Oxygenator Water Techs. v. Tennant Co.
| Decision Date | 07 August 2020 |
| Docket Number | File No. 20-cv-358 (ECT/HB) |
| Parties | Oxygenator Water Technologies, Inc., Plaintiff, v. Tennant Company Defendant. |
| Court | U.S. District Court — District of Minnesota |
Aaron W. Pederson, J. Derek Vandenburgh, Nathan Louwagie and Philip P. Caspers, Carlson, Caspers, Vandenburgh & Lindquist, P.A., Minneapolis, MN, for Plaintiff Oxygenator Water Technologies, Inc.
Cara S. Donels and Robert Scott Johnson, Fredrikson & Byron, PA, Des Moines, IA and Lora Mitchell Friedemann, Fredrikson & Byron PA, Minneapolis, MN, for Defendant Tennant Company.
Plaintiff Oxygenator Water Technologies, a Minnesota corporation, owns several patents on flow-through oxygenators and methods of oxygenating flowing water. Defendant Tennant Company, also a Minnesota corporation, manufactures and sells commercial floor scrubbers. Some of Tennant's scrubbers are equipped with ec-H20™ electrolysis modules, which, according to Tennant, facilitate cleaning through the creation of microscopic bubbles in water without the use of floor cleaning chemicals. In this patent infringement case, Oxygenator alleges that Tennant's ec-H2O™ electrolysis modules use Oxygenator's patented technology, and Oxygenator asserts claims of direct, indirect, and willful infringement of three patents. Tennant has filed a partial motion to dismiss, pursuant to Federal Rule of Civil Procedure 12(b)(6), seeking dismissal of: (1) Oxygenator's claims of direct infringement based on Tennant's manufacturing and sale of its products; (2) Oxygenator's allegations of pre-notification indirect infringement in counts 1 through 4; (3) Oxygenator's allegation of willful infringement and corresponding request for pre-notification enhanced damages in count 5; and (4) Oxygenator's request for permanent injunctive relief. Tennant's motion will be denied.
This case concerns Tennant's alleged infringement of three patents owned by Oxygenator—U.S. Patent Nos. RE45,415 ("the '415 patent), RE47,092 ("the '092 patent"), and RE47,665 ("the '665 patent") (collectively, "the patents-in-suit"). See Am. Compl., Exs. A-C [ECF Nos. 9-1-9-3]. The history and issue dates of the patents-in-suit, rather than the claims contained therein, are most relevant to Tennant's motion. In 2003, Aqua Innovations, Inc., a research and development company, applied for a patent on its flow-through oxygenators and methods of oxygenating flowing water. Am. Compl. ¶ 9 [ECF No. 9]. The application was granted and U.S. Patent No. 6,689,262 ("the '262 patent") was issued to Aqua Innovations on February 10, 2004. See id.; http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&1=50&co1=AND&d=PTXT&s1=6,689,262.PN.&OS=PN/6,689,262&RS=PN/6,689,262. The '262 patent is the parent patent to the three patents-in-suit. See Am. Compl., Exs. A-C. In 2008, Oxygenator "was formed to commercialize" the technology created by Aqua Innovations, and Aqua Innovations assigned its patent rights to Oxygenator on August 8, 2008. Id. ¶ 10. A pending applicationfor another patent also was assigned to Oxygenator, and that patent, U.S. Patent No. 7,670,495 ("the '495 patent"), was issued on March 2, 2010. Louwagie Decl., Ex. 1 [ECF No. 22-1]. Each of the patents-in-suit is a reissue of the '495 patent. Am. Compl., Exs. A-C; see Mem. in Supp. at 2 [ECF No. 13]. The '415 patent was issued on March 17, 2015, the '092 patent was issued on October 23, 2018, and the '665 patent was issued on October 29, 2019. Am. Compl., Exs. A-C.
Tennant's alleged awareness of Oxygenator's patents dates to January 19, 2007, when Tennant applied for its own patent (which was ultimately granted) for a "method and apparatus for generating, applying, and neutralizing an electrochemically activated liquid." Louwagie Decl., Ex. 2 [ECF No. 22-2]. In its application, Tennant explained that part of its apparatus, a sparging device, Id. at 19:43-49. Tennant provided no other examples of oxygenators. See id. In 2008, Tennant began equipping many of its commercial floor scrubbers with ec-H20™ electrolysis modules for oxygenating water and selling them as a "green" alternative to other scrubbers that required the use of chemicals. Am. Compl. ¶¶ 13, 20, 22. Tennant purchases the electrolysis modules from a third party. Mem. in Supp. at 3.
In 2010, Oxygenator approached Tennant with an offer to license its technology. Am. Compl. ¶ 26. On July 27, 2010, representatives from Oxygenator met with Tennant's General Counsel and Director of Global Technology and Advanced Products. Id. After the meeting, Oxygenator emailed Tennant information about its technology and includedan attachment referencing "3 issued U.S. patents, 5 utility patent applications, and 10 provisional applications." Id. ¶ 27. The attachment included links to the three issued patents (the '262 parent patent, the '495 patent, and one other) and three published patent applications. Id. One week later, Oxygenator issued a press release advertising an exclusive opportunity to license its patented technology for use in cleaning and sanitization. Id. ¶ 28, Ex. J [ECF No. 9-10]. The press release stated that Oxygenator would be accepting inquiries and offers until September 17, 2010. Id., Ex. J. Oxygenator sent the press release to members of Tennant's management team. Id. ¶ 28. The Parties continued to exchange emails, but, on September 2, Tennant informed Oxygenator that it would not bid on its technology. Id. ¶ 29; Mem. in Opp'n at 6 [ECF No. 21]. One month later, Oxygenator provided license pricing information to Tennant, and Tennant again declined to license Oxygenator's technology. Am. Compl. ¶ 29.
Oxygenator next communicated with Tennant on September 20, 2019, when Oxygenator's counsel sent Tennant's Senior Vice President and General Counsel a letter informing them that Tennant was infringing on the . fees. Id. at 58-59, ¶¶ A-E.
In reviewing a motion to dismiss for failure to state a claim under Rule 12(b)(6), a court must accept as true all of the factual allegations in the complaint and draw all reasonable inferences in the plaintiff's favor. Gorog v. Best Buy Co., 760 F.3d 787, 792 (8th Cir. 2014) (citation omitted). Although the factual allegations need not be detailed, they must be sufficient to "raise a right to relief above the speculative level . . . ." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (citation omitted). The complaint must "state a claim to relief that is plausible on its face." Id. at 570. "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Tennant argues that Oxygenator's allegations of direct infringement based on Tennant's "manufacture" and "sale" of its ec-H20™ products should be dismissed because these allegations are "contrary to black letter law." Reply Mem. at 2 [ECF No. 24].1Tennant's argument seems straightforward. Tennant points out that, "[t]o infringe a method claim, a person must have practiced all steps of the claimed method." Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1206 (Fed. Cir. 2010) (quotation omitted); see Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915, 921 (2014) (). And it stands to reason that, because Tennant purchases the electrolysis modules from a third party, the manufacture (or assembly) and selling of ec-H20™-equipped floor scrubbers would not necessarily require Tennant to practice all steps of the electrolysis methods claimed in the patents-in-suit. To put it another way, Tennant need not use the ec-H20™-equipped floor scrubbers to manufacture or sell them.
Tennant has a point, but that point does not warrant granting this aspect of its motion. That Tennant need not practice all steps of the claimed method to manufacture or sell its ec-H20™-equipped floor scrubbers doesn't necessarily mean that Tennant does notpractice all steps of the claimed method during its manufacturing and sales activities. Of course, this observation describes only what is possible, but Oxygenator's complaint "nudge[s] [its] claims across the line from conceivable to plausible[.]" Twombly, 550 U.S. at 570. Oxygenator alleges that "common manufacturing practice suggests that Tennant tests at least some of its products to confirm they work as intended before they are sent to their customers" and that Tennant's sales process "relies heavily on Tennant demonstrating its equipment to potential customers." Am. Compl. ¶¶ 34, 49-50, 74-75, 85, 98-99, 109, 122. With respect to Tennant's sales process,...
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