Ecoservices, LLC v. Certified Aviation Servs., LLC

• Decision Date: 26 October 2018
• Docket Number: CV 16-01824-RSWL-SPx
• Citation: 340 F.Supp.3d 1004
• Parties: ECOSERVICES, LLC, Plaintiff, v. CERTIFIED AVIATION SERVICES, LLC, Defendant.
• Court: U.S. District Court — Central District of California

340 F.Supp.3d 1004

ECOSERVICES, LLC, Plaintiff,

v.CERTIFIED AVIATION SERVICES, LLC, Defendant.

CV 16-01824-RSWL-SPx

United States District Court, C.D. California.

Signed October 26, 2018

David A. Coulson, Greenberg Traurig PA, Miami, FL, Leanna Costantini, Greenberg Traurig, LLP, Irvine, CA, Natasha E. Daughtrey, Goodwin Procter LLP, Los Angeles, CA, Khashayar Stephen Shahida, Pro Hac Vice, Myomi T. Coad, Pro Hac Vice, Patrick J. McCarthy, Pro Hac Vice, Ronald J. Pabis, Pro Hac Vice, Goodwin Procter LLP, Washington, DC, for Plaintiff.

Dale J. Giali, Mayer Brown LLP, Los Angeles, CA, Alan M. Grimaldi, Pro Hac Vice, Ann Marie Duffy, Pro Hac Vice, Canek Acosta, Dara M. Kurlancheek, Pro Hac Vice, Paul W. Hughes, Pro Hac Vice, Peter O. Schmidt, Pro Hac Vice, Mayer Brown LLP, Stephen E. Baskin, Pro Hac Vice, Jonathan Weinberg, Mayer Brown LLP, Washington, DC, Gregory J. Apgar, Pro Hac Vice, Mayer Brown LLP, New York, NY, for Defendant.

ORDER RE: Defendant's Motions for Judgment of Patent Ineligibility [271] and Indefiniteness [273]; Plaintiff's Motions for Permanent Injunction [275], Attorneys' Fees [272], and Prejudgment Interest, Post-Judgment Interest, Supplemental Damages, and Costs [274]

RONALD S.W. LEW, Senior U.S. District Judge

Currently before the Court is Defendant Certified Aviation Services, LLC's ("Defendant") Motion for Judgment of Patent Ineligibility of the '262 Patent [271]; Defendant's Motion for Judgment of Patent Indefiniteness of the '860 Patent [273]; Plaintiff EcoServices, LLC's ("Plaintiff") Motion for Permanent Injunction [275]; Plaintiff's Motion for Attorneys' Fees [272]; and Plaintiff's Motion for Prejudgment Interest, Post-Judgment Interest, Supplemental Damages, and Costs [274]. Having considered all papers submitted pertaining to the Motions, the Court NOW FINDS AND RULES AS FOLLOWS: the Court DENIES Defendant's Motions for Ineligibility and Indefiniteness; DENIES Plaintiff's Motion for Permanent Injunction; DENIES Plaintiff's Motion for Attorneys' Fees; and GRANTS Plaintiff's Motion for Prejudgment Interest, Post-Judgment Interest, Supplemental Damages, and Costs.

I. BACKGROUND

A. Factual Background

Plaintiff provides on-wing aircraft engine washing using its EcoPower Engine Wash System ("EcoPower"). Def.'s Statement of Uncontroverted Facts in Supp. of Mot. for Partial Summ. J. as to '860 Patent ( '860 SUF) ¶¶ 2, ECF No. 128-1. Defendant also provides engine wash services in the United States. '860 SUF ¶ 3. Prior to 2010, representatives for Defendant met with Plaintiff's parent companies regarding the possible purchase of EcoPower equipment, but did not reach an agreement. Pl.'s Statement of Facts in Supp. of Opp'n to Mot. for Partial Summ. J. as to '860 Patent ¶¶ 5-6, ECF No. 134-1. Defendant then entered into discussions with non-party Lufthansa Technik AG ("Lufthansa") for use of the Cyclean Engine Wash ("Cyclean"). Id. ¶ 6. Defendant leases Cyclean equipment from Lufthansa to provide on-wing aircraft engine washing. '860 SUF ¶¶ 5-6.

Plaintiff asserted two patents in connection with EcoPower against Defendants' Cyclean for infringement. First, U.S. Patent No. 9,162,262 (the " '262 Patent") is entitled "Automated Detection and Control System and Method for High Pressure Water Wash Application and Collection Applied to Aero Compressor Washing," which the USPTO issued on October 20, 2015. Def.'s Statement of Uncontroverted Facts in Supp. of Mot. for Partial Summ. J. as to '260 Patent (" '262 SUF") ¶¶ 11-12, ECF No. 126-1. The jury found that Defendant infringed Claims 1, 9, and 14 of the '262 Patent [264]. Claim 1 states,

A system for washing turbine engines comprising: a washing unit for providing a washing liquid to the turbine engines; an information detector configured to gather information related to engine type; and a control unit configured to accept the information related to engine type from the information detector and to determine a washing program to be used as a function of the information relating to engine type from a set of preprogrammed washing programs, and further configured to regulate the washing unit according to washing parameters associated with the washing program used.

Decl. of Gregory Apgar in Supp. of Def.'s Mot. for Partial Summ. J. as to '262 Patent ("Apgar '262 Decl."), Ex. 1 (" '262 Patent") 8:36-47, ECF No. 126-3. Claim 9 states, "The system of claim 1 wherein the information provided by the information detector is used by the control unit to regulate a washing time." '262 Patent at 9:11-13. Claim 14 states,

A system for washing turbine engines comprising: a washing unit for providing a washing liquid to the turbine engines; an information detector for providing information identifying at least one of washing unit and engine type; and a control unit configured to regulate the washing unit according to washing parameters associated to a particular engine based upon preprogrammed control data relating to information provided by the information detector, wherein the preprogrammed control data comprises a washing program from a set of available washing programs.

'262 Patent at 10:14-26.

Second, U.S. Patent No. 5,868,860 (the " '860 Patent"), is entitled "Method of Washing Objects, Such as Turbine Compressors," which the USPTO issued on February 9, 1999. '860 SUF ¶¶ 11-12. The '860 Patent provides parameters for four separate disclosures on its two claims: pressure, particle size, volumetric flow, and particle velocity. Pl.'s Opp'n re Partial Summ. J., Ex. M, '860 Patent, 4:7-18, ECF No. 134-15. At trial, the jury found that Defendant infringed Claims 1 and 2 of the '860 Patent. Claim 1 is directed to a method of washing turbine compressors:

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 250-120 microns, 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.

Id. ¶ 16. Claim 2 is a dependent claim, which recites the "method according to claim 1, characterized by using a total volumetric liquid flow within the range of 2-60 l/min." Id. ¶ 17. In prior washing systems, centrifugal forces pushed the spray particles outward towards the tips of the compressor fan blades, causing an ineffective wash. '860 Patent at 1:24-36. The '860 Patent's specification states that in its method, "[b]ecause the liquid particles are given a size and velocity which together overcome the centrifugal effect, all accessible surfaces of the object will be cleaned effectively and efficiently." Id. at 2:14-18. Thus, it is the particle size and method of making small particles of water that renders the '860 Patent new as compared to prior washing systems. Trial Tr. 6/27/2018 at 104:10-14 (direct testimony of Mr. Kushnick).

The particle size recited in the claims is "a liquid particle size in the range of 250-120 µm." '860 Patent at 4:8-9. Both parties' experts agreed at trial that particles smaller than 120 µm or bigger than 250 µm would not overcome the centrifugal effect and would provide a less effective cleaning. See Trial Tr. 6/27/2018 at 183:7-23; Trial Tr. 6/29/2018 at 19:14-24.

On July 2, 2018, the jury returned a verdict in favor of Plaintiff in the amount of $1,949,600 based on a royalty rate of $400 per jet engine wash. Pl.'s Mot. re Interest & Costs 1:4-6, ECF No. 274. The verdict confirmed that Defendant's Cyclean infringes all claims of the '262 Patent, and willfully infringes the '860 Patent. Pl.'s Mot. re Permanent Injunction ("PI Mot.") 1:8-1, ECF No. 275. The '860 Patent expired in May of 2016. Plaintiff alleges that Defendant continues to knowingly and willfully infringe the '262 Patent. Id. at 1:14-15.

B. Procedural Background

On June 26, 2018, the jury trial in this Action began [245]. On July 2, 2018, the jury reached a verdict [265] in favor of Plaintiff, finding that Defendant infringed the non-obvious '262 Patent. The parties filed the instant Motions [271, 272, 273, 274, 275] on July 25, 2018. The parties timely opposed [278, 279, 280, 281, 282], and timely replied [287, 288, 289, 290, 291].

II. DISCUSSION

A. Legal Standard

1. Patent Eligibility

Patent eligibility is a question of law. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015). Section 101 of the Patent Act provides that a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has "long held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. v. CLS Bank, Int'l, 573 U.S. 208, 134 S.Ct. 2347, 2354, 189 L.Ed.2d 296 (2014). "The concern that drives this exclusionary principle" is "one of preemption." Id. In other words, the concern is " ‘that patent law not inhibit further discovery by improperly tying up the future use of’ these building blocks of human ingenuity." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 132 S.Ct. 1289, 1301, 182 L.Ed.2d 321 (2012) ). Alice warns courts, however, to "tread carefully in construing this exclusionary principle lest it swallow all of patent law," because "[a]t some level, ‘all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’ " Id. (quoting Mayo, 132 S.Ct. at 1293 ).

Under the two-step framework established in Alice and Mayo, the court first asks "whether the claims at issue are directed to one of those patent-ineligible concepts," as opposed to "patent eligible applications of those concepts." Id. at 2354-55. If so, the court th...