DCT
5:17-cv-00271
Ecolab USA Inc v. Terminix Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ecolab USA Inc. (Delaware)
- Defendant: Terminix Company Inc., et al. (Virginia & North Carolina)
- Plaintiff’s Counsel: MERCHANT & GOULD P.C.
- Case Identification: 0:17-cv-00205, D. Minn., 01/23/2017
- Venue Allegations: Venue is asserted based on Defendants having purchased the accused device, the "Hetta Portable Thermal Chamber," from a Minnesota-based corporation, and allegedly negotiating and consummating the transaction within the District of Minnesota.
- Core Dispute: Plaintiff alleges that Defendants' use of a portable thermal chamber in their pest control services infringes a patent related to systems and methods for killing pests with controlled heat.
- Technical Context: The technology concerns portable, enclosed heat treatment systems designed to eradicate pests like bed bugs from specific items, such as furniture, offering an alternative to chemical pesticides or whole-room heating.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendants a notice letter on October 12, 2016, identifying the patent and the alleged infringement. Following this notice, Defendants allegedly modified their website to remove the product's brand name but continued to offer the same services, a fact which may be relevant to the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2011-03-18 | U.S. Patent No. 9,226,489 Priority Date |
| 2016-01-05 | U.S. Patent No. 9,226,489 Issue Date |
| 2016-10-12 | Plaintiff sends notice letter to Defendants |
| 2017-01-23 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,226,489 - “HEAT SYSTEM FOR KILLING PESTS” (Issued Jan. 5, 2016)
The Invention Explained
- Problem Addressed: The patent seeks to solve problems with prior pest control methods, noting that some treatments require discarding expensive items like mattresses, rely on pesticides that may be restricted, or use inefficient whole-room heat treatments that can create "cold spots" where pests survive and harbor (’489 Patent, col. 1:19-33).
- The Patented Solution: The invention is a system and method for treating infested articles using a portable, flexible, and often inflatable enclosure connected to a heating system. A key aspect is the use of a programmable logic controller and at least one thermocouple to automatically manage the process, which involves gradually increasing the temperature inside the enclosure to a predetermined lethal level (e.g., 115° F.), holding it for a set time, and then controlling the cool-down phase to effectively kill pests without damaging the treated articles (’489 Patent, Abstract; col. 2:50-67). The specification describes a method where the controller increases a setpoint temperature "one degree every six minutes until [the target] is reached" (’489 Patent, col. 2:62-65).
- Technical Importance: This technology provides a targeted, automated, and portable method for eradicating all life stages of pests from specific items, thereby avoiding broad pesticide application or the inefficiencies and potential failures of whole-building heat treatments (’489 Patent, col. 2:50-54).
Key Claims at a Glance
- The complaint asserts independent claims 17 and 42, and dependent claims 18-32, 35-36, 38-40, and 42-44 (Compl. ¶¶11, 15).
- Independent claim 17, a method claim, includes the following essential elements:
- Placing an article inside an enclosure that comprises a floor, ceiling, walls made of a flexible material with a specified R-value, an external frame, and at least one window.
- Closing the enclosure.
- Increasing the interior temperature to at least 115° F. by blowing hot air from a heater.
- Maintaining the temperature at or above 115° F. for a predetermined period.
- The enclosure is constructed to be capable of treating items like furniture, mattresses, or box springs.
- The complaint reserves the right to assert additional claims, stating the infringement includes but is not limited to the listed claims (Compl. ¶11).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentality as the "Hetta Portable Thermal Chamber," which Defendants are alleged to use in providing bed bug remediation services (Compl. ¶11).
Functionality and Market Context
The complaint alleges the accused product is a "portable thermal chamber" used for bed bug heat treatments in homes (Compl. ¶¶11-12). Based on a screenshot from Defendants' website, the system is described as an "8' x 8' x 7' tall inflated 'heat tent'" made of "insulated canvas material" that "uses extreme heat to kill all life stages of bed bugs within six to eight hours" (Compl. ¶12). The screenshot, a visual from the defendant's website, depicts marketing text for "Bed Bug Heat Treatment" and lists features of the service (Compl. ¶12, p. 3). The system allegedly uses a "control box" to "monitor the temperature" and features "carefully controlled temperatures" (Compl. ¶12).
IV. Analysis of Infringement Allegations
’489 Patent Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (A) placing an article inside of an enclosure... wherein the enclosure is constructed to be capable of treating furniture, a mattress, a box spring... | Defendants are alleged to use the Hetta Portable Thermal Chamber to treat bed bug infestations in homes. The chamber is described as a "Large design ideal for bed springs, mattresses." | ¶¶11, 12 | col. 11:15-22 |
| the enclosure comprising: (i) a floor, a ceiling, and a plurality of walls... constructed of a flexible material having an R-value... | The accused instrumentality is described as an "inflated 'heat tent'" made of "insulated canvas material," which implies a flexible structure with thermal resistance (R-value). | ¶12 | col. 11:23-28 |
| (ii) an external frame... | The complaint does not provide specific factual allegations that the "Hetta Portable Thermal Chamber" has an external frame, but alleges infringement of Claim 17, which requires this element. | ¶¶11, 15 | col. 11:29-31 |
| (C) increasing a temperature of the interior space by blowing hot air from one or more heaters until the temperature is at least about 115° F. | The accused service allegedly "uses extreme heat" and features "Carefully controlled temperatures," monitored by a "control box," to kill bed bugs. | ¶12 | col. 11:39-44 |
| (D) maintaining the temperature of at least about 115° F. for a predetermined period of time... | The accused treatment is advertised as killing bed bugs "within six to eight hours of its implementation." | ¶12 | col. 11:45-47 |
Identified Points of Contention
- Evidentiary Questions: The complaint's allegations rely on marketing statements from the Defendants' website (Compl. ¶12). A primary point of contention will be whether the actual "Hetta Portable Thermal Chamber" and the Defendants' method of using it meet all the specific structural limitations recited in Claim 17. The complaint does not provide evidence for certain elements, such as the required "external frame" (Claim 17(A)(ii)), "at least one window" (Claim 17(A)(iii)), or the specific R-value of the material.
- Technical Questions: The complaint alleges infringement of a claim requiring a specific heating process, but provides no technical data on how the accused system operates. A key question will be whether the accused method involves "increasing a temperature... by blowing hot air" and maintaining it at or above the claimed "at least about 115° F." threshold, as required by the patent.
V. Key Claim Terms for Construction
- The Term: "external frame" (Claim 17(A)(ii))
- Context and Importance: This term is critical because the accused product is described as an "inflated 'heat tent'" (Compl. ¶12), which may not possess a structure that Defendants would characterize as a frame. The viability of the infringement allegation against this inflatable product may depend on the construction of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that a "structure, skeleton, or frame aids in preventing the formation of cold spots" and keeps the enclosure from collapsing (’489 Patent, col. 3:51-59). Plaintiff may argue that any external components that provide structural support and prevent collapse, even if not a full skeleton, meet this functional description.
- Evidence for a Narrower Interpretation: The specification provides more specific examples, describing the structure as a "plurality of bars located on the corners of the enclosure" or "a scaffolding or frame that attaches to the bottom, sides, and top of the enclosure" (’489 Patent, col. 3:62-67). Defendants may argue this language requires a distinct, rigid, multi-part skeleton, which an inflatable tent might lack.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on Defendants’ knowledge of the ’489 patent since at least October 12, 2016, the date they allegedly received a notice letter from Ecolab (Compl. ¶¶16, 19). The complaint further alleges that after receiving notice, Defendants modified their website to remove the "Hetta" brand name but continued to offer services using an enclosure with the same described features, which may be argued as evidence of intent to continue infringing despite knowledge of the patent (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: can Plaintiff demonstrate, beyond the high-level marketing language in the complaint, that the accused "Hetta Portable Thermal Chamber" and the Defendants' method of use meet every specific structural and operational limitation of the asserted claims, including elements like the "external frame" and the precise temperature control profile?
- The case will also likely involve a question of definitional scope: can the term "external frame," as described in the patent's specification in the context of preventing collapse and cold spots, be construed to read on the physical structure of the accused "inflated 'heat tent'," or is it limited to a more conventional rigid, skeletal structure?