DCT

1:17-cv-01700

H & M Gopher Control v. Benchmark Pest Control Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-01700, E.D. Cal., 12/18/2017
  • Venue Allegations: Venue is alleged to be proper as Defendants reside, conduct business, and committed acts of infringement within the Eastern District of California.
  • Core Dispute: Plaintiff alleges that Defendant’s gopher control systems infringe a patent related to an apparatus and method for controlling rodents using pressurized exhaust gases.
  • Technical Context: The technology involves systems that capture, cool, compress, and inject exhaust from an internal combustion engine into underground burrows to exterminate rodents.
  • Key Procedural History: The complaint notes that on October 12, 2017, Plaintiff sent a cease and desist letter to Defendants, demanding they stop using the allegedly infringing products and associated trademarks. On October 23, 2017, Defendants' counsel allegedly responded, denying infringement and asserting the patent is unenforceable.

Case Timeline

Date Event
2005-01-01 Plaintiff develops "H & M Gopher Control" tradename (approx.)
2006-06-01 U.S. Patent No. 7,581,349 Priority Date
2007-01-01 Plaintiff begins using "PERC" trademark (approx.)
2009-09-01 U.S. Patent No. 7,581,349 Issued
2015-11-01 Defendant Ozanich contacts Plaintiff to purchase a unit (approx.)
2015-12-01 Defendant Ozanich cancels order (approx.)
2016-07-01 Defendant Ozanich purchases a used unit from a third party (approx.)
2016-10-14 Defendant Benchmark invoices a customer for "2 PERC SYSTEMS"
2017-02-01 Defendant Benchmark uploads photos of accused products (approx.)
2017-08-01 Plaintiff is informed Defendants manufactured copied units (approx.)
2017-10-12 Plaintiff sends cease and desist letter to Defendants
2017-10-23 Defendants' counsel responds to letter, denying infringement
2017-12-18 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Patent No. 7,581,349, “Method and Apparatus for Using Pressurized Exhaust Gases to Control Rodents,” issued September 1, 2009.

The Invention Explained

  • Problem Addressed: The patent’s background section describes prior art methods for rodent control using non-pressurized engine exhaust as “labor intensive and ineffective,” resulting in “very low kill rates” because rodents have time to escape. (’349 Patent, col. 1:36-40). Additionally, it notes that restricting an engine’s exhaust flow, a potential consequence of such systems, can damage the engine. (’349 Patent, col. 5:27-29).
  • The Patented Solution: The invention is an apparatus that diverts a portion of the exhaust from an internal combustion engine, cools it, compresses it in a storage tank, and then allows an operator to inject the stored, pressurized gas into rodent burrows. (’349 Patent, col. 2:52-62). This process is designed to fill the burrows with a high concentration of toxic gas "within just a few seconds," overwhelming the pest before it can react and escape. (’349 Patent, Abstract).
  • Technical Importance: The use of pressurization allows for a "substantially higher volume of poisonous exhaust to be delivered into the burrow," creating a more rapid and effective fumigation compared to low-pressure prior art systems. (’349 Patent, col. 5:51-54).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶44).
  • The essential elements of Claim 1 are:
    • Means for compressing and injecting exhaust gases from an internal combustion engine into rodent burrows.
    • The means comprises several components:
      • An exhaust supply manifold to divert a portion of the exhaust "without restricting an exhaust flow from said engine."
      • A free-flow manifold.
      • A set of cooling coils.
      • A compressor.
      • A pressure tank for storage.
      • A flexible air hose for controlled release.
      • An exhaust applicator for injection.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "gopher control systems" and "replica model 412 units" allegedly manufactured, used, and sold by Defendants. (Compl. ¶¶ 34, 43-44).

Functionality and Market Context

  • The complaint alleges that Defendants' accused products are "nearly identical replicas" of Plaintiff's "H&M 412 product line," which itself embodies the patented technology. (Compl. ¶43). The complaint alleges that Defendants have at least seven such units in service and are using them to offer rodent abatement services in competition with Plaintiff. (Compl. ¶¶39, 51). As visual evidence, the complaint provides a screenshot from Defendant Benchmark's Facebook page, which displays several trailer-mounted systems described as "Perc Systems! Taking care of Gophers!" (Compl. ¶36; Ex. 5).

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,581,349 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
means for compressing exhaust gases from an internal combustion engine and for injecting said gases under pressure into underground burrows of said rodents... The accused "replica model 412 units" are alleged to be "nearly identical replicas" of Plaintiff's commercial embodiment and to embody the claimed invention. ¶43, ¶44 col. 6:2-6
an exhaust supply manifold for diverting a portion of exhaust gas from said internal combustion engine without restricting an exhaust flow from said engine; wherein a stream of exhaust gas is drawn...based on demand... The accused units are alleged to contain the claimed manifold structure for diverting exhaust gas without impeding engine performance. ¶43, ¶44 col. 6:17-24
a free-flow manifold for receiving said diverted exhaust gas; The accused units are alleged to contain a free-flow manifold. ¶43, ¶44 col. 6:25-26
a set of cooling coils for receiving said exhaust gas from said manifold; The accused units are alleged to contain cooling coils to reduce the temperature of the exhaust gas before compression. ¶43, ¶44 col. 6:27-28
a compressor, wherein cooled exhaust gas is routed by said cooling coils to an exhaust compression intake manifold that is attached to an intake port of said compressor; The accused units are alleged to contain a compressor and associated manifolds to pressurize the cooled exhaust gas. ¶43, ¶44 col. 6:29-33
a pressure tank for storing compressed exhaust gas from said compressor; The accused units are alleged to contain a pressure tank to store the compressed gas for on-demand use. ¶43, ¶44 col. 6:34-35
a flexible air hose, wherein exhaust gas is controllably released out of the pressure tank...; and an exhaust applicator for injecting pressurized exhaust gas into said rodent burrows. The accused units are alleged to contain a hose and applicator assembly for injecting the stored, pressurized gas into the ground. ¶43, ¶44 col. 6:36-41
  • Identified Points of Contention:
    • Scope Questions: Claim 1 is drafted using "means-plus-function" language under 35 U.S.C. § 112(f). The scope of these claim elements is therefore limited to the specific structures disclosed in the patent's specification (e.g., the specific compressor, manifold, and tank arrangement shown in Fig. 1) and their structural equivalents. A central question for the court will be whether the components of the accused "replica" systems are structurally equivalent to those disclosed in the ’349 Patent.
    • Technical Questions: The complaint's infringement theory relies on the allegation that the accused products are "nearly identical replicas." (Compl. ¶43). A key factual question will be whether discovery and technical inspection confirm this allegation. For example, does the accused system's method for diverting exhaust function "without restricting an exhaust flow from said engine," as required by the claim and described as a key advantage of the invention? (’349 Patent, col. 6:19-20). The complaint's photographic evidence shows the external appearance of the accused systems but does not detail their internal construction or operation. (Compl. Ex. 5).

V. Key Claim Terms for Construction

  • The Term: "means for compressing exhaust gases...and for injecting said gases"
  • Context and Importance: This is a means-plus-function limitation that covers the core functionality of the apparatus. Its construction will be critical, as infringement will require a showing that the accused device performs the identical functions of compressing and injecting using structures that are the same as, or equivalent to, those disclosed in the patent. Practitioners may focus on this term because the entire infringement analysis for the apparatus hinges on the structural comparison between the accused device and the specific components disclosed in the patent's specification corresponding to this means.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The function itself—"compressing" and "injecting"—is described at a high level.
    • Evidence for a Narrower Interpretation: The specification discloses a specific corresponding structure for performing this function: an assembly comprising a compressor (10), a compressed exhaust storage tank (12), a flexible air hose (16), and an exhaust applicator (4), as illustrated in Figure 1 and described in the detailed description. (’349 Patent, col. 3:9-18, Fig. 1). The scope of the claim will be limited to this disclosed structural arrangement and its equivalents.
  • The Term: "exhaust supply manifold for diverting a portion of exhaust gas... without restricting an exhaust flow from said engine"
  • Context and Importance: This term addresses a stated objective of the invention: to avoid damaging the engine by impeding its exhaust. The phrase "without restricting" introduces a functional requirement into the structural limitation. The infringement analysis will likely turn on whether the accused device's manifold is not only structurally similar but also operates in a manner that avoids restricting engine exhaust flow.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that any T-junction that splits the exhaust path meets the literal words of the claim.
    • Evidence for a Narrower Interpretation: The patent states that the invention "does not restrict the exhaust flow in any way because the provision of the exhaust manifold allows normal exhaust from the engine." (’349 Patent, col. 5:29-32). This language suggests that the "without restricting" limitation is a critical functional aspect, potentially narrowing the scope to only those manifold designs that can be proven to leave the primary exhaust path effectively unimpeded.

VI. Other Allegations

  • Indirect Infringement: The complaint focuses on direct infringement by Defendants for "making and using" the accused systems. (Compl. ¶44). It does not contain a separate count for indirect infringement.
  • Willful Infringement: The complaint alleges that Defendants' infringement has been "willful and deliberate." (Compl. ¶48). This allegation is based on alleged pre-suit knowledge, including Defendants' history of interacting with Plaintiff, purchasing a used H&M unit, attempting to source parts to build a new unit, and receiving a cease and desist letter that identified the patent-in-suit. (Compl. ¶¶ 29-33, 37, 45).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim scope under means-plus-function: Given that Claim 1 is governed by 35 U.S.C. § 112(f), the central legal question will be whether the specific components within Defendants' "replica" systems are structurally equivalent to the compressor, tank, and manifold assembly expressly disclosed in the '349 patent's specification and figures.
  • A key evidentiary question will be one of technical identity: The complaint's case is premised on the accused systems being "nearly identical replicas." The outcome may depend on whether discovery confirms this, or if it instead reveals material structural or functional differences—such as in the cooling system or the exhaust-diversion manifold—that place the accused products outside the scope of the patent's claims.