Appeal from the United States District Court for the District of Montana in No. 13-CV-0036, Judge Sam E. Haddon.
ANTOINETTE M. TEASE, Antoinette M. Tease, P.L.L.C. Intellectual Property and Technology Law, of Billings, Montana, argued for plaintiff-appellant.
TIMOTHY B. SMITH, Parr Brown Gee & Loveless, P.C., of Salt Lake City, Utah, argued for defendants-appellees. With him on the brief was TERRY E. WELCH.
Before RADER, Chief Judge, LOURIE, and PROST, Circuit Judges.
Rader, Chief Judge .
The United States District Court for the District of Montana denied plaintiff-appellant Trebro Manufacturing, Inc.'s (Trebro) motion for a preliminary injunction against defendants-appellees FireFly Equipment, LLC and Steven R. Aposhian (collectively, FireFly) for infringement of U.S. Patent No. 8,336,638 (the '638 patent). Trebro Mfg., Inc. v. FireFly Equip., LLC, No. 13-CV-0036, 2013 WL 1655993 (D. Mont. Apr. 17, 2013) ( Order ). Because the district court abused its discretion in denying Trebro's motion, this court vacates the order and remands for further proceedings consistent with this opinion.
Trebro acquired the '638 patent and U.S. Patent No. 7,721,814 (the '814 patent) on March 12, 2013, from 1045929 Ontario Ltd. (Ontario). See J.A. 297-305. Trebro also simultaneously granted Brouwer Turf Inc. (an affiliate of Ontario) a fully paid-up, royalty-free nonexclusive license to the patents. J.A. 302. Brouwer Turf had apparently been delinquent in royalty payments to Trebro under an unrelated license, which motivated the assignment. See J.A. 729.
On March 14, 2013, Trebro sued FireFly for infringement of the '638 and '814 patents, as well as for copyright infringement on certain software. J.A. 127-37. The next day, Trebro moved for a preliminary injunction on all infringement counts, but ultimately opted to pursue the motion only with respect to the '638 patent. J.A. 700.
The technology at issue involves " sod harvesters" --vehicles having knives that cut sod pieces from the ground, conveyor belts to transport the pieces, and mechanisms to stack them on a pallet. FireFly's accused product is a sod harvester called the ProSlab 150. Order, [WL] at *1. Trebro also sells sod harvesters, including one called the SC2010 Slab. J.A. 763.
The '638 patent was filed June 28, 2012, issued December 25, 2012, and is titled " Method and Apparatus for Harvesting and Picking Up Sod." The named inventors are Gerardus J. Brouwer and Robert Milwain. The patent claims priority based on a series of applications dating back to a provisional filed February 4, 2005. On the record before this court, FireFly does not contest priority on the '638 claims. Trebro also claims further priority of invention to November 2004 through an affidavit from named inventor, Mr. Brouwer, and a corroborating memorandum from his attorney at that time. J.A. 810-14.
Trebro asserted claims 1, 2, 4, 6, and 9. Claim 1 is pertinent for this appeal:
1. A sod harvester for harvesting a sod piece from a ground surface and stacking said sod piece on a support, the sod harvester comprising:
a) a sod cutting knife for cutting said sod piece from said ground surface;
b) at least one inclined conveyor movable at faster than ground speed;
c) a substantially horizontal conveyor, wherein said at least one inclined conveyor is adapted to carry said sod piece from said cutting knife to said substantially horizontal conveyor; and
d) a sod carrier movable between a first position above said horizontal conveyor and a second position, wherein, in said first position, said sod carrier is adapted to removably secure said sod piece to said sod carrier when said sod piece is on said horizontal conveyor, wherein said sod carrier is adapted to release said sod piece at said second position,
wherein said horizontal conveyor is move-able in a vertical direction toward said sod carrier .
'638 patent col. 24 ll. 19-38 (emphasis added). Both the infringement and invalidity disputes on appeal focus on the last limitation of claim 1--a horizontal conveyor that moves vertically.
Figure 1 of the '638 patent generally illustrates an example of a sod harvester having features as in claim 1:
In Figure 1, the horizontal conveyor is mounted on a " bed frame" 140 that moves vertically via piston and cylinder 142. '638 patent col. 10 ll. 17-28. The parties agree that the '638 specification only explicitly describes one embodiment for the last limitation of claim 1 (a " horizontal conveyor  moveable in a vertical direction" ). Specifically, the specification describes raising and lowering a bed frame to which the conveyor is attached, as in Figure 1. See '638 patent col. 10 l. 18-col. 11 l. 45.
Claim 10, which depends from claims 1 and 9, explicitly covers a scenario where a bed frame is raised and lowered to effect the vertical lifting of the horizontal conveyor:
10. A sod carrier according to claim 9, further comprising a bed frame, said horizontal conveyor being mounted on said bed frame, wherein said bed frame is movable in a vertical direction toward and away from said sod ...