Oxygenator Water Technologies, Inc. v. Tennant Company

Background

Oxygenator Water Technologies owns three patents concerning flow-through oxygenators and methods for oxygenating flowing water: U.S. Patent Nos. RE45,415, RE47,092, and RE47,665. Tennant manufactures and sells commercial floor scrubbers equipped with electrolysis modules that, according to Tennant, help clean by creating microscopic bubbles in water without floor-cleaning chemicals. Oxygenator alleged that the modules use its patented technology.

Oxygenator’s amended complaint asserted direct and indirect infringement of the three patents, as well as willful infringement. It sought a judgment of infringement, damages, enhanced damages for willful infringement, a permanent injunction, costs, and attorneys’ fees. The complaint alleged that Tennant had information about Oxygenator’s patent family as early as 2007 and that the companies communicated about a possible license in 2010. Oxygenator sent Tennant a letter alleging infringement in September 2019 and later filed this lawsuit.

Motion to Dismiss

Tennant filed a partial motion under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint plausibly states a legal claim. Tennant sought dismissal of four categories of allegations and requested relief: direct-infringement allegations based on manufacturing and selling the accused products; indirect-infringement allegations predating formal notice in Counts 1 through 4; willful-infringement allegations and related requests for enhanced damages predating formal notice in Count 5; and the request for a permanent injunction.

Manufacturing and Sales Allegations

Tennant argued that manufacturing or selling a product cannot, by itself, directly infringe a patent claiming a method unless Tennant practiced every step of that method. The court agreed that merely manufacturing or selling the products would not necessarily require Tennant to perform every claimed step. But it held that this did not require dismissal because Oxygenator alleged that Tennant tested products during manufacturing and demonstrated them to potential customers during sales activities. Those allegations plausibly suggested that Tennant sometimes used the accused products in ways that practiced all the steps of the claimed methods.

Knowledge, Indirect Infringement, and Willfulness

Indirect infringement includes encouraging or contributing to another person’s direct infringement. Such claims require knowledge of the relevant patent, and willful-infringement claims and enhanced damages also require knowledge of the patent. The court explained that knowledge may be alleged generally, but a complaint must still provide facts supporting a plausible inference of knowledge rather than merely stating a conclusion.

The court found Oxygenator’s allegations sufficient. Oxygenator alleged that Tennant’s 2007 patent application referenced a parent patent related to the patents at issue. It also alleged that, during the companies’ 2010 licensing communications, Tennant’s general counsel and technology director received documents referring to Oxygenator’s patent family and the patent that later reissued into the patents at issue. The court concluded that these allegations plausibly supported Tennant’s knowledge before Oxygenator’s September 2019 notice letter, and, for the ’665 patent, before the lawsuit was filed. The court therefore did not dismiss the pre-notice or pre-suit indirect-infringement allegations, the willful-infringement allegation, or the related request for enhanced damages.

Permanent Injunction

Tennant argued that Oxygenator had not alleged facts supporting a permanent injunction, including facts addressing whether monetary damages would be inadequate. The court explained that a patent holder’s decision to license rather than commercialize its patents does not automatically prevent it from seeking an injunction. It also noted that courts are generally reluctant to eliminate a request for injunctive relief at the pleading stage when the underlying infringement claims remain in the case.

The court held that Oxygenator had alleged plausible infringement claims for which injunctive relief might be available. It therefore declined to dismiss the request for a permanent injunction.

Disposition

The court’s order states: “Defendant Tennant Company’s Motion to Dismiss [ECF No. 12] is DENIED.” Judge Eric C. Tostrud did not decide whether Tennant ultimately infringed, acted willfully, owed damages, or should be subject to an injunction; the order only allowed the challenged allegations and requested remedies to proceed past the pleading stage.