Trebro Mfg., Inc. v. FireFly Equipment, LLC

Addressing whether a plaintiff that does not practice the asserted patent and did not itself invent the patent was entitled to a preliminary injunction against a competitor, the U.S. Court of Appeals for the Federal Circuit vacated a lower court’s order denying preliminary injunction and remanded, finding that a district court erred in its interpretation of the claims at-issue and that there was a likelihood of success on the merits on the issue of infringement.  Trebro Mfg., Inc. v. FireFly Equipment, LLC, Case No. 13-1437 (Fed. Cir., Apr. 9, 2014) (Rader, J.)

Plaintiff Trebro sued FireFly Equipment for patent infringement on two patents directed to “sod harvesters,” which are vehicles having knives that cut sod pieces from the ground and related processes.  The companies were competitors in the sod harvester industry.  Trebro pursued a preliminary injunction on the asserted patent—a patent it had recently acquired and admittedly did not practice.  The district court denied Trebro’s motion, finding that the accused product did not include an essential element required by the claims, and therefore Trebro did not show a likelihood of succeeding on its infringement claim.  The district court also found that there was a question of novelty of the claimed invention.  In addition, the court found that, despite evidence of ongoing competition harm through lost customers and market share, Trebro would not suffer irreparable harm because it did not have a product that practiced the asserted patent claims. 

The Federal Circuit analyzed the four preliminary injunction factors: that the plaintiff is likely to eventually succeed on the merits of the case, that the plaintiff will suffer irreparable harm absent an injunction, that the balance of equities favor the plaintiff and that the public interest favors injunctive relief.  The Federal Circuit disagreed with each of the district court’s conclusions.  As to likelihood of showing infringement, the Federal Circuit found that the district court erred by importing the “bed frame” limitation into the claims from the preferred embodiment. 

The Court also found that the district court erred in finding a substantial question as to the asserted patents’ validity, as the district court’s analysis did not adequately support a finding of either anticipation or obviousness.  With respect to irreparable harm, the Federal Circuit explained that a “party that does not practice the asserted patent may still receive an injunction when it sells a competing product.” 

The Federal Circuit further noted that the district court did not address the final two factors and provided observations based on the record that although not explicitly stated, mitigate in favor of an injunction (e.g., that defendant being the only non-licensed competitor in the market suggests that the patent will have significantly less value if plaintiff cannot use the patent to exclude an infringing product from the market).