District Court Read Mandate Too Broadly and Improperly Limited Validity Challenge

In Tek Global, S.R.L. v. Sealant Systems International, Inc., [2017-2507](March 29, 2019), the Federal Circuit vacated the district court’s final judgment as to validity and reversed the denial of a partial new trial on validity, finding that the district court improperly restricted SSI’s efforts to present the jury with relevant evidence of invalidity.

SSI argued that had the district court allowed it to present to the jury its obviousness theory based on Eriksen in view of Bridgestone, the jury would have found the asserted claims invalid. But the district court instructed the jury that it was not permitted to conclude that Bridgestone or Eriksen, alone or in combination with one another, discloses all the requirements of the claim at issue.

The Federal Circuit found that the district erred in interpreting its prior mandate to foreclose all obviousness theories based on Eriksen in view of Bridgestone. It was the only obviousness theory at issue in the prior appeal that was 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 the prior appeal.