Tire repair kit manufacturer wins permanent injunction against patent infringer. TEK v. SSI

An inventor acquires a patent in the United States by filing a patent application with the United States Patent and Trademark Office. The United States Patent and Trademark Office will review the patent application and if the application meets all the requirements of United States patent law the inventor will be granted a patent on the invention. A patent grants its owner the exclusive right to make, use, sell or import the invention described in the patent. If someone other than the patent owner attempts to exercise one of these exclusive rights that can be considered patent infringement. A patent owner can stop patent infringement by filing a lawsuit which requests an injunction and get monetary damages for patent infringement which has occurred.

Patent law does not exist in a vacuum. For a plaintiff in a patent infringement lawsuit to get the best results, their attorney must be familiar with several other branches of law other than patent law. An important aspect of law that an attorney in a patent infringement case should be familiar with is injunctions. An injunction is a court order requiring a person to do or cease doing a specific action. There are three types of injunctions: Temporary Restraining Orders, Preliminary Injunctions, and Permanent Injunctions. Temporary Restraining Orders and Preliminary Injunctions allow a plaintiff to stop patent infringement temporarily while the trial is being held. A Permanent Injunction can be imposed as part of a verdict if the court finds that money damages will not suffice. A Permanent Injunction will enjoin a defendant from infringing on the plaintiffs patent until the patent expires. If the defendant violates a Permanent Injunction, that can lead to additional penalties for the defendant.

To obtain a permanent injunction, a plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

A case which illustrates the proper way for a patent plaintiff to obtain a permanent injunction is TEK GLOBAL, v. SEALANT SYSTEMS INTERNATIONAL, INC., 2017-2507 (C.A.F.C. 2019). The plaintiff in this case. TEK, is a manufacturer of tire repair kits. TEK owns U.S. Patent No. 7,789,110 which is directed to using a compressor and liquid sealant to repair holes in tires. The defendant in this case SSI sells a product which also uses a liquid sealant to repair damaged tires. In November 2010, TEK sued SSI for infringing claims of the ’110 patent. A jury found that SSI infringed on TEK’s patent and the judge granted TEK a permanent injunction against SSI. The injunction permanently enjoined SSI from infringing, or inducing or contributing to, the infringement of claims of the ’110 patent, until the expiration of the patent. The injunction did not, prohibit SSI from designing around the ’110 patent.

SSI appealed several points of the courts decision, including the permanent injunction, to the Court of Appeals for the Federal Circuit. SSI argued that the district court erred in each of the four requirements for a permanent injunction. The Federal Circuit reviewed each of the factors that a plaintiff must demonstrate for a permanent injunction. The Federal Circuit found that TEK had demonstrated irreparable harm by showing that a significant reason consumers bought its device was the presence of the patented features. Because TEK had a limited product offering, not issuing a permanent injunction would negatively impact TEK’s sales and monetary damages were in adequate to compensate for that injury. The balance of hardships also favored TEK because the patented invention made up a significant portion of its sales. SSI failed to demonstrate that it was not in the public interest to issue a permanent injunction. The Federal Circuit also noted that the District Court’s permanent injunction allowed a nine month sunset of SSI’s sales infringing products and that SSI had the ability to design around the patent. Given all these factors the Federal Circuit affirmed the District Court’s permanent injunction.

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