SSI Sys. Int'l Inc. v. Tek Global S.R.L., Case Nos. 11–CV–00774 PSG, 11–CV–01649 PSG.
| Decision Date | 07 March 2013 |
| Docket Number | Case Nos. 11–CV–00774 PSG, 11–CV–01649 PSG. |
| Citation | 929 F.Supp.2d 971 |
| Parties | SSI SYSTEMS INTERNATIONAL INC., and Accessories Marketing, Inc., Plaintiffs, v. 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. |
| Court | U.S. District Court — Eastern District of California |
OPINION TEXT STARTS HERE
Stanley Martin Gibson, San Francisco, CA, Andrew Ian Shadoff, Los Angeles, CA, for Plaintiffs/Cross–Defendants.
Dariush Ghaffar Adli, Adli Law Group P.C., Rasheed Mikal McWilliams, Los Angeles, CA, for Defendants/Cross–Plaintiffs.
Gregory Stuart Cordrey, Irvine, CA, for Plaintiffs/Defendants/Cross–Plaintiffs/Cross–Defendants.
ORDER RE SSI'S MOTIONS FOR SUMMARY JUDGMENT OF INVALIDITY AND NON–INFRINGEMENT; 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 '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 patent”). SSI 1 also moves for summary judgment on non-infringement and invalidity of the ' 110 patent. On February 12, 2013, the parties appeared for hearing. Having considered the papers and arguments of counsel, the court GRANTS SSI's motion for invalidity of the ' 110 patent, DENIES AS MOOT the parties' cross-motions on infringement of the ' 110 patent, DENIES TEK's motion for invalidity of the ' 581 patent, and GRANTS–IN–PART TEK's motion for partial summary judgment on damages. The court sets forth its reasoning below.
SSI and AMI are California corporations engaged in the manufacture and sale of onboard tire repair systems.2 TEK is an Italian limited liability company involved in the same.3 On November 10, 2010, TEK initially sued SSI for infringement of the ' 110 patent in the Southern District of New York. On February 18, 2011, SSI filed suit against TEK in this district, seeking declaratory judgment of noninfringement of the ' 110 patent (“the original case”). SSI moved successfully to transfer the New York case here.4 SSI then moved to consolidate the two cases, a motion which the court granted.5 Later, SSI amended its complaint to include an affirmative patent infringement claim against TEK, asserting U.S. Patent No. 6,789,581 (“the '581 patent”)6 (“the secondary case”).7
The '110 patent discloses “a kit for inflating and repairing inflatable articles, in particular, tires.” 8 The kit includes “a compressor assembly, a container of sealing liquid and connectors for connecting the container to the compressor assembly and to an inflatable article for repair or inflation.” 9
TEK claims infringement of 1–5, 11–15, and 21–31 of the '110 patent by any SSI or A MI 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 sealant and/or sealant and air to inflate a tire with compressed air, as well as two separate hoses, one for sealant repair and an additional hose for air inflation.10 The accused products include products numbered 70006/70006s, 70011/70001 s, 70012/70012s, 70013/70013s, 70015/70015s, 70016/70016s, 70019/70019s, 70020/70020s, 70021/70021s, 70040/700400s, 70041/70041s.11
SSI claims infringement of the '581 patent, which discloses and claims a tire repairing device.12 The device operates such that when the air compressor is activated in the claimed device, air from the air compressor pushes tire sealant out of the attached container into and out of the receptacle/port, into the air flow path, and into the connected tire. 13
SSI has asserted infringement of claims 1–3, 8, 10–11, 13, 15, 17, 21–24, 27–31, 34, 36, 38–43, 45–47.14
Summary judgment is appropriate only if there is “no genuine dispute as to any material 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 summaryjudgment differs depending on whether the moving party bears the burden of persuasion at trial.17 If the moving party bears the burden of persuasion at trial, he must present “credible evidence” showing that he is entitled to a directed verdict.18 The burden of production then shifts to the nonmoving party to produce evidence raising a genuine issue of material fact.19 On the other hand, if 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 non-moving party's claim,” or by showing the non-moving party has insufficient evidence to establish an “essential element of the non-moving party's claim.” 20 If met by the moving party, the burden of production then shifts to the non-moving party, who must then provide specific facts showing a genuine issue of material fact for trial.21 In both instances, the ultimate burden of persuasion remains on the moving party.22 In reviewing the record, the court must construe the evidence and the inferences to be drawn from the underlying evidence in the light most favorable to the non-moving party.23
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 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.” 25 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.26 The party asserting invalidity bears the burden 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 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
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. 2004–338158 issued to Bridgestone Corporation (“Bridgestone”).29 Claim 1 reads as follows:
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
According to the prosecution history, the examiner rejected claims 1–3, 5–6, 9 and 13 within the original 31 110 patent application was later allowed after the applicant amended pending claim 1, the broadest claim, to incorporate the limitations “an additional hose (83) cooperating with said inflatable article; and a 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.
The parties agree that Eriksen and Bridgestone are prior art and further that Eriksen disclosed all the elements within claim 1, 26 and 27 of the '110 Patent except “a three-way valve” and “an additional hose.” 33
Where they disagree is exactly what was disclosed in Bridgestone and specifically whether Bridgestone discloses each of the missing limitations. No dispute exists regarding disclosure of the “a three-way valve” limitation in Bridgestone; even TEK's expert conceded that air directional valve 48 in Bridgestone embodies a three-way valve,34 which conforms with the court's previous construction of a three-way valve as “[a] valve with one input and two outputs.” 35
This leaves the question of whether Bridgestone discloses “an additional hose.” TEK disputes that air tube 54 in Bridgestone qualifies as “an...
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