SAN FRANCISCO — The jury in a U.S. federal court has awarded an Italian tire repair kit manufacturer $2.8 million in a patent infringement case that has taken more than six years to wind its way through the court system.
At issue is U.S. Patent No. 7,789,110, TEK Global S.r.l.'s patent for an automated onboard tire repair kit that uses a compressor to fill the tire.
TEK goes to market under the "Fix&Go" brand.
According to court documents, TEK developed the kit in 2005 and had sold it successfully to Ford Motor Co., Fiat Chrysler Automobiles and General Motors Co. by 2006.
The company received a European patent in 2009 and the U.S. patent in September 2010.
Attorneys for TEK wrote Grover Beach, Calif.-based Sealant Systems International Inc. (SSI) in November 2009, saying SSI's tire repair and inflation kit might infringe on TEK's then-pending patent.
SSI is owned by Accessories Marketing Holding Corp., which itself is owned by Illinois Tool Works, the court documents show.
SSI makes and markets Slime and Fix-A-Flat tire repair sealant products and tire repair kits.
When SSI did not respond after one year to TEK's letter, TEK filed a lawsuit against SSI in New York federal district court in November 2010.
SSI countersued in San Francisco federal district court in February 2011 and succeeded in getting the entire case transferred to San Francisco.
In 2012, a judge declared TEK's patent invalid, and the next year a jury awarded SSI $1 million and placed an injunction against TEK from distributing its kit in the U.S.
Pesaro, Italy-based TEK Global appealed to the U.S. Federal Appeals Court for the Federal Circuit, which stayed the injunction against TEK and declared its patent valid. The case was remanded to the federal court, in this case the U.S. District Court, California Northern District.
The jury verdict TEK received March 17 in San Francisco was only $100,000 short of the amount it requested.
"TEK is gratified to finally have received justice after many years," said Ashok Ramani, a partner in the San Francisco law firm of Keker Van Nest & Peters L.L.P., which represented TEK.
"TEK feels vindicated that a jury found SSI unjustly infringed on TEK's patent without permission."
SSI's attorneys could not be reached for comment.