 2017 placed a firm order for production activities of that Enjoined Product
for use in that particular customer platform. "Production quantities" are any purchases in excess
of those necessary for testing and development. An infringing device sold under this Sunset
Provision shall be in substantially the same design configuration as it was on March 17, 2017.
Permitted Sunset Sales, if any, shall be specifically and exclusively identified in an Appendix to
this Injunction, a draft of which shall be jointly submitted by TEK and SSI for the Court's
consideration by August 21, 2017.
(b) For each Sunset Sale, SSI shall obtain from the purchasing customer written
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certification that the purchased Enjoined Product shall be used only as specifically and
exclusively identified in an Appendix to this Injunction. Such certification shall show the
quantity of purchased Enjoined Products. Within 15 days after the close of each calendar
quarter, SSI shall provide TEK with copies of all such certifications obtained during the
immediately-preceding quarter.
III.

PERMISSIBLE DESIGN-AROUND EFFORTS
Nothing in this Permanent Injunction shall prohibit the Enjoined Parties from engaging in

the design, development, or testing of any product that does not infringe the '110 Patent.
Nothing in this Permanent Injunction shall prohibit the Enjoined Parties from either engaging in
modification of any Enjoined Product so as to eliminate infringement, or engaging in design,
development, or testing for said purpose.
IV.

NOTICE
IT IS FURTHER ORDERED that, within 30 days from the date of this signed Permanent

Injunction, SSI shall provide a copy of this Permanent Injunction to each of its parents,
subsidiaries, successors, assigns, officers, agents, servants, employees, attorneys, and persons or
entities in active concert or participation with them (including any affiliated entities), as well as
to any and all manufacturers, distributors, retailers, licensees, customers, automotive original
equipment manufacturers, and all other persons or entities who have been, or are reasonably
expected to be, directly or indirectly involved in the making, using, selling, offering for sale or
importing in the United States of any Enjoined Product, including but not limited to any
company to which SSI has previously directly or indirectly sold or offered for sale one or more
of the Enjoined Products, and any company to which SSI intends in the future to directly or
indirectly sell or offer to sell one or more of the Enjoined Products.
IT IS FURTHER ORDERED that, within 30 days from the date of this signed Permanent
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Injunction, SSI shall file with the court and serve on all parties a notice stating the names and
addresses of each party that it has notified in compliance with this section.
V.

CONTINUING JURISDICTION
The court specifically retains jurisdiction to enforce, modify, extend, or terminate this

Permanent Injunction as the equities may require, upon a proper showing, and to adopt
procedures for resolution of any dispute whether a product not specifically covered by this
Permanent Injunction is more than colorably different from the adjudged infringing products.
IT IS SO ORDERED.
Dated: August 11, 2017
______________________________________
VINCE CHHABRIA
United States District Judge

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