IP Law Daily, PATENT—N.D. Cal.: Preliminary injunction denied in buried asset software location dispute, (Jun 3, 2022)

By Kevin M. Finson, J.D.

A preliminary injunction was denied because the patentee could not show that it was likely to succeed on the merits or that it would suffer irreparable harm in the absence of an injunction.

A seller of software used for locating underground utility lines and pipes was not entitled to a preliminary injunction to prevent a competitor from infringing it patent, the federal district court in San Francisco has held. The company was unable to show likelihood of success on the merits or that it would suffer irreparable harm if a preliminary injunction were denied (UTTO Inc. v. Metrotech Corp., June 2, 2022, Orrick, W.).

UTTO, Inc. (UTTO) was the owner of U.S. Patent No. 9,086,441 (the ’441 patent), which claimed an electromagnetic locating device used in combination with software and pre-existing data to allow a user to locate buried assets such as water pipes, cables, or phone and other utility lines. UTTO alleged that a competitor, Metrotech Corporation (Metrotech) was infringing the …441 patent by sale of its RTK-Pro electromagnetic locator devices along with firmware providing what Metrotech referred to as the RTK-Pro Walk Back Feature. UTTO filed suit alleging patent infringement and unfair competition and shortly thereafter moved for a preliminary injunction. The court evaluated the traditional four factors for determining whether a preliminary injunction was warranted.

Likelihood of success on the merits. Metrotech argued that UTTO failed to show the accused product was likely to infringe the patent limitations related to generating a buffer zone from a group of buried data asset points because its product only allowed a user to walk back to a single point. The court held that the specification and patent claims supported Metrotech’s reading: they uniformly referred to creating a two-dimensional buffer zone from a collection of data points, instead of simply storing one point as the accused product did. Metrotech also raised a substantial question of patent validity because a related and very similar earlier patent had been ruled invalid as obvious in light of prior art. UTTO presented no evidence to contradict the invalidity claim. This factor weighed against an injunction.

Irreparable harm. UTTO argued that it suffered loss of market share and was forced to offer its products at a lower price to keep clients. While the court noted that loss of market share would, if proven, constitute irreparable harm, the evidence proffered did not show the purported loss of market share with any detail or explain why monetary damages would be insufficient to compensate for the reduced prices. This factor weighed against an injunction.

After finding that there was no likelihood of success on the merits or showing of irreparable harm, the court decided that the balance of equities and public interest could not overcome the first two factors and denied the request for a preliminary injunction.

The Case is No. 3:22-cv-01904-WHO.

Attorneys: James W. Denison (Cummins & White, LLP) for UTTO Inc. Jason T. Lao (Haynes and Boone, LLP) for Metrotech Corp. a/k/a Vivax-Metrotech.

Companies: UTTO Inc.; Metrotech Corp.

Cases: Patent CaliforniaNews