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Thermapure, Inc v. Temp-Air

December 22, 2010

THERMAPURE, INC., PLAINTIFF,
v.
TEMP-AIR, INC.,
GIERTSEN COMPANY OF ILLINOIS, INC.,
SERVPRO INDUSTRIES, INC.,
MALLORY SUN, LLC A/K/A SERVPRO OF DOWNERS GROVE AND OAK BROOK, DISASTER KLEENUP INTERNATIONAL, INC.,
DRI-EAZ PRODUCTS, INC., RXHEAT, LLC,
CAMBRIDGE ENGINEERING, INC., AND JON-DON, INC., DEFENDANTS.



The opinion of the court was delivered by: Judge Joan H. Lefkow

OPINION AND ORDER

ThermaPure, Inc. ("ThermaPure") filed a claim for patent infringement against TempAir, Inc. ("Temp-Air"), Giertsen Company of Illinois, Inc. ("Giertsen Illinois"), Servpro Industries, Inc. ("Servpro"), Mallory Sun, LLC, doing business under the name of Servpro of Downers Grove and Oak Brook ("Servpro Downers Grove"), Jon-Don, Inc. ("Jon-Don"), DriEaz Products, Inc. ("Dri-Eaz"), RxHeat, LLC ("RxHeat"), and Cambridge Engineering, Inc. ("Cambridge").*fn1 Before the court are Cambridge and RxHeat's motion to dismiss or sever claims [#57] and Temp-Air's motion to sever and transfer claims to the District of Minnesota [#75]. For the following reasons, the motions are granted.

BACKGROUND*fn2

ThermaPure is a California corporation that owns United States Patent No. 6,327,812 entitled "Method Of Killing Organisms And Removal Of Toxins In Enclosures" ("the '812 Patent") and Patent No. 7,690,148 entitled "Method Of Treating For Pests" ("the '148 Patent"). ThermaPure is in the business of using heat to remediate homes and commercial buildings so that they are free of mold, viruses, bacteria, insects, and rodents. Its patented processes are also used for construction dryout and to remove toxic chemicals and Volatile Organic Compounds. See ThermaPure Heat, http://www.thermapure.com (last accessed Dec. 15, 2010).

Temp-Air is a Minnesota corporation with its headquarters in Minnesota. It also has an office in Elgin, Illinois. Temp-Air provides pest control through a form of heat treatment called Thermal Remediation. See Thermal Remediation from Temp-Air, http://www.thermalremediation.com (last accessed Dec. 15, 2010).*fn3 Temp-Air's products and methods can be used to treat bed bugs, wood destroying organisms, and insects that live in warehouses, food plants, bins, and silos. Id. Included among Temp-Air's products are "bed bug trailers" that contain heat systems and fans that can be attached to a standard truck and used for extermination of bed bugs. Temp-Air's Mot. to Sever and Transfer at 3. ThermaPure alleges that Temp-Air has infringed the '812 patent and the '148 patent by making, using, selling and/or offering heat remediation equipment, instruction, and services.

Giertsen Illinois is an affiliate of the Giertsen Company ("Giertsen Minnesota"), a Minnesota corporation that provides restoration services. See Giertsen Illinois's Cross Claims ¶ 3; Temp-Air's Mot. to Sever and Transfer Exs. B & D. Giertsen Minnesota purchased a bed bug trailer from Temp-Air in 2008. Giertsen Illinois's Cross Claims ¶ 3; Temp-Air's Mot. to Sever and Transfer Exs. B & D. Giertsen Minnesota is identified as a thermal remediation treatment service provider on Temp-Air's website. See Bed Bugs -- Find a Service Provider, Thermal Remediation from Temp-Air, http://www.thermalremediation.com/bed-bugs/find-a-service.aspx (last accessed Dec. 15, 2010). ThermaPure alleges that Giertsen Illinois has infringed the '148 patent by making, using, selling and/or marketing heat technology remediation services.

RxHeat is a Missouri corporation with its headquarters in Missouri.*fn4 RxHeat provides heating services and markets products that relate to bed bug remediation, document recovery, new construction, temporary heating needs, and water restoration. See RxHeat Prescriptive Heating Solutions, http://www.rxheat.com (last accessed Dec. 15, 2010). ThermaPure alleges that RxHeat has infringed the '812 patent and the '148 patent by offering equipment, instruction, and heat remediation services through its website and at trade shows. Cambridge is an affiliate of RxHeat that designs, develops, and manufactures heating systems. See id. Cambridge is also a Missouri corporation with its headquarters in Missouri. ThermaPure contends that Cambridge has infringed the '812 patent by offering equipment, instruction, and services at trade shows.

Jon-Don is an Illinois corporation with its headquarters in Roselle, Illinois. Jon-Don sells supplies for carpet cleaning, janitorial service, flood and fire restoration and mold remediation. See Jon-Don - Carpet Cleaning, Janitorial and Restoration Supplies, http://www.jondon.com (last accessed Dec. 15, 2010). Jon-Don sells the products of RxHeat and Cambridge, as well as other defendants. Id. ThermaPure alleges that Jon-Don has infringed the '812 patent and the '148 patent by offering equipment, instruction, and/or services on its website and at trade shows.

ServPro and ServPro of Downers Grove are restoration service companies that provide mold remediation using heat, among other services. See ServPro - Fire & Water Cleanup & Restoration, http://www.servpro.com (last accessed Dec. 15, 2010). ServPro is a Nevada corporation with its principal office in Tennessee. ServPro Downers Grove is a franchisee of ServPro and is an Illinois LLC with an office in Chicago, Illinois. ThermaPure alleges that ServPro and ServPro Downers Grove have infringed the '812 patent by offering equipment, instruction, and/or services through their websites and at trade shows.

Dri-Eaz is a Washington corporation with its corporate headquarters in Washington. DriEaz is a manufacturer, seller, and lessor of HVAC and heat remediation equipment. See Dri-Eaz Products, http://www.drieaz.com (last accessed Dec. 15, 2010). ThermaPure alleges that DriEaz has infringed the '812 patent by offering equipment, instruction, and/or services through its websites and at trade shows.

DISCUSSION

I. Joinder Under Rule 20(a)

Federal Rule of Civil Procedure 20(a) permits parties to be joined as defendants where (1) a claim is asserted against them "with respect to or arising out of the same transaction, occurrence, or series of transactions and occurrences," and (2) "any question of law or fact common to all defendants will arise in the action." Fed. R. Civ. P. 20(a)(2)(A)--(B). The purpose of the rule is "to promote trial convenience and to expedite the resolution of disputes, thereby preventing multiple lawsuits." 7 Charles A. Wright, Arthur R. Miller & Mary K. Kane, Federal Practice & Procedure § 1652. Here, the parties dispute whether ThermaPure's claims against all of the defendants arise out of the same transaction or occurrence. "In ascertaining whether a particular factual situation constitutes a single transaction or occurrence for the purpose of Rule 20, a case by case approach is generally pursued." Gorence v. Eagle Food Ctrs., Inc., No. 93 C 4862, 1996 WL 734955, at *3 (N.D. Ill. Dec. 19, 1996) (quoting Mosely v. Gen. Motors Corp., 497 F.2d 1330, 1332 (8th Cir. 1974)). Courts have interpreted the word "transaction" flexibly. Id. "Accordingly, all 'logically related' events entitling a person to institute a legal action against another generally are regarded as comprising a transaction or occurrence." Id. (quoting Mosely, 497 F.2d at 1333). If parties have been improperly joined as defendants, the court may sever the claims pursuant to Rule 21. Rule 21 does not, however, provide for dismissal of the entire action due to improper joinder.

RxHeat and Cambridge assert that the complaint fails to allege a common transaction or occurrence as to all of the defendants and that they have no relationship with any of the other defendants except for Jon-Don, which sells some of their products on its website. In support of these assertions, they submit declarations from the President and Chief Executive Officer of Cambridge and the President of RxHeat. The declarations aver that neither RxHeat nor Cambridge makes, uses, sells, or offers to sell any products of any defendant in this case other than Jon-Don. Kramer Decl. ¶¶ 2--9; Braun Decl. ¶¶ 2--9. The declarations further state that although RxHeat and Cambridge have an on-going business relationship with Jon-Don, Jon-Don also has an on-going business relationship with other co-defendants and Jon-Don does not market the same products for the other defendants as it markets for RxHeat and Cambridge. Kramer Decl. ¶ 9; Braun Decl. ¶ 9. RxHeat and Cambridge admit that they are related entities and that joinder is proper with respect to them only. They also admit that joinder might be proper with respect to RxHeat, Cambridge, and Jon-Don. Jon-Don has not opposed or supported RxHeat and Cambridge's motion.

Temp-Air similarly asserts that it has not sold any products or conducted any business with the other defendants. In support of its motion, Temp-Air has submitted the declaration of its Chief Executive Officer. The declaration avers that Temp-Air has not sold products to any other defendant in this case. Korn Decl. ¶¶ 10--11. Temp-Air also has not purchased products from the other defendants, who are either competing manufacturers or purchase products from Temp-Air's competitors. Id. Temp-Air sold one bed bug trailer to Giertsen Minnesota and admits that its website includes a link to Giertsen Minnesota on a page titled "Bed Bug Service Providers." See id. ¶¶ 9--10; Temp-Air Mot. to Sever Ex. D (Invoice); Bed Bugs -- Find a Service Provider, Thermal Remediation from Temp-Air, http://www.thermalremediation.com/bed-bugs/find-a-service.aspx.*fn5 The web page asserts that Giertsen provides bed bug services in Illinois. Id. Giertsen Illinois has not opposed or supported Temp-Air's motion.

ThermaPure's responses to the motions under consideration focus on three factors that, it asserts, favor joinder: (1) the similarities between the accused products and methods, (2) the relationship between the defendants, and (3) the fact that the same patent is being asserted against each defendant. These factors are indeed dispositive in this case, but all except the last weigh against joinder. With respect to the first factor, ThermaPure does not deny that the defendants manufacture, market and sell different products and methods. ThermaPure's complaint, moreover, does not include the name of the accused products or methods or a description of them so that they might be identified. In its responses to the motions to sever, ThermaPure again fails to identify or clearly describe the various defendants' products and methods.*fn6 The only accused product that ThermaPure identifies with specificity is the filter for the "Omega Supreme Pest Vac" that is included as part of Temp-Air's bed bug packages. Yet ThermaPure does not explain how, if at all, the Omega Supreme Pest Vac filter is similar to the products manufactured or sold by other defendants.*fn7 Nor do ThermaPure's statements that multiple defendants have infringed "in the area of restoration" or "in the pest eradication business" establish similarities between the accused products and methods such that ThermaPure's claims can be said to arise out of a common transaction or occurrence. Therefore the fact that the defendants manufacture, sell, and market different products and methods weighs against joinder. See Androphy v. Smith & Nephew, Inc., 31 F. Supp. 2d 620, 623 (N.D. Ill. 1998) ("[C]laims of infringement against unrelated defendants, involving different machines, should be tried separately against each defendant." (quoting New Jersey Mach. Inc. v. Alford Indus. Inc., Civ. A. No. 89-1879(JCL), 1991 WL 340196, at *2 (D.N.J. Oct. 7, 1991)).

With respect to the relationship between the parties, the complaint again lacks any relevant information. In its opposition to the motions under consideration, ThermaPure asserts that defendants have "numerous partnerships and business relationships" that "affect" the alleged patent infringements by, for example, "combining equipment from multiple defects." ThermaPure has submitted a diagram that purports to show that the various defendants sell products to each other and are affiliated with each other. ThermaPure does not, however, specify how the relationships that are depicted in the diagram give rise to the claims against the defendants. Based on the record before the court, it appears that the only relevant link between RxHeat or Cambridge and the other defendants is the fact that Jon-Don sells products for RxHeat, Dri-Eaz and possibly other defendants on its website. The fact that two different companies sell different products on Jon-Don's website does not compel the conclusion that the two companies are also related to each other, particularly since Jon-Don sells products from many companies on its website. See DirecTV, Inc. v. Davlantis, No. 03 C 3506, 2003 WL 22844401, at *5--6 (N.D. Ill. Nov. ...


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