Trebro Manufacturing, Inc. v. Firefly Equipment, LLC , 748 F.3d 1159 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
TREBRO MANUFACTURING, INC.,
Plaintiff-Appellant,
v.
FIREFLY EQUIPMENT, LLC AND
STEVEN R. APOSHIAN,
Defendants-Appellees.
______________________
2013-1437
______________________
Appeal from the United States District Court for the
District of Montana in No. 13-CV-0036, Judge Sam E.
Haddon.
______________________
Decided: April 9, 2014
______________________
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.
2 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
RADER, Chief Judge.
The United States District Court for the District of
Montana denied plaintiff-appellant Trebro Manufactur-
ing, Inc.’s (Trebro) motion for a preliminary injunction
against defendants-appellees FireFly Equipment, LLC
and Steven R. Aposhian (collectively, FireFly) for in-
fringement 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.
I.
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. Tre-
bro also simultaneously granted Brouwer Turf Inc. (an
affiliate of Ontario) a fully paid-up, royalty-free nonexclu-
sive 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 assign-
ment. See J.A. 729.
On March 14, 2013, Trebro sued FireFly for infringe-
ment 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 mech-
anisms to stack them on a pallet. FireFly’s accused
product is a sod harvester called the ProSlab 150. Order
at *1. Trebro also sells sod harvesters, including one
called the SC2010 Slab. J.A. 763.
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 3
The ’638 patent was filed June 28, 2012, issued De-
cember 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 memo-
randum 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 convey-
or 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 car-
rier is adapted to release said sod piece at
said second position,
4 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
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 embod-
iment 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.
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 5
Claim 10, which depends from claims 1 and 9, explic-
itly 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 carrier, thereby vertically
moving said horizontal conveyor.
’638 patent col. 25 l. 5–col. 26 l. 3 (emphasis added).
While the preliminary injunction motion was pending,
FireFly requested ex parte reexamination of the ’638
patent. It based the request primarily on two patents
invented by the same inventive entity (Brouwer and
Milwain)—U.S. Patent Nos. 7,407,362 (’362 patent),
published January 6, 2005, and 6,779,610 (’610 patent),
published April 1, 2004. J.A. 111–12. After ordering
reexamination, the U.S. Patent and Trademark Office
(PTO) terminated the proceeding because neither of the
patents “qualify as prior art because [they are] not con-
sidered as being [invented] by ‘others’ when considering
35 U.S.C. §[§ ]102(a) or (e). . . . and because [they were
each published] within the 1 year grace period . . . afford-
ed under § 102(b).” ECF No. 38 at 8.
II.
The district court held a preliminary injunction hear-
ing on April 11, 2013. Order at *1. At the hearing, Tre-
bro’s president, Steven Tvetene, testified, as did FireFly’s
owner, Steven Aposhian. Mr. Tvetene testified about
several sod harvesters that are, or were, on the market.
In response to questioning about whether any such sod
harvesters exhibited the feature of a horizontal conveyor
that moves vertically, he testified that two such sod
harvesters—the Kesmac Slabmatic 3000 and 1500—did.
6 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
J.A. 747. He also testified that neither of these products
entered the market until 2006 or later. Id.
Mr. Tvetene further testified that the sod harvester
market is very small. He stated that the only competitors
in this market are Trebro, FireFly, and Mr. Brouwer’s
company (a licensee to the ’638 patent). J.A. 728–29. Mr.
Tvetene testified that Trebro sells roughly eight sod
harvesters per year at around $210,000 each. J.A. 731.
He stated that a lost sale is approximately $50,000 in lost
profit, which is roughly equal to the cost of one employee.
Id. Although he admitted that none of Trebro’s currently
available sod harvesters practice the ’638 patent, J.A.
729–30, Mr. Tvetene testified that Trebro’s SC2010 Slab
sod harvester directly competes for sales with FireFly’s
ProSlab 150, J.A. 763.
Mr. Tvetene testified that Trebro will lose market
share if FireFly continues to sell its allegedly infringing
product. J.A. 733. He asserted that every sale of the
ProSlab 150 is a lost sale to Trebro. J.A. 731, 734. He
further stated that the lost market share is “[p]robably
not” recoupable. J.A. 733. Mr. Tvetene also testified that
Trebro will lose customers. For example, FireFly’s first
sale of its ProSlab 150 was to a Trebro customer. J.A.
731–32. He also testified that “once a farmer buys a sod
harvester,” the farmer will not need “to replace it for
many years in the future.” J.A. 733. Finally, Mr. Tvetene
testified that Trebro “will have to lay people off” in the
absence of an injunction. J.A. 734, 736–38. Trebro is a
small company with eighteen employees. J.A. 734.
FireFly’s owner, Mr. Aposhian, testified that the
ProSlab 150 does not infringe claim 1 of the ’638 patent.
Specifically, he stated that it does not meet the last
limitation requiring vertical movement of the horizontal
conveyor. Instead, according to Mr. Aposhian, the hori-
zontal conveyor belt merely “changes shape.” J.A. 777–
79. He did testify, though, that with this shape change,
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 7
“[t]here’s an element of up” with respect to lifting a sod
piece for the sod carrier to receive it. J.A. 791.
Mr. Aposhian testified that FireFly entered the sod
harvester sales market to meet the need for an improved
sod harvester other than those currently available. See
J.A. 769–70. Mr. Aposhian testified that, in addition to
the shape change of the horizontal conveyor belt, the
ProSlab 150 has other beneficial features. These include
its weight balance (because it is lighter), its “electric
stacker” (which stacks sod pieces higher), and its “pickup
mechanism” (which picks up sod pieces faster). J.A. 770–
76.
Mr. Aposhian testified that he formed FireFly in Jan-
uary 2010. J.A. 769. Until FireFly made the ProSlab 150
commercially available, its primary business was selling
replacement parts, approximately 80 percent of which
was for Trebro machines. J.A. 794–95; see also J.A. 769–
70. In addition to the one ProSlab 150 already sold at the
time of the injunction hearing, Mr. Aposhian testified that
FireFly had “pre-sold” six more. J.A. 793–94. Finally, he
testified that an injunction against FireFly would put it
out of business. J.A. 789.
The district court denied Trebro’s preliminary injunc-
tion motion the day before a “major trade show for the sod
harvester industry.” Order at *1. The court found no
substantial likelihood of success on the merits for failing
to meet the “horizontal conveyor [] moveable in a vertical
direction” limitation. Id. at *3. The court stated that “the
ProSlab 150 does not raise the horizontal bed frame, as is
required by the ’638 patent.” Id. Rather, the ProSlab
150’s “belt changes shape to effect the lifting of the sod
slab, [so] there is no need for the entire frame and drive
mechanisms to move.” Id.
The district court also found a substantial question as
to validity, stating that “[t]here is a controversy that the
feature of raising the horizontal conveyor towards the sod
8 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
carrier was not a novel or non-obvious feature.” Id. at *4.
The court stated that “[t]his feature was known in the sod
harvesting industry, and was also known by the inventors
and assignee.” Id. As support for this finding, the district
court stated that “[t]he testimony of Gregg Tvetene estab-
lishes that several sod harvesters built in the past have
the feature of raising the horizontal conveyor . . . . Claim 1
is not novel or non-obvious.” Id. The court also pointed to
FireFly’s reexamination request, asserting that validity
“is a question best left to the [PTO], but the Court does
question the validity of the ’638 Patent.” Id.
Finally, the district court found no irreparable harm.
The district court dismissed Trebro’s evidence as specula-
tive. Id. at *3. The court asserted that “Gregg Tvetene
was not able to testify that Trebro has suffered actual
harm, but he did state that loss of a sale of a sod harvest-
er will result in the loss of a $50,000 gross profit, which
could result in employees being laid off.” Id. The district
court dismissed the evidence of “alleged lost customers
and theoretical loss of market share” as “purely monetary
relief” because they can be “compensated through an
award of lost profits or a reasonable royalty.” Id. at 4.
Trebro filed an interlocutory appeal to this court,
seeking review of the preliminary injunction denial.
III.
“A plaintiff seeking a preliminary injunction must es-
tablish that he is likely to succeed on the merits, that he
is likely to suffer irreparable harm in the absence of
preliminary relief, that the balance of equities tips in his
favor, and that an injunction is in the public interest.”
Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20
(2009). An accused infringer can defeat a showing of
likelihood of success on the merits by demonstrating a
substantial question of validity or infringement. See Aria
Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296, 1304
(Fed. Cir. 2013). A preliminary injunction is “an extraor-
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 9
dinary remedy that may only be awarded upon a clear
showing that the plaintiff is entitled to such relief.”
Winter, 555 U.S. at 22.
“The grant, denial, or modification of a preliminary in-
junction . . . is not unique to patent law, so this court
applies the law of the regional circuit when reviewing and
interpreting such a decision.” Aevoe Corp. v. AE Tech Co.,
727 F.3d 1375, 1381 (Fed. Cir. 2013). However, “the
Federal Circuit has itself built a body of precedent apply-
ing the[] general [preliminary injunction] considerations
to a large number of factually variant patent cases, and []
give[s] dominant effect to Federal Circuit precedent
insofar as it reflects considerations specific to patent
issues.” Mikohn Gaming Corp. v. Acres Gaming, Inc., 165
F.3d 891, 894 (Fed. Cir. 1998).
The Ninth Circuit “review[s] the district court’s grant
of a preliminary injunction for abuse of discretion.” Valle
del Sol Inc. v. Whiting, 732 F.3d 1006, 1014 (9th Cir.
2013). “In reviewing the denial of a preliminary injunc-
tion, [the Ninth Circuit] determine[s] whether the district
court abused its discretion in applying the law or whether
it clearly erred in formulating its findings of fact.” Fund
for Animals, Inc. v. Lujan, 962 F.2d 1391, 1400 (9th Cir.
1992). “A court abuses it discretion when it applies an
incorrect legal rule or relies upon ‘a factual finding that
[is] illogical, implausible, or without support in inference
that may be drawn from the record.’” Valle del Sol, 732
F.3d at 1014 (quoting United States v. Hinkson, 585 F.3d
1247, 1263 (9th Cir. 2009)). “[T]o reverse a denial of a
preliminary injunction, the appellant ‘must show not only
that one or more of the findings relied on by the district
court was clearly erroneous, but also that denial of the
injunction amounts to an abuse of the court’s discretion
upon reversal of the erroneous findings.’” Aria Diagnos-
tics, 726 F.3d at 1300 (quoting Reebok Int’l Ltd. v. J.
Baker, Inc., 32 F.3d 1552, 1555 (Fed. Cir. 1994)).
10 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
Because a plaintiff must prove each element of the
preliminary injunction test to prevail at the district court,
Trebro’s appeal can only succeed here if this court revers-
es the district court’s ruling in its entirety. This court
concludes that the district court erred in determining that
Trebro failed to prove a likelihood that FireFly infringes
the ’638 patent, that FireFly raised a substantial question
of the ’638 patent’s validity, and that Trebro failed to
prove a likelihood of irreparable harm. Accordingly, the
district court abused its discretion in denying Trebro’s
motion for preliminary injunction. Each issue is dis-
cussed in turn below.
IV.
To prove a likelihood of success on the merits, a pa-
tentee must prove that success in establishing infringe-
ment is “more likely than not.” Revision Military, Inc. v.
Balboa Mfg. Co., 700 F.3d 524, 525–26 (Fed. Cir. 2012).
To prove an accused product literally infringes the patent
in suit, the product must contain each and every limita-
tion of the asserted claim(s). See, e.g., Cheese Sys., Inc. v.
Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341,
1348 (Fed. Cir. 2013). Here, Trebro has shown that the
ProSlab 150 likely infringes the ’638 patent.
The parties’ infringement dispute focuses on whether
the ProSlab 150 practices the last limitation of claim 1:
“wherein said horizontal conveyor is moveable in a verti-
cal direction toward said sod carrier.” The district court
did not engage in explicit claim construction, but never-
theless held that “rais[ing] the horizontal bed frame . . . is
required by the ’638 Patent.” Because the ProSlab 150
does not raise a horizontal bed frame, the district court
consequently found no likelihood of infringement.
The district court erred in construing claim 1 to re-
quire a “bed frame.” First, nothing in the language of
claim 1 mentions or implies that a “bed frame” must be
part of, or otherwise attached to, the claimed “horizontal
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 11
conveyor.” See, e.g., Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he claims them-
selves provide substantial guidance as to the meaning of
particular claim terms.”). Second, imposing the use of a
bed frame in claim 1 improperly imports a limitation into
the claim from a preferred embodiment. See, e.g., id. at
1323 (noting courts must “avoid the danger of reading
limitations from the specification into the claim”). The
specification describes as one embodiment lifting the
horizontal conveyor by lifting the bed frame (to which the
conveyor is attached) via piston and cylinder mechanisms.
See ’638 patent col. 10 l. 18–col. 11 l. 5, Fig. 1. This
description does not disclaim or otherwise limit other
ways of raising the horizontal conveyor. See Phillips,
415 F.3d at 1325 (holding claimed “baffles” were not
limited to structures disclosed in a preferred embodi-
ment). Moreover, the specification does not even suggest
that the term “horizontal conveyor” necessarily also refers
to a “bed frame” to which it is attached. Therefore, alt-
hough attached to the bed frame, the horizontal conveyor
may be lifted without implicating the bed frame at all.
Finally, and convincingly, claim 10 (which depends
from claims 1 and 9) is explicitly limited to the “bed
frame” embodiment envisioned by the district court.
Namely, claim 10 specifies “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 carrier, thereby vertically moving said horizontal
conveyor.” To read the bed frame limitation from claim
10 into claim 1 (even though claim 10 also includes mov-
ing the bed frame “away from” the sod carrier) renders
the term redundant and offends principles of claim differ-
entiation. See, e.g., Phillips, 415 F.3d at 1314–15 (“[T]he
presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation
in question is not present in the independent claim.”
12 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
(citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
910 (Fed. Cir. 2004))).
The district court also clearly erred in finding that the
ProSlab 150’s horizontal conveyer is not “moveable in a
vertical direction toward [its] sod carrier.” The record
shows otherwise. FireFly is correct to state that the
horizontal conveyor belt “changes shape” to move the sod
piece toward the sod carrier. See Appellee’s Br. 12; J.A.
778–79. However, it only changes shape because it is a
part of the horizontal conveyor moving vertically toward
the sod carrier.
The screen shots below from a video of the ProSlab
150 in action show this vertical movement:
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 13
J.A. 671 (screen shots from video at 1:27 and 1:28).
The first picture shows the horizontal conveyor level
at Time 1 with a sod piece on it. The second picture
shows the conveyor vertically raised at Time 2 to present
the sod piece to the sod carrier. Even Mr. Aposhian
testified that “[t]here’s an element of up” in moving the
sod piece toward the sod carrier. J.A. 791.
14 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
On this record, therefore, Trebro has established that
it is “more likely than not” to succeed on infringement.
The district court abused its discretion in determining
otherwise. That certain components of the ProSlab 150
involved in raising the sod may not move vertically does
not defeat the likelihood of infringement. The only basis
on which the district court found no likelihood of success
was the erroneous requirement that a bed frame be
moved vertically. Absent an explicit claim construction
favorable to FireFly (which, of course, does not include a
“bed frame”), this court holds that the district court erred.
This error of law in claim construction underlies, in part,
the district court’s abuse of discretion.
V.
Even if a patentee shows the likelihood of proving in-
fringement, the accused infringer can defeat the likeli-
hood of success on the merits by raising a substantial
question as to the validity of the patent in suit. Aria
Diagnostics, 726 F.3d at 1304. A claim is anticipated if a
single prior art reference discloses each and every limita-
tion claimed. Old Reliable Wholesale, Inc. v. Cornell
Corp., 635 F.3d 539, 544–45 (Fed. Cir. 2011). A claim is
obvious in light of the prior art “if the differences between
the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have
been obvious at the time the invention was made to a
person having ordinary skill in the art.” 35 U.S.C.
§ 103(a) (pre-America Invents Act). Obviousness is a legal
conclusion based on underlying factual determinations.
In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
These factual determinations include the scope and
content of the prior art, the differences between the prior
art and the claims, the level of ordinary skill in the art,
and any objective indicia of nonobviousness. Graham v.
John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966).
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 15
Here, the district court clearly erred in finding a sub-
stantial question as to the ’638 patent’s validity. First,
this court assumes that the district court’s unconstrained
statement that “Claim 1 is not novel or non-obvious” must
have been a misstatement. The district court’s brief
discussion of invalidity considered only one feature of the
patent—the lifting of the horizontal conveyor. See Order
at *4. This court appreciates the short timeframe for
consideration of a preliminary injunction motion. Howev-
er, the district court’s analysis in this case did not ade-
quately support an ultimate conclusion that claim 1 was
anticipated or obvious.
Second, even the district court’s conclusion that the
vertically-moving horizontal conveyor “was not a novel or
non-obvious feature” is clearly erroneous. See id. The
district court based this conclusion solely on Mr. Tvetene’s
testimony about other sod harvesters that had been on
the market—but without regard to the ’638 patent’s
priority date. Mr. Tvetene testified undisputedly that the
only two sod harvesters having a vertical-moving horizon-
tal conveyor were not on the market until 2006 or later.
J.A. 747. Neither party challenges that the ’638 patent’s
priority dates back, at least, to the February 2005 provi-
sional application. Thus, these later-sold sod harvesters
(the Kesmac Slabmatic 3000 and 1500) cannot be consid-
ered prior art. This court need not consider at this time
whether Trebro has proven priority to November 2004
based on the Brouwer affidavit and the purportedly
corroborating attorney memorandum.
Finally, the parties on appeal initially heavily disput-
ed the scope and content of two prior patents invented by
the same inventors of the ’638 patent, Brouwer and
Milwain—the ’362 and ’610 patents. However, as the
PTO recognized after initially granting ex parte reexami-
nation based on these patents, neither reference is prior
art. Both patents have the same inventive entity as the
’638 patent and thus cannot qualify as prior art under
16 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
(previous) 35 U.S.C. § 102(a) or § 102(e). See, e.g., In re
Katz, 687 F.2d 450, 454 (CCPA 1982). And both patents
emerged less than a year prior to February 2005 and thus
cannot qualify as prior art under the version of § 102(b) in
effect for this case.
Accordingly, before this court, the record does not con-
tain a single prior art reference that raises a substantial
question as to the ’638 patent’s validity. Without even a
reference to call validity into question, the district court
abused its discretion in concluding there was no likelihood
of success on the merits on the basis of validity.
VI.
The district court also abused its discretion in deter-
mining that Trebro did not show a likelihood of irrepara-
ble harm. The district court clearly erred in finding as
speculative the harm Trebro is likely to suffer if its direct
competitor is able to sell an infringing product in the
small, niche sod harvester market. The district court
stated that “Gregg Tvetene was not able to testify that
Trebro has suffered actual harm, but he did state that
loss of a sale of a sod harvester will result in the loss of a
$50,000 gross profit, which could result in employees
being laid off.” Order at *3. Further, the district court
committed legal error by giving no weight to Trebro’s
evidence of likely loss of market share and customers. Id.
at *4. The district court claimed instead that “purely
monetary relief” would suffice because Trebro can be
“compensated through an award of lost profits or a rea-
sonable royalty.” Id.
First, the uncontroverted testimony of Mr. Tvetene
showed that harm to Trebro is not speculative. The sod
harvester market at issue in this case is a tiny market
with only three players—Trebro, FireFly, and Mr.
Brouwer’s company (a licensee of the ’638 patent).
J.A. 728–29. Trebro sells only roughly eight sod harvest-
ers per year. J.A. 731. The opportunities to attract
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 17
customers and make sales are thus scarce in this tight
market. FireFly is a new entrant on the market of sod
harvester sales. And every sale to FireFly is essentially a
lost sale to Trebro. See J.A. 731. This lost sale also
translates into a lost customer: “[O]nce a farmer buys a
sod harvester, they’re not going to replace it for many
years in the future.” J.A. 733. Moreover a single lost sale
is a sizeable percentage of the yearly market in this area.
At the time of the hearing, FireFly had already sold
one ProSlab 150 to a customer who had previously pur-
chased a Trebro sod harvester. J.A. 731–32. And FireFly
had already “pre-sold” six sod harvesters. J.A. 793–94.
Given the realities of this business, the record shows that
an infringing product in this market inflicts a real non-
speculative harm on Trebro.
Second, Trebro is very likely to lose significant market
share as well as customers. See J.A. 733. The district
court’s blanket dismissal of evidence showing likely loss of
market share and loss of access to customers was an error
of law. This court has often explained that such factors
are pertinent to the irreparable harm inquiry. See Aria
Diagnostics, 726 F.3d at 1304 (Fed. Cir. 2013) (prelimi-
nary injunction); Celsis in Vitro, Inc. v. CellzDirect, Inc.,
664 F.3d 922, 930 (Fed. Cir. 2012) (preliminary injunc-
tion); see also Broadcom Corp. v. Emulex Corp., 732 F.3d
1325, 1336–37 (Fed. Cir. 2013) (permanent injunction);
Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d
1336, 1344–45 (Fed. Cir. 2013) (permanent injunction);
Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142,
1152–54 (Fed. Cir. 2011) (permanent injunction).
Even though Trebro may be able to estimate the price
of sod harvesters, how much profit it makes per sod
harvester, and how many sod harvester sales it makes
(and thus may lose) per year, that does not automatically
mean money damages are adequate. Rather, the record
shows that a loss of market share and customers is a loss
18 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
that Trebro is not likely to recover. Additionally, Trebro
asserted that it will have to lay people off in a company
with eighteen employees worldwide due to FireFly’s
alleged infringement. This record evidence further sup-
ports the conclusion that money damages are likely
inadequate in this market.
Finally, on this record, the fact that Trebro does not
presently practice the patent does not detract from its
likely irreparable harm. To the contrary, Trebro and
FireFly are direct competitors selling competing products
in this market. Thus, the record strongly shows a proba-
bility for irreparable harm. See Order at *1 (“FireFly is a
direct competitor of Trebro.”); J.A. 728–29, 754, 763
(testifying that SC2010 Slab is “the device that competes
with FireFly”). In multiple instances, this court has held
that a party that does not practice the asserted patent
may still receive an injunction when it sells a competing
product. Presidio Components, Inc. v. Am. Tech. Ceramics
Corp., 702 F.3d 1351, 1363 (Fed. Cir. 2012) (overturning
denial of permanent injunction despite non-practicing
product, noting “[d]irect competition in the same market
is certainly one factor suggesting strongly the potential
for irreparable harm”); Broadcom Corp. v. Qualcomm Inc.,
543 F.3d 683, 702–03 (Fed. Cir. 2008) (affirming perma-
nent injunction where Broadcom sold indirectly compet-
ing, non-practicing product, supporting showing of
irreparable harm); cf. High Tech Med. Instrumentation,
Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1556–57
(Fed. Cir. 1995) (reversing grant of preliminary injunction
due to “lack of commercial activity by the patentee,” but
noting “a patentee’s failure to practice an invention does
not necessarily defeat the patentee’s claim of irreparable
harm”).
Accordingly, the district court abused its discretion in
denying the preliminary injunction based on a record that
strongly suggests both a likelihood of success on the
merits and a likelihood of irreparable harm.
TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC 19
VII.
Because it found the first two elements of the Winter
test for preliminary injunctions unmet, the district court
did not consider the final two elements. Rather than
deciding these issues in the first instance on appeal—
whether the “balance of equities tips in [Trebro’s] favor,
and [whether] an injunction is in the public interest”—
this court vacates the order and remands the case to the
district court for further proceedings in light of this opin-
ion. See, e.g., Jack Guttman, Inc. v. Kopykake Enters.,
Inc., 302 F.3d 1352, 1363 (Fed. Cir. 2002) (“[T]he appro-
priate remedy is not to reverse with instructions to enter
the injunction, as Guttman asks, but rather to vacate the
trial court’s previous order and remand for further pro-
ceedings in light of this opinion.”).
To guide the district court’s analysis of the final two
Winter factors, this court makes the following observa-
tions of the record. With respect to the balance of equi-
ties, the evidence suggests that Trebro is an established
company in the sod harvester market. Trebro is losing
business to a new entrant selling a likely-infringing
product. The evidence also suggests that Trebro’s main
business is, and has been, selling sod harvesters. The
evidence further suggests that FireFly’s primary business
has been (until recently) selling replacement parts—
primarily for Trebro’s sod harvesters. J.A. 769–70, 794–
95. Each party presented testimony that an injunction, or
lack thereof, will drastically harm its business. See J.A.
734, 737–38, 789.
The evidence also demonstrates that Trebro recently
acquired the patent from Mr. Brouwer’s company and
then filed suit almost immediately. According to Trebro,
the previous owner was having difficulties meeting its
financial obligations to Trebro. J.A. 729. FireFly argues
the inventors filed for the ’638 patent in 2012 only after
seeing the ProSlab 150 in action. Appellee’s Br. 3–4, 5
20 TREBRO MANUFACTURING, INC. v. FIREFLY EQUIPMENT, LLC
n.1. Yet, the February 2005 provisional application
already disclosed the idea of a vertical-moving horizontal
conveyor (attached to a bedframe). See J.A. 29–30.
Additionally, the evidence that FireFly is the only non-
licensed competitor in the market suggests that this
patent will have significantly less value if Trebro cannot
use it to exclude an infringing product from the market.
J.A. 739.
Finally, as to the public interest, there is scant evi-
dence on this record showing that an injunction would
harm the public. The patent deals with sod harvesting
and covers a small market that may not have a broad-
reaching effect.
VIII.
Because the district court abused its discretion in
denying a preliminary injunction, and because the district
court did not consider the final two Winter factors, this
court vacates the district court’s order and remands the
case for further proceedings consistent with this opinion.
VACATED AND REMANDED