Docket No. 2013-1437
April 9, 2014
Brief Summary: Decision denying preliminary injunction related to sod harverster patent vacated because DC abused its discretion. The opinion also explained “the fact that Trebro does not presently practice the patent does not detract from its likely irreparable harm” because “it sells a competing product” (citing Presidio Components, FC 2012 and others).
Summary: Trebro appealed denial of its motion for a preliminary injunction against Firefly for infringement of its US 8,336,638 relating to sod harvesters. The FC found the DC abused its discretion and reversed the decision. The opinion explains that “a plaintiff must prove each element of the preliminary injunction test to prevail at the district court” (likely to succeed on the merits (“more likely than not”), likely to suffer irreparable harm without preliminary injunction, balance of equities tips in his favor and injunction is in the public interest (Winter, US 2009; Aria Diagnostics, FC 2013 (accused infringer can defeat a showing of likelihood of success on the merits by demonstrating a substantial question of validity or infringement)). The dispute turned on the claim limitation “horizontal conveyor is moveable in a vertical direction toward said sod carrier.” The DC found that a “bed frame” was required (and not used in Firefly’s product) but the FC disagreed because “nothing in the language of claim 1 mentions or implies that a ‘bed frame’ must be” present and requiring one would “improperly import a limitation into the claim from a preferred embodiment” (citing Phillips, FC 2005) (“Finally, and convincingly, claim 10 (which depends from claims 1 and 9) is explicitly limited to the ‘bed frame’ embodiment….”) Accordingly, the FC found Trebro had established it would “more likely than not” succeed on infringement. The FC also concluded the DC “clearly erred in finding a substantial question as to the ‘638 patent’s validity” because it “considered only one feature of the patent”, based one conclusion “solely on…testimony about other sod harvesters that had been on the market” only as of 2006 (not relevant as ‘638 patent has 2005 priority date), and prior art having the same inventive entity and being available less than a year from ‘638 priority date was not prior art “under the version of § 102(b) in effect for this case”. It also found the DC abused its discretion in determining Trebro did not show a likelihood of irreparable harm because “[t]he sod harvester market…is a tiny market with only three players”, “Trebro sells only roughly eight sod harvesters per year”, and “every sale to FireFly is essentially a lost salt to Trebro” (which “translates into a lost customer”). The opinion also explained “the fact that Trebro does not presently practice the patent does not detract from its likely irreparable harm” because “it sells a competing product” (citing Presidio Components, FC 2012; Broadcom, FC 2008; High Tech Med. Instrumentation, FC 1995). Finally, “[r]ather than deciding” the final two elements (balanace of equities and public interest), the FC vacated and remanded the order but did provide some guidance (Firefly is the only non-licensed competitor and “this patent will have significantly less value if Trebro cannot use it to exclude an infringing product from the marker (balancing of equities) and an injunction would not harm the public).