PLC Trenching Co. v. Im Servs. Grp.
| Decision Date | 29 July 2021 |
| Docket Number | Case No. 1:20-cv-00602-CWD |
| Parties | PLC TRENCHING CO., LLC, Plaintiff, v. IM SERVICES GROUP, LLC, Defendant. |
| Court | U.S. District Court — District of Idaho |
Before the Court are Plaintiff's motion for preliminary injunction and Defendant's motion to dismiss. (Dkt. 1, 27.)1 The motions are fully briefed and at issue. The Court conducted a hearing on June 24, 2021. After careful consideration of the record, the parties' briefing and supporting materials, and oral argument, the Court will deny the motion for preliminary injunction, and grant without prejudice the motion to dismiss.
This is a patent infringement action brought by PLC Trenching Company, LLC ("PLC-T") against IM Services Group, LLC ("IMSG"). (Dkt. 25.) The AmendedComplaint asserts two claims of patent infringement under 35 U.S.C. Section 271, one claim for each of the PLC-T patents listed below:
1) U.S. Patent No. 6,981,342 titled "Screening Laying Box" (the '342 Patent).
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'342 Patent, Fig. 1 and Fig. 2
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'896 Patent, Fig. 1 and Fig. 3
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'896 Patent, Fig. 2
The Amended Complaint seeks injunctive relief, general damages, costs, expenses, pre-judgment and post-judgment interest, enhanced damages for willful infringement under 35 U.S.C. Section 284, and attorney fees under 35 U.S.C. Section 285. (Dkt. 25.)
The two patents -'342 and '896 (collectively "the Patents") - are designs for "encasement devices," which are pieces of equipment that attach to large trenching machines used to install underground utility lines.2 PLC-T contends the encasement devices are unique from other trenching systems, in that they utilize an in-trench screen or screens with a plow to push native soil back into the trench after the utility line is placed in the trench. The devices, PLC-T asserts, allow PLC-T to utilize an innovative "single-pass" or "one-pass" process for installing underground lines that is far superior to others in the industry. (Dkt. 25 at 4-6.)
Generally speaking, the two patented devices are similar to one another in that they both utilize: 1) a "screening member" and 2) "a plow." The two devices differ in the design of the "screening member." Patent '342 utilizes at least one screen with a plurality of openings that allows excavated material swept by the plow onto the screen or screens to pass through the openings for deposit into the trench. (emphasis added.) In contrast, Patent '896 utilizes a single layer screen with a plurality of sections of openings of progressively increasing size relative to the front of the unit. (Dkt. 25, Ex. B) (emphasis added.)
PLC-T has been in the business of providing full-service underground utility installation for commercial wind and solar markets since 2002. (Dkt. 25 at ¶ 7.) IMSG entered the market to provide underground installation services at renewable energy facilities, e.g., wind and solar farms, in 2020. (Dkt. 25 at ¶ 24); (Dkt. 35-3, Dec. O'Connor at ¶ 5.) PLC-T claims that IMSG utilizes trenching machines similar to that owned by PLC-T and has marketed itself as using the one-pass system in its services. As such, PLC-T contends that the two are direct competitors and have been offering competing bids for work on the same lucrative projects. (Dkt. 25 at ¶ 25.)
In September of 2020, PLC-T and IMSG were both sub-contractors working on the Wheatridge Renewable Energy Facility II ("Wheatridge Project") in Oregon. During their work on the Wheatridge Project, PLC-T alleges it discovered that IMSG's trenching machine (the "Accused Product") was using PLC-T's patented technology - comprised of an in-trench screening member with openings of varying sizes and a plow for sweeping excavated material onto the screening member. (Dkt. 25 at ¶¶ 27-28.) PLC-T allegesMarais, S.A., a French company, manufactured the Accused Product. IMSG first leased and then later purchased the Accused Product from Marais.
PLC-T alleges IMSG knew it had infringed on PLC-T's patents and continues to do so by using the Accused Product on other utility installation projects. (Dkt. 25 at ¶¶ 32-41.) Further, PLC-T alleges IMSG has submitted competing bids against it on projects at lower than current market prices and that PLC-T recently lost its bid for a project at the Western Spirit Wind Project in New Mexico. The contract was awarded to IMSG who submitted a lower bid and began work on the project in November of 2020, using the Accused Product.
On December 31, 2020, PLC-T filed a complaint and the motion for preliminary injunction presently before the Court. (Dkt. 1, 2.) PLC-T filed an Amended Complaint on March 18, 2021. (Dkt. 25.) IMSG denies the claims and filed the pending motion to dismiss claims for past damages for failure to mark and willful infringement claims on April 1, 2021. (Dkt. 27.) The Court heard oral argument after both motions were fully briefed. After setting forth the standards of law applicable to each motion, the Court will discuss each motion in turn.
To obtain a preliminary injunction, generally a party must show "that [it] is likely to succeed on the merits, that [it] is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in [its] favor, and that an injunction is in the public interest." Luminara Worldwide, LLC v. Liown Electronics Co. Ltd., 814F.3d 1343, 1352 (Fed. Cir. 2016) (quoting Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008)).
In a patent case, to establish a likelihood of success on the merits, a patentee must show that, "in light of the presumptions and burdens that will inhere at trial on the merits," it will likely prove infringement of the asserted claims and that its infringement claim will likely withstand the alleged infringer's challenges to patent validity and enforceability. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1364 (Fed. Cir. 2017). If the accused infringer raises a substantial question concerning either infringement or validity that that patentee cannot overcome, the preliminary injunction should not issue. Amazon.com, 239 F.3d at 1350. Furthermore, a patentee must establish a causal nexus between the infringement and the alleged harm. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1324 (Fed. Cir. 2012).
Federal Rule of Civil Procedure 8(a)(2) requires "a short and plain statement of the claim showing that the pleader is entitled to relief," sufficient to "give the defendant fair notice of what the...claim is and the grounds upon which it rests." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). To defeat a Rule 12(b)(6) motion to dismiss, a plaintiff must plead sufficient facts "to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 570). A claim is facially plausible when the factual content pleaded allows a court "to draw a reasonable inference that the defendant is liable for the misconduct alleged." Id. at 678.
The Court must take all material factual allegations as true and draw reasonable inferences in the non-moving party's favor. Id. However, the Court is "'not bound to accept as true a legal conclusion couched as a factual allegation,'" or to credit "mere conclusory statements" or "[t]hreadbare recitals of the elements of a cause of action." Id. (quoting Twombly, 550 U.S. at 555).
PLC-T moves for a preliminary injunction seeking to enjoin IMSG from continued use of the Accused Product in the United States. (Dkt. 1.) PLC-T argues it is likely to succeed on the merits of its patent infringement claims and that it will incur irreparable harm in the absence of a preliminary injunction. IMSG disagrees, arguing substantial questions have been raised concerning 1) whether PLC-T can prove the alleged infringement and 2) whether the patents are valid. (Dkt. 44.)
"A determination of patent infringement requires a two-step analysis." BlackBerry Ltd. v. Facebook, Inc., 487 F.Supp.3d 870, 878 (C.D. Cal. 2019) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)). The first step is to construe the claims to determine the scope and meaning of what is allegedly infringed. The second step compares "the properly construed claims to the accused product to determine whether each of the claim limitations is met, either literally or under thedoctrine of equivalents." Id. The first step is a question of law and the second step is a question of fact. Id.
The doctrine of equivalents provides that "a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)). The question presented with the doctrine of equivalents is "whether the accused device performs substantially the same function in substantially the same way to obtain substantially the same result as the claim limitation." VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1322 (Fed. Cir. 2014).
Here, PLC-T...
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