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

Filing 134

ORDER RE MOTIONS FOR SUMMARY JUDGMENT by Judge Paul S. Grewal finding as moot 98 Motion for Summary Judgment; granting in part and denying in part 99 Motion for Summary Judgment; denying 100 Motion for Summary Judgment; granting 101 Motion for Summary Judgment; finding as moot 103 Motion for Summary Judgment (psglc1, COURT STAFF) (Filed on 3/7/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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SSI SYSTEMS INTERNATIONAL INC., and
ACCESSORIES MARKETING, INC.,
Plaintiffs,
v.

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TEK GLOBAL S.R.L. and TEK
CORPORATION,
Defendants.
TEK GLOBAL S.R.L. and TEK
CORPORATION,
Cross-Plaintiffs,
v.
SSI SYSTEMS INTERNATIONAL INC., and
ACCESSORIES MARKETING, INC.,
Cross-Defendants.

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Case No.: 11-CV-00774 PSG

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Case No.: 11-CV-01649 PSG

ORDER RE TEK’S MOTIONS FOR
SUMMARY JUDGMENT OF
DAMAGES AND INVALIDITY
(Re: Docket No. 99, 100)

ORDER RE SSI’S MOTIONS FOR
SUMMARY JUDGMENT OF
INVALIDITY AND NONINFRINGEMENT; AND TEK’S
MOTION FOR SUMMARY
JUDGMENT OF INFRINGEMENT
(Re: Docket No. 98, 101, 103)

Before the court in this patent case are a number of motions for summary judgment from
both parties. TEK Global S.R.L. and TEK Corporation (“TEK”) bring two motions for summary
judgment on the issues of damages and invalidity of the United States Patent No. 6,789,581 (“the

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‘581 patent”). Sealant Systems International Inc. (“SSI”) and Accessories Marketing, Inc. (“AMI”)
move for summary judgment of infringement of United States Patent No. 7,789,110 (“the ‘110
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Case No.: C 11-774 PSG
ORDER

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patent”). SSI1 also moves for summary judgment on non-infringement and invalidity of the ‘110

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patent. On February 12, 2013, the parties appeared for hearing. Having considered the papers and

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arguments of counsel, the court GRANTS SSI’s motion for invalidity of the ‘110 patent, DENIES

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AS MOOT the parties’ cross-motions on infringement of the ‘110 patent, DENIES TEK’s motion

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for invalidity of the ‘581 patent, and GRANTS-IN-PART TEK’s motion for partial summary

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judgment on damages. The court sets forth its reasoning below.

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I.

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BACKGROUND

SSI and AMI are California corporations engaged in the manufacture and sale of onboard

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United States District Court
For the Northern District of California

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tire repair systems.2 TEK is an Italian limited liability company involved in the same.3 On

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November 10, 2010, TEK initially sued SSI for infringement of the ‘110 patent in the Southern

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District of New York. On February 18, 2011, SSI filed suit against TEK in this district, seeking

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declaratory judgment of noninfringement of the ‘110 patent (“the original case”). SSI moved

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successfully to transfer the New York case here.4 SSI then moved to consolidate the two cases, a

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motion which the court granted.5 Later, SSI amended its complaint to include an affirmative patent

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infringement claim against TEK, asserting U.S. Patent No. 6,789,581 (“the ‘581 patent”) 6 (“the

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secondary case”).7

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Unless otherwise noted, the court refers to Plaintiffs SSI and AMI jointly as “SSI” in this
litigation. Where necessary, the court will delineate between the two.

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2

See Docket No. 37.

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3

See id.

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4

See id.

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See Docket No. 8.

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See Docket No. 37.

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The court uses the terms “original case” and “secondary case” for ease of reference only.
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Case No.: C 11-774 PSG
ORDER

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A.

The original case: TEK sues SSI for infringement of the ‘110 patent

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The ‘110 patent discloses “a kit for inflating and repairing inflatable articles, in particular,

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tires.”8 The kit includes “a compressor assembly, a container of sealing liquid and connectors for

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connecting the container to the compressor assembly and to an inflatable article for repair or

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inflation.”9

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TEK claims infringement of 1-5, 11-15, and 21-31 of the ‘110 patent by any SSI or AMI
one-piece integrated On Board Tire Repair System (“OTRS”) imported, sold, or offered for sale in
the United States that includes a three-way valve allowing for the kit to either repair a tire using

United States District Court
For the Northern District of California

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sealant and/or sealant and air to inflate a tire with compressed air, as well as two separate hoses,

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one for sealant repair and an additional hose for air inflation.10 The accused products include

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products numbered 70006/70006s, 70011/70001s, 70012/70012s, 70013/70013s, 70015/70015s,

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70016/70016s, 70019/70019s, 70020/70020s, 70021/70021s, 70040/700400s, 70041/70041s.11

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B.

The secondary case: SSI sues TEK for infringement of the ‘581 patent

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SSI claims infringement of the ‘581 patent, which discloses and claims a tire repairing

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device.12 The device operates such that when the air compressor is activated in the claimed device,

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air from the air compressor pushes tire sealant out of the attached container into and out of the

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receptacle/port, into the air flow path, and into the connected tire.13

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See Docket No. 101-2 at 1.

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See id.

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See Docket No. 98 at 5.

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See id.

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See Docket No. 111-2 at 1.

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See id.

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Case No.: C 11-774 PSG
ORDER

SSI has asserted infringement of claims 1-3, 8, 10-11, 13, 15, 17, 21-24, 27-31, 34, 36, 38-

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43, 45-47.14
II.

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Summary judgment is appropriate only if there is “no genuine dispute as to any material

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SUMMARY JUDGMENT STANDARDS

fact and the movant is entitled to judgment as a matter of law.”15 The moving party bears the
initial burden of production by identifying those portions of the pleadings, discovery and affidavits
which demonstrate the absence of a triable issue of material fact.16 The standard for summary
judgment differs depending on whether the moving party bears the burden of persuasion at trial.17

United States District Court
For the Northern District of California

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If the moving party bears the burden of persuasion at trial, he must present “credible evidence”

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showing that he is entitled to a directed verdict.18 The burden of production then shifts to the non-

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moving party to produce evidence raising a genuine issue of material fact.19 On the other hand, if

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the moving party does not bear the burden of persuasion at trial, he can prevail on a motion for
summary judgment in two ways: by proffering “affirmative evidence negating an element of the

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non-moving party’s claim,” or by showing the non-moving party has insufficient evidence to

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establish an “essential element of the non-moving party’s claim.”20 If met by the moving party, the

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burden of production then shifts to the non-moving party, who must then provide specific facts

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showing a genuine issue of material fact for trial.21 In both instances, the ultimate burden of

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See Docket No. 100.

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Fed. R. Civ. P. 56(a).

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See Fed. R. Civ. P. 56(c)(1); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).

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See Celotex Corp., 477 U.S. at 331.

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Id.

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See id.

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Id.

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See id. at 330; T.W. Elec. Service, Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 630, 630 (9th
Cir. 1987).
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Case No.: C 11-774 PSG
ORDER

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persuasion remains on the moving party.22 In reviewing the record, the court must construe the

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evidence and the inferences to be drawn from the underlying evidence in the light most favorable

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to the non-moving party.23

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III.
A.

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DISCUSSION

SSI’s Motion for Invalidity of the ‘110 Patent
The court first considers SSI’s motion for summary judgment of the invalidity of ‘110

patent claims 1-5, 11-15, and 21-31 due to obviousness.24
A patent is obvious if “the differences between the subject matter sought to be patented and

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United States District Court
For the Northern District of California

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the prior art are such that the subject matter as a whole would have been obvious at the time the

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invention was made to a person having ordinary skill in the art to which said subject matter

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pertains.”25 Obviousness is a question of law based on (1) the scope and content of the prior art,

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(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.26 The party asserting invalidity bears the burden

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of proving “by clear and convincing evidence that a skilled artisan would have been motivated to
combine the teachings of the prior art references to achieve the claimed invention, and that the

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See id.

See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Matsushita Elec. Indus. Co., Ltd.
v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
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See Docket No. 101.

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35 U.S.C. § 103(a). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

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See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).

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Case No.: C 11-774 PSG
ORDER

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skilled artisan would have had a reasonable expectation of success in doing so.”27 The district
court reviews any material factual findings by the patent examiner de novo.28
i.

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Claims 1, 26, and 27

SSI contends that claims 1, 26, and 27 are obvious in light of the combination of U.S.
Patent Application Publication 2003/0056851 to Eriksen ("Eriksen") and Japanese Patent No. 2004338158 issued to Bridgestone Corporation ("Bridgestone").29 Claim 1 reads as follows:

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A kit for inflating and repairing inflatable articles; 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 article 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
container (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 functionally 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) to direct a stream of compressed air selectively to said container (3) or to said
additional hose (83).30

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United States District Court
For the Northern District of California

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According to the prosecution history, the examiner rejected claims 1-3, 5-6, 9 and 13

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within the original ‘110 patent application due to anticipation by Eriksen.31 The ‘110 patent

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application was later allowed after the applicant amended pending claim 1, the broadest claim, to

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incorporate the limitations “an additional hose (83) cooperating with said inflatable article; and a

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Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009)
(quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)).
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See Kappos v. Hyatt, 132 S. Ct. 1690, 1696 (2012) (citing 5 U.S.C. § 706).

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See Docket No. 101 at 2.

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Docket No. 101-2 at col. 5, ll. 43-61.

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See Docket No. 101-9 at ¶¶ 7-14.

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Case No.: C 11-774 PSG
ORDER

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three-way valve.”32 SSI urges that Bridgestone discloses the additional limitations, rendering claim
1, along with similarly-drafted claims 26 and 27, obvious when combined with Eriksen.
a.

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Scope and Content of Eriksen and Bridgestone

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The parties agree that Eriksen and Bridgestone are prior art and further that Eriksen

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disclosed all the elements within claim 1, 26 and 27 of the ‘110 Patent except “a three-way valve”

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and “an additional hose.”33

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Where they disagree is exactly what was disclosed in Bridgestone and specifically whether

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Bridgestone discloses each of the missing limitations. No dispute exists regarding disclosure of the

United States District Court
For the Northern District of California

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“a three-way valve” limitation in Bridgestone; even TEK’s expert conceded that air directional

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valve 48 in Bridgestone embodies a three-way valve,34 which conforms with the court’s previous

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construction of a three-way valve as “[a] valve with one input and two outputs.”35

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This leaves the question of whether Bridgeston discloses “an additional hose.” TEK
disputes that air tube 54 in Bridgestone qualifies as “an additional hose” because air tube 54 is not

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directly connected to a tire and thus is not “cooperating with” the tire, as the claim requires.36

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According to TEK, if “an additional hose” is required to be directly connected to a tire, then air

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tube 54, not connected to a tire as shown, cannot represent the element of “an additional hose.” As

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such, whether air tube 54 represents “an additional hose” hinges on the construction of the term

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“cooperating,” and such a question is one of law to be resolved by the court.37

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32

See Docket No. 101-9 at ¶¶ 17-18; See also Docket No. 101-13 at ¶ 5.

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33

See Docket No. 101-9 at ¶¶ 9-14.

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34

See Docket No. 101-16 at 211:12.

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35

Docket No. 88 at 22.

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36

Docket No. 101-16 at 211.

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37

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See Phillips v. AWH Corp., 415 F.3d 1303, 1330 (Fed. Cir. 2005). The court has previously
articulated the legal standards it applies to claim construction in this case. See Docket No. 88.
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Case No.: C 11-774 PSG
ORDER

The intrinsic evidence does not support TEK’s claim interpretation that “cooperating”

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means “directly connected to.” Although the applicant chose the words “connectable” and

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“connected to” earlier in the language of claim 1, the applicant never uses a variation of “connected

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to” regarding the tire and the additional hose.38 Rather, the applicant described the additional hose

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as “cooperating with said inflatable article.”39 Federal Circuit precedent dictates that by using

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different terminologies, the applicant is presumed to have intended two different meanings. 40 TEK

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fails to rebut such a presumption.
TEK cites the specification of the ‘110 patent stating “an additional hose 83 connectable to

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United States District Court
For the Northern District of California

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the tyre” to support its contention that the “cooperating” additional hose must be directly connected

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to the tire.41 However, this language merely describes Figure 7, a figure explicitly characterized as

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the “best mode for carrying out the invention,” or a “preferred, non-limiting embodiment of the

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patent,” which suggests a direct connection between the additional hose 83 and the tire at most is

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an option, rather than a requirement. 42

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The court concludes there is no support for construing the term “cooperating with” as

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“directly connected to.” As SSI asserts, “cooperating with” is properly construed to mean

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“working together,” whether directly or indirectly, because nothing in the patent suggests a

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38

Docket No. 101-2 at col. 5, ll. 56.

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39

Id.

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40

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See e.g., Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)
(“The fact that the two adjacent claims use different terms in parallel settings supports the district
court's conclusion that the two terms were not meant to have the same meaning”); Tandon Corp. v.
U.S. Intern. Trade Comm’n., 831 F.2d 1017, 1023 (Fed. Cir. 1987) (“There is presumed to be a
difference in meaning and scope when different words or phrases are used.”).
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Docket No. 109 at 12.

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See DSW v. Shoe Pavilion, 537 F.3d 1342, 1347-48 (Fed. Cir. 2008) (“When claim language is
broader than the preferred embodiment, it is well-settled that claims are not to be confined to that
embodiment.”).
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Case No.: C 11-774 PSG
ORDER

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different meaning should be attributed to that term. 43 Accordingly, there is no genuine dispute that

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air tube 54 in Bridgestone represents the element of “an additional hose” by working together with

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a tire, even though it is not directly connected to the tire.

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b.

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Level of Ordinary Skill in the Art

Although the parties do not address the level of ordinary skill in the art anywhere in their
papers, SSI’s expert declares that “a person of ordinary skill in the art of the ‘110 patent is a person
with at least a bachelor’s degree in mechanical engineering and at least two years of experience

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designing and analyzing devices for pressurizing systems using air compressors and pneumatic

United States District Court
For the Northern District of California

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devices.”44 Although one could imagine that TEK would urge that a lower level of skill, which

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would make it more difficult to establish obviousness,45 the court must take the record as it finds it,

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and for purposes of resolving the present dispute, a reasonable jury could only find that the level of

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ordinary skill is that of “a person with at least a bachelor’s degree in mechanical engineering and at

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least two years of experience designing and analyzing devices for pressurizing systems using air
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compressors and pneumatic devices.”46
c.

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Differences Between the Claimed Invention and the Prior Art

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Even with no genuine dispute that Eriksen and Bridgestone disclose all of the claim

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limitations at issue in claims 1, 26, and 27, the question remains whether there is a genuine dispute

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whether the ordinarily skilled artisan would combine the references to arrive at the claimed

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invention. The Federal Circuit has “consistently stated that courts ‘may find a motivation to

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Docket No. 116 at 3-4.

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See Docket No. 101, Ex. 23 at ¶ 3.

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See Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314, 1324 (Fed. Cir. 2011).

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See Docket No. 101-23 at ¶ 3.

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Case No.: C 11-774 PSG
ORDER

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combine prior art references in the nature of the problem to be solved,’ and that ‘[t]his form of

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motivation to combine evidence is particularly relevant with simpler mechanical technologies.’”47

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With regard to “the nature of the problem to be solved,” it is apparent that toward the same

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problem both Eriksen and Bridgestone offer nearly identical solutions, which is repairing deflated

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tires with air and/or sealing liquids.48 A reasonable jury could only find that the motivation to view

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them together and then combine them would be substantial. Bridgestone elaborated extensively on
the mechanism and advantage of incorporating a “gas-liquid switching valve” that allows selection

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between air and/or sealing liquid.49 Bridgestone also discussed the possibility of supplying both air

United States District Court
For the Northern District of California

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and sealing liquid through a single hose, a solution offered by Eriksen, “so a hose does not have to

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be refastened to a pneumatic tire.”50 The discussions within Bridgestone on separating the flow

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path of air and sealant liquid in tire-repairing devices demonstrate that practitioners in the art

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already understand the advantages and disadvantages between combining and separating the flow
paths.

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Given that the tire-repairing kits embody relatively simple mechanical technology, adding a

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three-way valve and an additional hose to the Eriksen device would not require extraordinary

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inferences or large creative steps from a person of ordinary skill.51 Even if tire-repairing devices

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were not considered simple technologies, the aforementioned discussion in Bridgestone on

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separating flow paths for air and sealing liquid already provide more than enough of a suggestion

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to combine Eriksen and Bridgestone.

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47

Tokai Corp. v. Easton Enterprises, Inc., 632 F.3d 1358, 1371 (Fed. Cir. 2011) (citing Ruiz v.
A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004)).
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See Docket No. 101-5 at 1 and Docket No. 101-3 at col. 2, ll. 17-22.

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Docket No. 101-5 at 4-5 ¶¶ 12-14.

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Id. at ¶¶ 0015; See also Docket No. 101-23 at ¶ 9.

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See KSR, 550 U.S. at 418.

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Case No.: C 11-774 PSG
ORDER

The only evidence TEK presents to counter this assertion is that one of ordinary skill would

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not combine Bridgestone and Eriksen because the ‘581 patent teaches away from combining a

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sealant container with two separate openings in Bridgestone with a disposable ready-made

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container with one opening as in Eriksen:52

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In every case known to the inventors, conventional non-pressurized containers of
this type are pumped with air at one end of the container, and the tire sealant is
forced out of the container at the opposite end of the container. Such design requires
at least two seals and a custom-made container. By contrast, the instant invention’s
bottle has only one opening and requires only one seal.53

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But TEK provides no explanation on how the ‘581 patent excerpt quoted above teaches away from

United States District Court
For the Northern District of California

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such combination. Even if the jury interpreted the excerpt in the manner most favorable to TEK,

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this language suggests only that the ‘581 patent invention differed from other designs known to the

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inventor by having a container with one opening, rather than two. Yet this distinction was not

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made in either Bridgestone or Eriksen, nor was it made in the context of using a three-way valve or
additional hose. To the contrary, Bridgestone discloses the use of a three-way valve and additional

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hose as an improvement to a conventional tire repair kit, which has both air intake and exhaust
openings at one end of the container.54
d.

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“Graham set forth a broad inquiry and invited courts, where appropriate, to look at any

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Objective Indicia of Nonobviousness

secondary considerations that would prove instructive.”55 “Such secondary considerations as
commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought to be patented.”56

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52

Docket No. 109 at 10.

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53

Docket No. 101-22 at 5:57-64.

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54

See Docket No. 101-5 at Fig. 3; Docket No. 101-3 at Fig. 1.

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55

KSR, 550 U.S. at 415.

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56

Id. at 406.
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Case No.: C 11-774 PSG
ORDER

As a secondary consideration of non-obviousness, TEK argues that the additional hose

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resolves the long-felt but unsolved need of avoiding sealant clogging in the only hose in a tire-

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repairing device. But the ‘110 patent itself nowhere mentions this purported benefit of having an

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additional hose.57 Instead, the applicant described the need satisfied as providing a single casing

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that can combine the compressor unit and the sealing liquid container.58 Additionally, TEK offers

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no evidence outside the patent even hinting that sealant clogging of the hose was somehow long

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vexing the field.
TEK also points to indicia of commercial success, but TEK’s offering of evidence is

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United States District Court
For the Northern District of California

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inadequate. TEK relies only on its expert’s conclusory allegation rather than on any objective sales

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data.59 Even if a reasonable jury could accept this unsupported assertion, TEK fails to eliminate

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other possibilities, such as pricing or advertising, that might have contributed to the commercial

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success of device.60 No reasonable jury could find this analysis persuasive as a secondary

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consideration to rebut invalidity.
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e. The Ultimate Conclusion of Obviousness

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Having resolved whether there are no triable issues on the underlying factual findings set

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forth in Graham, the court must examine the ultimate legal question of obviousness as a matter of

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law. Here, there is no genuine dispute that Bridgestone and Eriksen together disclose all of the

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limitations at issue, and both Bridgestone and Eriksen were directed at solving the same problem –

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providing a portable tire repair device with a self-contained compressor and sealant container to

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57

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58

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See Docket No. 101-2 at col. 1-2.

See id. at col. 1, ll. 36-40 (“Considerable advantage is to be gain, there, . . . with a repair and
inflation kit comprising a small compressor and a container of sealing liquid”).
59

Docket No. 109 at 16.

60

Docket No. 116 at 14.

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28

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Case No.: C 11-774 PSG
ORDER

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allow the user to either repair or inflate the tire.61 Because both Bridgestone and Eriksen occupy

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the same narrow field, no reasonable jury could conclude that a person of ordinary skill in the art

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would not have combined them to practice the claimed invention. Under such circumstances,

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claims 1, 26, and 27 are obvious.

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ii.

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7
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Claims 2-5, 12-15, and 29-30

As discussed above, the claims dependent on claims 1 and 26 all contain the elements of “a
three-way valve” and “an additional hose.” The patent examiner rejected the dependent claims 2-5,
12-15, and 29-30 as anticipated by Eriksen along with other prior arts under 35 U.S.C. § 102.62 If

United States District Court
For the Northern District of California

10

the additional limitations recited in aforementioned claims are properly identified in Eriksen, or

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elsewhere in the prior art, the dependent claims are thus rendered obvious in light of Bridgestone.

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The point of contention regarding these dependent claims focuses on whether Eriksen disclosed the

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limitation “a valve device” so as to render claims 2 and 12 obvious, the limitation “control

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member” to as to render claims 3, 13 and 29 obvious, and the limitation “inlet” and “outlet fitting”

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so as to render claims 5 and 15 obvious.63
SSI, along with the patent examiner, identifies the combination of “seal 38, piece 45, and

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plunger 46” as “a valve device” disclosed by Eriksen.64 Furthermore, SSI identifies that in Eriksen

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“an inlet connectable to said compressed-air feed line, and an output for the sealing liquid” would be

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61

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See Docket No. 101-23 at ¶ 9.

62

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See Docket No. 101-9 at 5 ¶ 10; Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282
(Fed. Cir. 2000) (holding that to demonstrate anticipation, the proponent must show “that the four
corners of a single, prior art document describe every element of the claimed invention.”).
63

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26
27

The court previously discussed the Graham factors of obviousness to an ordinary person skilled
in the art and any secondary considerations to rebut claims of obviousness in reference to the
independent claims. As the court finds the reasoning applicable to the discussion of obviousness of
the dependent claims, as well, the court will incorporate said reasoning and discuss only the
differences between the prior art and the claims at issue.
64

28

See Docket No. 101 at 20.
13

Case No.: C 11-774 PSG
ORDER

1
2

fourth channel 29 and fifth channel 30 in the Eriksen device.65 Moreover, SSI reiterates the patent
examiner’s characterization of plunger 46 as a control member.66 Lastly, SSI cites the patent

3

examiner’s classification of lower chamber 44 and upper chamber 43 from Eriksen to be the “inlet” and

4

“outlet” element in the ‘110 patent claims.

5

TEK, on the other hand, contends against SSI’s characterization that the combination of “seal

6

38, piece 45, and plunger 46” qualifies as “a valve device.”67 TEK argues that “the air flow path

7
8

from the compressor and the air flow path to the tire are not opened or closed by the plunger.
Rather, the plunger’s function is limited to piercing the seal of the sealant container.”68 In addition,

9

United States District Court
For the Northern District of California

10

the plunger of Eriksen provides no inlet or outlet that be connected in a fluid-tight manner to a hose

11

to prevent leak outside of the container.69 TEK offers no evidence other than its own expert

12

declaration to counter SSI’s interpretation of Eriksen’s disclosure of “control member,” “inlet,” and

13

“outlet fitting.” For example, after asserting that “[c]laim 3 requires the valve device to isolate the

14

inlet and outlet from the outside of a container,” TEK concludes, with only citation to its expert

15
16
17

and without any analysis, that “as one skilled in the art would appreciate, Eriksen’s device fails to
isolate the outlet from inside of the container.”70 But “[b]road conclusory statements offered by

18
19
20
21
65

22

See Docket No. 116 at 9 (citing Docket No. 101, Ex. 2 at col. 7, ll. 1-3).

66

23
24

See Docket No. 101 at 21 (citing Docket No. 101, Ex. 9 at 5 ¶ 10 (“Eriksen discloses said valve
device comprises at least one control member (46) movable, in response to pressurization of said
inlet and said outlet”)).
67

See Docket No. 109 at 13.

68

See id.

69

See id.

70

Id. at 14.

25
26
27
28

14
Case No.: C 11-774 PSG
ORDER

1
2

[one party’s] experts are not evidence and are not sufficient to establish a genuine issue of material
fact.”71
The court agrees with SSI and the patent examiner. The “seal 38, piece 45, and plunger 46”

3
4

together embody “a valve device” in light of court’s claim construction.72 The schematic of the

5

Eriksen device shows that seal 38 can stop the flow of the liquid and thereby allow plunger 46 to

6
7
8
9

push through the bottle seal in a fluid-tight manner, because seal 38 will prevent the sealing liquid
from leaking out of the punctured hole.73 Then, contrary to TEK’s assertion, plunger 46 functions
other than piercing the seal of the container, because air can be sent via fourth channel 29 and then

United States District Court
For the Northern District of California

10

plunger 46 into the sealant bottle.74 The portion of the Eriksen specification that describes fifth

11

chamber 30 as flow path for sealing liquid and channel 29 as flow path for pressurized air also

12

supports SSI’s characterization that these channels are “inlet connectable to said compressed-air feed

13

line, and an output for the sealing liquid.”75 The disclosure of “a valve device” in Eriksen, thus, renders

14

claims 2 and 12 obvious in light of Bridgestone.

15

Further, the court finds that the characterization of plunger 46 to be “control member” and

16
17
18

lower chamber 44 and upper chamber 43 to be “inlet” and “outlet fitting” to be well-supported.
Plunger 46 acts as a control member because it moves “in response to pressurization of said

19
71

20
21
22
23
24
25

Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001) (citing
Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046 (Fed. Cir. 2000) (“In response, [the
litigant] was required to designate specific facts showing that there was a genuine issue for trial.”)).
72

See Docket No. 101-9 at 9 ¶ 10 (“[A] valve device (seal 38, piece 45 and plunger 46 defines the
valve device) fitted in fluid tight manner to the opening”).
The court construed “a valve device” as “[o]ne or more valves fitted in a fluid-tight manner to the
opening and having an inlet connectable to said compressed-air feed line, and an output for the
sealing liquid.” Docket No. 88 at 23.
73

See Docket No. 101-3 at Figure 11.

74

See id. at col. 8, ll. 50-59.

75

See id. at ll. 54-63.

26
27
28

15
Case No.: C 11-774 PSG
ORDER

1

compressed-air feed line."76 According to the Eriksen figure cited above, lower chamber 44 is

2

connected to channel 29, an inlet for pressurized air, and upper chamber 43 is connected to channel

3

30, an outlet for sealing liquid.77 In reference to patent examiner’s determination, SSI maps out

4

clearly how the specifications on the Eriksen device disclosed elements within the claims of ‘110

5

patent. This renders claims 3, 5, 13, 15, and 29 obvious in light of the Eriksen-Bridgestone

6

combination.

7
iii.

8

Claims 4, 14 and 30

The point of contention regarding these dependent claims focuses on whether any prior art

9

United States District Court
For the Northern District of California

10

has disclosed the element of “elastic means” so as to render claims 4, 14 and 30 obvious. The

11

court construed the function of “elastic means” as “to keep a control member stably in a closed

12

position in the absence of air pressure and open in response to air pressure.”78 Additionally, “the

13

corresponding structure for the elastic means is a spring and equivalents thereof.”79

14

SSI relies on the examiner’s comment in the prosecution history and U.S. Patent No.

15
16

4,765,367 to Scott (“Scott”) to show that elastic means are known in the prior arts.80 The examiner

17

took official notice that elastic means are well known in the art for biasing a valve to a closed

18

position.81 Therefore, it would have been obvious to one of ordinary skill at the time of invention

19

to include elastic means in the valve device of Eriksen to bias the plunger to a closed position.82

20

SSI also cites Scott as an example of using spring 44, as shown in the figure, to keep a valve

21
22

76

Docket No 101-9 at ¶ 10; See Docket No. 101, Ex. 2, col. 8, ll. 49-53.

23

77

See Docket No. 101-2 at Figure 13-14.

24

78

Docket No. 88 at 25.

25

79

Id.

26

80

See Docket No. 116 at 11-13.

27

81

See id.

28

82

See Docket No. 101-9 at ¶ 14.
16

Case No.: C 11-774 PSG
ORDER

1
2

“stably in said closed position in the absence of [air] pressure from said inlet.”83 This is clear and
convincing evidence that the use of “elastic means,” such as a spring, was known in the art.
To refute SSI’s argument, TEK, again, quotes the ‘110 patent language and only offers its

3
4

expert’s conclusory opinion that Eriksen’s plunger does not keep a control member stably in a

5

closed position.84 This is insufficient to effectively rebut SSI’s showing that the “elastic means”

6

limitation was known in the art. Claims 4, 14, and 30 therefore are invalid as obvious in light of

7
8

the Eriksen-Bridgestone combination.
iv.

9

Claims 11, 21-25, 28, and 31

United States District Court
For the Northern District of California

10

The validity of claims 11, 21-25, 28 and 31 depends on whether any prior art disclosed the

11

element of “a selector” so as to render claims 11 and 28 obvious, the element of “a relief valve” so

12

as to render claim 21 and 23 obvious, the element of “a non-return valve” so as to render claim 22

13

and 24 obvious, and the element of “periphery groove in the outer casing” so as to render claim 22

14
and 24 obvious.
15
Regarding the use of “a selector,” there is no genuine dispute that the element was disclosed

16
17

in Bridgestone, which, as discussed above, also discloses “a three-way valve.”85 The inclusion of a

18

three-way valve in a device necessitates the use of a selector to allow the user to choose between

19

openings of different flow paths.86 As such, Bridgestone discloses in the specification that an air

20

directional valve 48 can be controlled by operational panel 78 as shown in the figure.87

21
22
83

23
24

Docket No. 101-20 at col. 2, ll. 27-33 (“[I]n the first valve position, the second input 18 is closed
with respect to outlet passageway 24 and outlet 26.”); Id. col. 2, l. 69-col. 3 l. 2 (“The valve 28 will
return to the first or normal condition . . . by means of spring 44 under cap 30.”).
84

See Docket No. 109 at 15, ll. 5-14.

85

Docket No. 101-5 at Figure 1.

86

See Docket No. 101-23 ¶ 16.

87

See Docket No. 101-5 at ¶¶ 0028, 0041, 0045.

25
26
27
28

17
Case No.: C 11-774 PSG
ORDER

TEK offers little in response other than that SSI fails to analyze the complex valve system

1
2

in Bridgestone and provide motivation for one of ordinary skill in the art to modify it.88 These

3

arguments lack merit as SSI did offer Bridgestone as a prior art that disclosed the use of a selector

4

in conjunction with a three-way valve.89 As TEK does nothing to rebut SSI’s contentions, the court

5

finds 11 and 28 to be obvious.

6

With regard to the disclosure of a relief valve, a non-return valve, and a periphery, experts

7
8
9

from both sides agree that all these features were well-known to person of ordinary skill in the
art.90 Even if there were any genuine dispute on the issue, WIPO Publication WO 03/004328 to

United States District Court
For the Northern District of California

10

Laetgaard and U.S. Patent No. 6,789, 581 to Interdynamics plainly disclose the use of a relief valve

11

and a non-return valve.91 This renders claims 11, 21-25, 28, and 31 invalid as obvious.

12
13

In sum, SSI has presented clear and convincing evidence to demonstrate the asserted claims
of the ‘110 patent are obvious in light of Eriksen, Bridgestone, and other prior art references.

14
15

The Parties’ Cross Motions for Summary Judgment of Infringement of the ‘110
Patent

16

In light of the court’s invalidity determination regarding the asserted claims of the ‘110

B.

17
18

patent, the court must deny the parties’ cross-motions on the issue of infringement of the ‘110
patent as moot.92

19
20
21
88

See id.

89

See id.

22
23
90

24

See Docket No. 116 at 14 (citing Docket No. 101-17 at ¶ 215; Docket No. 101-16 at 234:11-22,
235:4-11).

25

91

26

92

27
28

See Docket No. 101 at 24; Docket No. 101-21; Docket No. 101-22.

See Typeright Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004) (“a
judgment of invalidity necessarily moots the issue of infringement”). See also Sandt Technology,
Ltd. v. Resco Metal and Plastics Corp., 264 F.3d 1344, 1356 (Fed. Cir. 2001); Avago Technologies
General IP PTE Ltd. v. Elan Microelectronics Corp., Case No. 04-05385 JW, 2008 WL 3842924,
at *12 (N.D. Cal. Aug 14, 2008).
18
Case No.: C 11-774 PSG
ORDER

1

C.

TEK’s Motion for Summary Judgment of Invalidity of the ‘581 Patent
A patent is anticipated if it was disclosed in a patent application or published patent.93 To

2
3

show anticipation, the moving party must “identify each claim element, state the witnesses’

4

interpretation of the claim element, and explain in detail how each claim element is disclosed in the

5

prior art reference.”94 As noted above, a patent is obvious if “the differences between the subject

6

matter sought to be patented and the prior art are such that the subject matter as a whole would

7
8
9

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.”95 Also as noted above, the obviousness inquiry is one of law

United States District Court
For the Northern District of California

10

with underlying factual questions, the latter of which are analyzed under the factors presented in

11

Graham.96

12
13
14

TEK asserts the ‘581 is anticipated and/or obvious in light of U.S. Patent Publ. No. U.S.
2004/0173282 (“US ‘282”). US ‘282 was filed as a patent application on June 28, 2002, disclosing
a “compact combination apparatus for inflating and mending a car tyre.”97 The objective of the

15
16
17

device was “to provide an inflating unit, where it is not necessary to carry the container with the
sealing material all the time.”98 It was originally rejected as anticipated by PCT Patent Application

18
19
20
21
22
93

See 35 U.S.C. § 102(a).

94

See Schumer v. Lab Computer Systems, Inc., 308 F.3d 1304, 1315-16 (Fed. Cir. 2002).

95

35 U.S.C. § 103(a).

96

See Graham, 383 U.S. at 17-18.

97

See Docket No. 111- 3.

98

See id.

23
24
25
26
27
28

19
Case No.: C 11-774 PSG
ORDER

1
2

No. W02/066236 (“Eriksen”).99 On September 9, 2004, the application was published.100 On
March 11, 2005, the application was abandoned.101
As a preliminary matter, the court notes that TEK has done little to show anticipation or

3
4

obviousness other than to remark on the similarities between the ‘581 patent and US ‘282. Beyond

5

arguing that the disclosed devices in each are similar, TEK does little more than assert that the ‘581

6

patent was anticipated and/or obvious. By offering little other analysis, TEK struggles to meet its

7
8
9

burden of proving invalidity by clear and convincing evidence. On that basis alone, the court could
deny TEK’s motion. Nevertheless, the court will consider the merits of TEK’s arguments.
i.

United States District Court
For the Northern District of California

10

A Genuine Dispute Exists Whether US ‘282 Discloses “A Receptacle Formed in
the Housing”

11
Claims 1-3, 8, 10, 11, 13, 15, 17, 21-24, 27-31, 34, 36, 40, and 43 require the device contain

12
13

“a receptacle formed in said housing.”102 The court construed this term according to its plain and

14

ordinary meaning.103 The court further noted that word “receptacle” connotes depth such that the

15

device can receive a tire sealant container and provide for sealant to leave the container and enter

16

the air flow path.104 Additionally, the court stated the receptacle’s function was “to connect to the

17

flow of compressed air and to sealingly receive a container of sealant.”105

18
19
20
21
99

22

See Docket No. 111-11.

100

See id.

101

See Docket No. 111-12.

102

See Docket No. 111-2.

103

See Docket No. 88 at 6.

104

See id. at 7.

105

Id.

23
24
25
26
27
28

20
Case No.: C 11-774 PSG
ORDER

TEK states that the “cylindrical hole” in the housing of the ‘581 patent, identified by

1
2

number 14 in Figure 1, is the “receptacle formed in said housing.”106 TEK argues that this

3

receptacle is also present in US ‘282, which also contains a cylindrical hole.107 TEK’s expert filed

4

a declaration stating the receptacle disclosed in US ‘282 is also in communication with the air flow

5

path such that the air from the compressor enters the container placed in the receptacle, and the

6

container is sealed in the receptacle so that air does not escape.108 Accordingly, TEK argues that

7
8
9

United States District Court
For the Northern District of California

10

US ‘282 discloses this claim term. In the alternative, TEK states conclusorily that this element is
obvious because both devices, in the ‘581 patent and US ‘282, perform in the same way so a person
of ordinary skill in the art would find the receptacle to be obvious.
SSI counters that TEK’s analysis is flawed for several reasons. First, in US ‘282 the hole in

11
12
13
14

the housing does not perform the function of sealingly receiving the container of sealant. SSI
presents evidence showing the hole identified as the supposed receptacle does not receive the
container of tire sealant, but only the screw socket identified as 18 does.109 SSI’s expert, Dr. King,

15
16

reasons that because there is no intake or exhaust for either sealant or air identified in the hole in

17

US ‘282, the hole cannot sealingly receive a container of sealant.110 No structure exists in the hole

18

that would receive tire sealant at all.111
The reasoning of SSI’s expert counters TEK’s expert’s assertion that the receptacle in US

19
20
21

‘282 discloses the same receptacle required by the ‘581 patent. A jury might properly conclude
that due to the differences between the receptacles in the two inventions, a person skilled in the art

22
106

See Docket No. 100 at 9; Docket No. 111-2 at 3.

107

See Docket No. 100-1 at ¶¶ 29-30.

108

See id. at ¶ 17.

109

See Docket No. 111-15 at ¶ 5.

110

See id.

111

See id.

23
24
25
26
27
28

21
Case No.: C 11-774 PSG
ORDER

1

would not have found the receptacle in ‘581 which sealingly receives the container of sealant to be

2

anticipated by US ‘282. TEK’s assertions of anticipation on the claims containing “a receptacle

3

formed in the housing” therefore cannot succeed. For the same reasons, TEK’s conclusory

4

allegations of obviousness must also fail.112

5

ii.

6
7
8
9

United States District Court
For the Northern District of California

10

A Genuine Dispute Exists Whether US ‘282 Discloses the Claimed Port

Claims 27-28, 30-31, 37-41, and 45-47 are substantially similar to those referenced above,
except that they recite a port in place of a receptacle.113 The court construed “port” to mean “an
enclosure that may be formed within and as an integral part of the housing or a separate structure
that sealingly receives air and/or tire sealant.”114
TEK argues that these claims are anticipated because US ‘282 also teaches a port. TEK

11
12

cites to Dr. Kazerooni’s testimony, which claims the port is disclosed as Structure 18 in US ‘282

13

Figure 4, which he alleges is the part seated within the receptacle.115 Additionally, TEK contends

14

these claims are obvious because the device in US ‘282 and in the ‘581 patent work in the same

15
16

manner, with air from a compressor moving in an air flow path to a bottle with sealant to push the

17

sealant to the tire. TEK’s expert testifies that use of the port changes only how the bottle fits into

18

the receptacle, but not how the device actually works.116
SSI raises a triable issue of fact by offering evidence that the identified structure in US ‘282

19
20

is not a port as defined in the ‘581 patent. In the same way that SSI has presented evidence

21
112

22
23
24

TEK’s obviousness claims also fail because TEK offers no supporting evidence or analysis
under the Graham factors. What little evidence offered consists of boilerplate language in Dr.
Kazerooni’s expert declaration. See, e.g., Docket No. 100- 1 at ¶ 30. As previously noted, the
court is not required to accept an expert’s conclusory allegations. See Telemac Cellular Corp., 247
F.3d at 1329.
113

See Docket No. 100 at 45-46.

114

Docket No. 88 at 12.

115

See Docket No. 100-1 at ¶ 88.

116

See id. at ¶ 91.

25
26
27
28

22
Case No.: C 11-774 PSG
ORDER

1

countering TEK’s allegation that US ‘282 discloses a receptacle that sealingly receives a bottle of

2

tire sealant, SSI’s evidence also counters the allegation the US ‘282 discloses a port with the same

3

function.117 Further, SSI also presents significant evidence contesting whether US ‘282 discloses a

4

port with an intake and exhaust, as required by the ‘581 patent.118

5

iii.

6
7
8
9

United States District Court
For the Northern District of California

10

A Genuine Dispute Exists Whether US ‘282 Discloses a Reservoir

Claim 42 requires a “reservoir formed in said housing in communication with said air flow
path adapted to receive tire sealant.”119 The claim also states that “when said air compressor is
activated and tire sealant is received in said reservoir, air from said air compressor is forced into
said reservoir and pushes tire sealant out of said reservoir, into said air path, and into the tire.”120

11

Here, TEK does not argue anticipation, but rather that the reservoir would be obvious. As

12

support for this argument, however, TEK merely argues the difference is insubstantial and it is

13

“obvious” to one skilled in the art to pour sealant into a cavity instead of keeping sealant in a

14
bottle. Aside from the fact that this conclusory allegation does not demonstrate clear and
15
16
17

convincing evidence, SSI has presented expert evidence to counter this assertion. Dr. King states
the hole in US ‘282 is not configured to receive sealant without leaking the sealant.121
In sum, TEK has not proven by clear and convincing evidence that US ‘282 either

18
19

anticipates or renders obvious the asserted claims of the ‘581 patent.

20

D.

TEK’s Motion for Partial Summary Judgment on Damages

21

The court finally turns to the TEK’s motion for summary judgment on damages in the

22
original claim. As TEK correctly notes, the Federal Circuit has held that a party has standing to
23
117

24

See Docket No. 11-15 at ¶¶ 5, 16.

118

25

See id. at ¶ 17. For example, it appears that US ‘282 does not use intake or exhaust, but rather
pipe connectors, to perform these functions instead of in structure 18.

26

119

Docket No. 100 at 46.

27

120

Id.

28

121

See Docket No. 111-15 at ¶ 23.
23

Case No.: C 11-774 PSG
ORDER

1

receive damages only if it shows it has legal title to the patent – either by way of title to the entire

2

patent, an undivided share of the entire patent, or exclusive rights to the patent in a specific

3

geographical region of the United States.122 TEK recognizes that although “AMI owns the ‘581

4

patent and thus may be able to recoup a reasonable royalty damages award,”123 SSI is not entitled

5

to monetary damages because it is not an owner or assignee of the ‘581 patent. Plaintiffs counter

6

that TEK’s argument is inapposite because only AMI, not SSI, is seeking damages in the ‘581

7
8

patent infringement claim.
The parties appear to agree that AMI, as the ‘581 patent owner, has standing to pursue

9

United States District Court
For the Northern District of California

10

damages, and SSI does not. They disagree over whether SSI is actually seeking damages. TEK

11

argues that Plaintiffs’ damages expert, Mr. John L. Hansen (“Hansen”), referred in his damages

12

report to “total royalties... due to SSI.”124 Plaintiffs argue this was a typographical error that did

13

not affect Hansen’s damages calculation. The court need not decide at this time whether Hansen

14

did or did not consider SSI’s standing to pursue damages from TEK in calculating potential

15
16
17

reasonable royalty awards. Instead it is sufficient to conclude that, as agreed upon by the parties,
only AMI has standing to seek damages from TEK on the ‘581 patent.
TEK also argues that AMI may not recover damages for the time period prior to filing of

18
19

the present lawsuit because AMI never provided notice to TEK. If the patentee does not “mark” its

20

products, “no damages shall be recovered by the patentee in any action for infringement, except on

21

proof that the infringer was notified of the infringement and continued to infringe thereafter.”125

22
23
24
122

See Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1551 (Fed. Cir. 1995).

123

Docket No. 99 at 3.

124

Docket No. 99-1, Ex. 1 at ¶ 60.

125

35 U.S.C. § 287(a).

25
26
27
28

24
Case No.: C 11-774 PSG
ORDER

1
2

Damages may then only be collected from the point of such notice, which includes filing an action
for patent infringement.126

3

What TEK fails to recognize is that the record is undisputed that Plaintiffs’ products do not

4

practice the ‘581 patent, so they are not required to comply with 35 U.S.C. § 287(a).127 Both AMI

5

and SSI stated in their interrogatory responses that their products do not practice the ‘581 patent.128

6

Accordingly, the marking rule does not limit AMI’s claim for damages.129

7
IV.

8

CONCLUSION

SSI’s motion for summary judgment of invalidity of the ‘110 patent is GRANTED. The

9

United States District Court
For the Northern District of California

10

court DENIES AS MOOT both TEK’s motion for summary judgment of infringement and SSI’s

11

motion for summary judgment of non-infringement.

12
13
14

TEK’s motion for summary judgment of invalidity of the ‘581 patent is DENIED. TEK’s
motion for partial summary judgment on damages is GRANTED-IN-PART such that only AMI,
and not SSI, is entitled to pursue damages.

15
16

IT IS SO ORDERED.

17

Dated: March 7, 2013
_________________________________
PAUL S. GREWAL
United States Magistrate Judge

18
19
20
21
22
23
24

126

25

127

Id.

26

See Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1219 (Fed. Cir. 2002)
(marking requirement inapplicable "where there are no products to mark"); See also Oracle Am.,
Inc. v. Google Inc., Case No. 10-03561 WHA, 2011 WL 5576228, at *2 (N.D. Cal. Nov. 15, 2011).

27

128

28

129

See Docket No. 105-3 at 4-5. See also Docket No. 105-6 at 47:14-15, 114:16-20.

See Texas Digital Sys., Inc., 308 F.3d at 1219.
25
Case No.: C 11-774 PSG
ORDER