EcoServices, LLC v. Certified Aviation Servs., LLC, 2019-1602
| Decision Date | 08 October 2020 |
| Docket Number | 2019-1602 |
| Parties | ECOSERVICES, LLC, Plaintiff-Appellee v. CERTIFIED AVIATION SERVICES, LLC, Defendant-Appellant |
| Court | U.S. Court of Appeals — Federal Circuit |
NOTE: This disposition is nonprecedential.
Appeal from the United States District Court for the Central District of California in No. 5:16-cv-01824-RSWL-SP, Senior Judge Ronald S.W. Lew.
JONATHAN WEINBERG, King & Spalding LLP, Washington, DC, argued for defendant-appellant. Also represented by STEPHEN ERIC BASKIN, DARA KURLANCHEEK, JESSE SNYDER.
WILLIAM M. JAY, Goodwin Procter LLP, Washington, DC, argued for plaintiff-appellee. Also represented by MYOMI TSE COAD, PATRICK MCCARTHY.
Before DYK, SCHALL, and O'MALLEY, Circuit Judges.
Opinion for the court filed by Circuit Judge SCHALL.
This is an appeal from a final judgment of the United States District Court for the Central District of California in a patent infringement case. EcoServices, LLC ("EcoServices") sued Certified Aviation Services, LLC ("CAS") in the district court for infringement of two patents pertaining to washing airplane engines: U.S. Patent No. 9,162,262 ("the '262 patent") and U.S. Patent No. 5,868,860 ("the '860 patent"). Following a trial, the jury returned a verdict (1) that CAS infringed claims 1, 9, and 14 of the '262 patent; (2) that claims 1, 9, and 14 of the '262 patent are not invalid; and (3) that CAS willfully infringed claims 1 and 2 of the '860 patent, which expired on May 31, 2016, before trial. The jury awarded EcoServices damages in the amount of $1,949,600. In due course, the district court denied various post-trial motions by CAS pertaining to the eligibility for patenting of the asserted claims of the '262 patent under 35 U.S.C. § 101 and pertaining to the validity and infringement of those claims. The court also denied CAS's post-trial motions arguing that claims 1 and 2 of the '860 patent, the patent's sole claims, are indefinite1 and were not infringed. Finally, the court denied CAS's challenge to the damages awarded by the jury and its challenges to the court's supplemental damages award of $175,000 and the ongoing royalty rate set by the court for the '262 patent. Following the entry of judgment, CAStimely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
For the reasons stated below, we hold that claims 1, 9, and 14 of the '262 patent are eligible for patenting, that the district court did not err in its construction of the term "information detector" appearing in those claims, and that those claims are not invalid and were infringed. We therefore affirm the judgment of infringement of claims 1, 9, and 14 of the '262 patent. For the reasons stated below, we also hold that claims 1 and 2 of the expired '860 patent are not indefinite and were infringed. We therefore affirm the judgment of infringement of the '860 patent.2 We also hold, however, that the district court abused its discretion in awarding supplemental damages and an ongoing royalty based upon a rate of $400 per infringing engine wash. Accordingly, we vacate the district court's supplemental damages award and its determination as to an ongoing royalty. The case is remanded to the district court for a redetermination of the proper supplemental damages and ongoing royalty.
After a jet engine is operated for an extended period of time, foreign particles and/or contaminants build up inside the engine. '262 patent col. 1 ll. 52-54. This results in less engine power output; to compensate, the engine has to work harder and burn more fuel, which increases its internal temperature, shortens engine life, costs more, and produces more greenhouse gases. The '262 patent and the '860 patent are directed to systems used to wash the inside of a jet engine to remove contaminants.
The '262 patent is titled "Automated Detection and Control System and Method for High Pressure Water Wash Application and Collection Applied to Aero Compressor Washing" and issued on October 20, 2015. The '262 patent describes a system for automatically controlling a washing procedure according to the requirements of the particular engine being washed. Id. at col. 5 ll. 18-22, col. 6 ll. 35-46. According to the '262 patent, it is disadvantageous for a human operator to manually set up the cleaning system and control its operation because "the human factor jeopardizes the result." Id. at col. 3 ll. 44-58. This is particularly so, the '262 patent explains, because "many engine washing operations are performed during night-time when the operators may not be fully alert." Id. at col. 3 ll. 58-60. The specification explains that "[i]t would therefore be beneficial for such a closed loop washing process if the influence of the human factor is minimized as much as possible." Id. at col. 3 ll. 65-67. Independent claim 1 of the '262 patent recites:
Id. at col. 8 ll. 35-47. Claim 9 depends from claim 1 and additionally requires that "the information provided by the information detector is used by the control unit to regulate a washing time." Id. at col. 9 ll. 11-13. Independent claim 14 is similar to claim 1, but recites that the information detector can provide information "identifying at least one of washing unit and engine type." Id. at col. 10 ll. 14-26.
The '860 patent, titled "Method of Washing Objects, Such as Turbine Compressors," is directed to a method of washing turbine compressors using small quantities of finely-divided liquid that are sprayed through the engine. Independent claim 1 recites:
1. A method of washing turbine compressors, which operate with large quantities of air and therefore become internally soiled by and coated with contaminants carried by the air, therewith giving rise to greater fuel consumption, higher temperatures and higher emissions with substantially impaired efficiency as a result thereof, wherein small quantities of finely-divided liquid are sprayed onto and through the turbine compressors, characterized by running the turbine compressors and spraying the finely-divided liquid quantities through at least one nozzle towards and through the turbine compressor at an overpressure within the range of 50-80 bars and at a liquid particle size in the range of 250-120μm, and with a total volumetric flow through the nozzle or nozzles within the range of 0.5-60 l/min., and with a liquid particle velocity of 100-126 m/sec., whereby the liquid is finely-divided to a degree at which the particles of liquid will follow the same routes through the turbine compressor as those previously taken by the air-borne contaminants, when spraying said liquid onto and through said turbine compressor.
'860 patent col. 3 l. 17-col. 4 l. 16. Dependent claim 2 requires "using a total volumetric liquid flow within the range of 2-60 l/min." Id. at col. 4 ll. 17-18.
EcoServices sued CAS in the Southern District of Florida for infringement of the '262 and '860 patents through CAS's use of the Cyclean® Engine Wash system ("Cyclean®"), which was developed by Lufthansa Technik AG. The case was later transferred to the Central District of California.
In its claim construction order, the district court rejected CAS's proposed construction of the '262 patent claim term "information detector" that required that the "information detector" must receive information from an "information unit," such as an RFID chip. Order re: Claim Construction of Disputed Terms, EcoServices, LLC, v. Certified Aviation Servs. LLC, 16-1824-RSWL-SPx, Dkt. No. 80 (May 18, 2017), at 10-12. In doing so, the court stated it was "declin[ing] to import a limitation into the claims from a preferred embodiment." Id. at 12. Instead, the court accepted EcoServices' proposed construction, which was to use the term's plain and ordinary meaning. See id. The district court also determined that CAS had failed to prove by clear and convincing evidence that the '860 patent claim term "small quantities of finely-divided liquid" was indefinite. Id. at 10.
A jury trial began on June 26, 2018. As noted, in its July 2, 2018 verdict, the jury concluded that (1) CAS infringed claims 1, 9, and 14 of the '262 patent, (2) claims 1, 9, and 14 of the '262 patent were not invalid, and (3) CAS willfully infringed claims 1 and 2 of the '860 patent. The jury awarded EcoServices damages of $1,949,600 for the infringement of both patents, which corresponded to $400 per engine wash that CAS had performed through the end of December of 2017, the parties' original trial date. After the verdict, in an October 26, 2018 Order, the court denied motions by CAS to: (1) declare the claims of the '262 patent ineligible under 35 U.S.C. § 101; and (2) declare the claims of the '860 patent indefinite. Order, EcoServices, LLC, v. Certified Aviation Servs. LLC, 16-1824-RSWL-SP, Dkt. No. 293 (Oct. 26, 2018), at 12-21, 24-29 ("Post-Verdict Order").
In its eligibility analysis under § 101, the district court analyzed claims 1, 9, and 14 of the '262 patent using the two-step framework set forth in Alice Corp. Pty. v. CLS Bank, Int'l, 573 U.S. 208, 217-18 (2014). The court noted that, as was the case in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016), "the [asserted] claims of the '262 patent seek to automate a task previously done by humans." Post-Verdict Order at 17. Accordingly, "the...
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