Friday, March 29, 2019

ND Cal acted improperly in Global Tek case in restricting evidence

The outcome was vacating/reversal of ND Cal:

Following a jury trial finding Sealant Systems International
and ITW Global Tire Repair (collectively, “SSI”)
liable to TEK Corporation and TEK Global, S.R.L. (collectively,
“TEK”) for infringement of U.S. Patent No.
7,789,110 (“the ’110 patent”), SSI appeals several pre- and
post-judgment orders from the United States District
Court for the Northern District of California. Specifically,
SSI appeals the district court’s claim construction order
and its orders denying SSI’s motions for a new trial and
judgment as a matter of law (“JMOL”) on invalidity, noninfringement,
and damages. SSI also challenges the district
court’s permanent injunction.

Because the district court improperly restricted SSI’s
efforts to present the jury with relevant evidence of invalidity,
we vacate the court’s final judgment as to validity
and reverse its denial of SSI’s motion for partial new trial
on validity. In the interest of judicial economy, we also
reach the remaining issues on appeal. We affirm on those
issues in the event the ’110 patent is found not invalid following
the new trial.

On obviousness

The district court apparently interpreted SSI II to foreclose
all obviousness theories based on Eriksen in view of
Bridgestone. But taken in context, SSI II does not go so
far. In SSI II, SSI raised only one obviousness theory.
That theory was based on the contention that the air tube
54 in the Bridgestone reference met the “additional hose”
limitation in claim 26 of the ’110 patent. SSI II, 616
F. App’x at 995. It was the only obviousness theory that
SSI II foreclosed, and the district court should not have
barred SSI from presenting to the jury other preserved obviousness
theories based on the combination of Eriksen
and Bridgestone that were not before this court in SSI II.
To that end, we agree with SSI that a partial new trial on
validity is appropriate here.
While we decline to reverse the district court’s denial
of JMOL of invalidity, we reverse the district court’s denial
of SSI’s motion for a partial new trial on validity. The district
court is therefore directed to grant SSI a new trial limited
to determining the issue of validity on an appropriate
evidentiary record. In view of this decision, we do not reach
SSI’s remaining arguments related to invalidity.1

Of 112 P6:

Paragraph 6 does not apply when “the words of the
claim are understood by persons of ordinary skill in the art
to have a sufficiently definite meaning as the name for
structure.” See Diebold Nixdorf, Inc. v. ITC, 899 F.3d 1291,
1297 (Fed. Cir. 2018). As a procedural matter, to determine
whether § 112, ¶ 6 applies to a claim limitation, we
first look to whether the limitation uses the word “means.”
Id. at 1297–98. If not, which is the case here, “there is a
rebuttable presumption that [§ 112, ¶ 6] does not apply.”
Id. at 1298. The presumption, however, can be overcome
“if the challenger demonstrates that the claim term fails to
‘recite sufficiently definite structure.’” Id. (quoting Williamson,
792 F.3d at 1349). For example, in Williamson,
we said that “[g]eneric terms such as ‘mechanism,’ ‘element,’
‘device,’ and other nonce words that reflect nothing
more than verbal constructs may be used in a claim in a
manner that is tantamount to using the word ‘means’ because
they ‘typically do not connote sufficiently definite
structure’ and therefore may invoke § 112, para. 6.” 792
F.3d at 1350 (quoting Mass. Inst. of Tech. v. Abacus Software,
462 F.3d 1344, 1354 (Fed. Cir. 2006)).
To determine whether the claim limitation at issue
connotes sufficiently definite structure to a person of ordinary
skill in the art, we look first to intrinsic evidence, and
then, if necessary, to the extrinsic evidence. See Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).


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