A Direct Competitor In A Tight Niche Market May Receive A Preliminary Injunction Despite Not Practicing The Patent

In Trebro Manufacturing, Inc. v. FireFly Equipment, LLC, No. 13-1437 (Fed. Cir. Apr. 9, 2014), the Federal Circuit vacated and remanded the district court's denial of a motion for a preliminary injunction by Trebro Manufacturing, Inc. ("Trebro") against FireFly Equipment, LLC ("FireFly"). The Court held that the district court abused its discretion in denying Trebro's motion based on a record that strongly suggested both a likelihood of success on the merits and irreparable harm, but remanded for the district court to determine the balance of equities and the public interest in the first instance.

U.S. Patent No. 8,336,638 ("the '638 patent") is directed to sod harvesters that cut sod pieces from the ground and transport the pieces by conveyor belts for stacking on pallets. Claim 1 of the '638 patent recites "wherein said horizontal conveyor is moveable in a vertical direction toward said sod carrier." After acquiring the '638 patent, Trebro sued FireFly for infringement and moved for a preliminary injunction, which the district court denied. The district court found that Trebro had no substantial likelihood of success on the merits because FireFly's accused product, the ProSlab 150, failed to meet the limitation that the horizontal conveyor is moveable in a vertical direction since the ProSlab 150's conveyer does not raise the horizontal bed frame, but rather has a belt that changes shape to lift the sod. The district court also found a substantial question as to the validity of the '638 patent, finding that the same limitation was known in the sod harvesting industry, including by the inventors and assignee, so that claim 1 was not novel or nonobvious. Finally, the district court found no irreparable harm to Trebro, dismissing Trebro's evidence as speculative and concluding that Trebo could be compensated through an award of lost profits or a reasonable royalty. The case was certified for interlocutory appeal.

On appeal, the Federal Circuit held that the district court abused its discretion in denying Trebro's preliminary injunction motion. The Court first held that Trebro had shown that the FireFly's ProSlab 150 sod harvester "more likely than not" infringed the '638 patent. Slip op. at 10 (quoting Revision Military, Inc. v. Balboa Mfg. Co., 700 F.3d 524, 525-26 (Fed. Cir. 2012)). According to the Court, the district court erred in construing claim 1 to require "rais[ing] the horizontal bed frame" because (1) the language of claim 1 does...