IP Law Daily, PATENT—W.D. Va.: Court denies motion to dismiss claims alleging direct infringement of patents for bird removal method, while granting in part motion as to indirect infringement, (Apr 6, 2023)

By Robert Margolis, J.D.

Photos attached to complaint permitted inference that defendant performed all steps of patented method.

Safe Haven Wildlife Removal and Property Management Experts, LLC, has stated claims for direct infringement of three method patents for a bird removal system against competitor Meridian Wildlife Services, Inc., the federal district court in Roanoke, Virginia has held. The court denied Meridian’s motion to dismiss as to the direct infringement claims, though it granted the motion in part as to indirect infringement claims, finding allegations of contributory infringement to be lacking as to all three patents and allegations of induced infringement lacking as to one of them (Safe Haven Wildlife Removal and Property Management Experts, LLC v. Meridian Wildlife Services, LLC, March 31, 2023, Dillon, E.).

Bird removal system. Safe Haven owns three U.S. Patents for a method of bird removal that, in general, involves a perimeter net system, a trapping net system, and a flushing device that channels birds through the perimeter net system into the trapping net. These are U.S. Patent No. 10,251,374 (the “’374 patent”), No. 10,729,108 (the “’108 patent”), and No. 11,064,683 (the “’683 patent”). The listed inventor of these patents is Derek Tolley, Safe Haven’s owner and president. Tolley previously worked as an independent contractor with Meridian, a competitor of Safe Haven.

Safe Haven’s complaint alleges that Meridian has infringed Safe Haven’s patents by using the methods described therein, having changed its system to use the “perimeter net” system after seeing the information in the patent filings. The complaint attaches several photos taken from Meridian’s social media page that Safe Haven contends show Meridian employees using Safe Haven’s patented methods. The complaint also asserts that Tolley and other employees witnessed Meridian workers using the patented system to catch a bird in a Lowe’s store and includes screen shots from a video that Tolley and the other employees took of that capture.

Safe Haven sued Meridian for direct infringement of each of the three above-described patents, and indirect infringement as well. Meridian moved to dismiss all claims.

Direct infringement. Because each of the patents-in-suit are directed to methods and/or systems, Safe Haven’s direct infringement claims require showing that all steps in those patents are performed by or attributable to Meridian. Safe Haven based its claims on the video at the Lowe’s store and the photos attached to the complaint. Meridian argued that the allegations were not sufficiently detailed, with the complaint alleging only that some “unspecified Meridian good or service allegedly meets the claims [of the patents-in-suit] in some unspecified way,” but not specifically alleging that Meridian followed all patented steps or used all patented components. The court disagreed with Meridian. Viewing the photos and allegations collectively, the court found that the factual allegations were sufficient to support a reasonable inference that Meridian used the processes as set forth in the patents-in-suit.

As the court described, the photos show individuals dressed in Meridian shirts using (i) perimeter nets, (ii) a sack/bag at the end of a flushing device, (iii) a telescoping pole, (iv) hooks, a pulley system, and (v) a cleat and removable connector. All of these are described in the patents-in-suit. While Meridian contended that the photos don’t show how it used those components as claimed in the patents-in-suit, the court noted that the allegations described what Tolley and the employees saw while filming the video, which generally explained how Meridian captured the bird. Noting that a plaintiff need not prove its case in the complaint, and because all reasonable inferences must be drawn in Safe Haven’s favor, the allegations coupled with the photos sufficed to state claims for direct infringement of all three patents-in-suit.

Indirect infringement. Because indirect infringement, unlike direct infringement, requires knowledge of the patents allegedly infringed, the court first addressed that element. The court held that any claims of indirect infringement must be limited to acts committed on or after the date Meridian first learned of each patent.

Knowledge dates. A cease-and-desist letter Safe Haven sent to Meridian prior to filing suit referenced only the ’374 patent, so knowledge of that patent was not in question. But Safe Haven alleged only that Meridian “has known” of the ’108 and ’683 patents since the dates those patents issued. Finding those allegations as to those two patents to be conclusory, the court noted that the earliest Meridian could be said to have known of the ’108 patent’ is when the initial complaint in the lawsuit was filed (June 25, 2021). But at that time, the ’683 patent had not issued, and Safe Haven did not allege infringement of the ’683 patent until it filed its amended complaint in September of 2021. Thus, it could not base indirect infringement of the ’683 patent on any actions occurring prior to the filing of the amended complaint (the filing of a complaint can suffice to give a defendant knowledge of a patent, and since infringement is an ongoing offense that can continue after a complaint is filed, there may thus be liability for actions after a complaint is filed).

Induced infringement. Safe Haven alleged that Meridian knowingly induced others to infringe the patents-in-suit by providing instructions as to the patented methods to its employees and independent contractors, and then compensating them based on their work using the methods. The court found these allegations to be plausible as to the ’374 and ’108 patents, but not the ’683 patent, finding that the photos attached to the complaint support reasonable inferences that Meridian knowingly induced the others to use the patented methods. Because the photos necessarily depicted events occurring before the filing of the complaint, based on the timing issue described above, it could not be reasonably inferred that at the time of those incidents, Meridian knew of the ’683 patent and thus intended to induce its infringement. The court thus denied the motion to dismiss as to the ’374 and ’108 patents, and granted it, without prejudice, as to the ’683 patent.

Contributory infringement. As a contributory infringement claim requires allegations of a party selling or offering to sell a “material or apparatus” that is material to practicing a patented invention and has no substantial non-infringing uses, and Safe Haven’s complaint contained no allegation of any such “material or apparatus” meeting that criteria, other than conclusory allegations reciting the elements of the claim, the court granted the motion to dismiss as to all three patents. It also noted that the timing issue was further reason to grant dismissal as to the ’683 patent. All dismissals, again, were without prejudice.

The Case is No. 7:21-cv-00577-EKD.

Attorneys: Andrew L. Fitzgerald (Fitzgerald Hanna & Sullivan, PLLC) for Safe Haven Wildlife Removal and Property Management Experts, LLC. David W. Hearn (Sands Anderson, PC) for Meridian Wildlife Services, LLC, d/b/a Meridian Bird Removal, Inc.

Companies: Safe Haven Wildlife Removal and Property Management Experts, LLC; Meridian Wildlife Services, LLC, d/b/a Meridian Bird Removal, Inc.

Cases: Patent VirginiaNews