Trebro Manufacturing, Inc. v. Firefly Equipment, LLC
748 F.3d 1159
| Fed. Cir. | 2014Background
- Trebro acquired U.S. Patents 8,336,638 (’638) and 7,721,814 (’814) in March 2013 and immediately sued FireFly for infringement of the ’638 patent (sod-harvester technology); Trebro moved for a preliminary injunction against FireFly’s ProSlab 150.
- Claim 1’s disputed limitation requires a “horizontal conveyor [that] is moveable in a vertical direction toward said sod carrier.” The specification discloses one embodiment where a bed frame carrying the horizontal conveyor is raised/lowered.
- FireFly’s defense: the ProSlab 150’s horizontal conveyor belt “changes shape” rather than raising a bed frame; FireFly also sought PTO reexamination based on earlier patents by the same inventors.
- District court denied the preliminary injunction, finding no likelihood of infringement (construing the claim to require a bed frame lift), a substantial question of validity, and no irreparable harm to Trebro.
- The Federal Circuit vacated and remanded: it held the district court improperly imported a bed-frame limitation into claim 1, misapplied prior-art timing and PTO reexamination findings, and clearly erred in rejecting evidence of irreparable harm in the small, direct-competition market.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction / literal infringement (vertical movement of horizontal conveyor) | ProSlab vertically raises its horizontal conveyor to present sod to the carrier; therefore it meets claim 1. | ProSlab only changes belt shape; it does not raise a bed frame as illustrated in the specification. | Court: District erred by importing a "bed frame" limitation into claim 1; record shows vertical movement of the conveyor and likelihood of literal infringement. |
| Validity (novelty / obviousness of vertical-moving horizontal conveyor) | No prior art on the record predates the patent’s February 2005 priority; the references relied on are not prior art. | Prior commercial machines and earlier patents raise substantial questions of novelty/obviousness. | Court: District clearly erred — cited commercial machines postdate priority and PTO found the two inventor patents were not prior art; no substantial question of validity shown. |
| Irreparable harm | Small niche market (≈8 units/yr), direct competition, lost customers and market share, layoffs — monetary damages may be inadequate. | Losses are monetary and can be compensated by damages (lost profits or reasonable royalty); harm speculative. | Court: District abused discretion in dismissing irreparable harm; evidence of lost sales/customers and market-share loss is not speculative and supports irreparable harm. |
| Preliminary injunction balancing / remedy on appeal | Trebro sought injunction to enjoin sale of ProSlab pending trial. | FireFly warned injunction would harm its business; district denied injunction. | Court: Vacated and remanded for further proceedings; remand to evaluate balance of equities and public interest in light of findings on likelihood of success and irreparable harm. |
Key Cases Cited
- Winter v. Natural Res. Def. Council, 555 U.S. 7 (injunction standards for likelihood of success, irreparable harm, balance of equities, public interest)
- Phillips v. AWH Corp., 415 F.3d 1303 (en banc) (claim construction principles; avoid importing specification limitations)
- Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296 (patent preliminary injunction: accused infringer can defeat likelihood by raising substantial question of validity)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (Graham factors for obviousness analysis)
- Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 702 F.3d 1351 (direct competition and non-practicing status relevant to irreparable harm)
- Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (irreparable harm/ injunction considerations where patentee sells competing product)