DCT

3:18-cv-13294

CBA Environmental Services Inc v. Toll Brothers Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:18-cv-13294, D.N.J., 08/30/2019
  • Venue Allegations: Venue is alleged to be proper as the Defendant is a New Jersey limited liability company that resides and transacts business in the district, where a substantial part of the events giving rise to the claims occurred.
  • Core Dispute: Plaintiff alleges that Defendant’s soil remediation services infringe a patent related to an in-situ method of blending contaminated soil with clean soil to reduce toxicity.
  • Technical Context: The technology concerns on-site soil remediation, a critical process for the environmental cleanup and redevelopment of formerly agricultural or industrial land, particularly sites contaminated with pesticides.
  • Key Procedural History: The complaint, a Second Amended Complaint, alleges a detailed history of pre-suit interactions. Plaintiff CBA Environmental Services, Inc. ("CBA") claims it disclosed its patented methods to a third party, Toll Bros., during proposals for two remediation projects. The complaint alleges that Toll Bros. subsequently hired Defendant Enterprise Network Resolutions Contracting, LLC ("ENRC") to perform the remediation, and that ENRC used infringing methods. CBA alleges it provided direct notice of its patent rights to ENRC before and during the allegedly infringing activities, which is central to the willfulness claim.

Case Timeline

Date Event
2003-04-03 '105 Patent Priority Date
2006-02-21 '105 Patent Issue Date
2016-04-12 CBA sends email to Toll Bros. with attachment disclosing patented methods
2016-04-20 CBA meets with Toll Bros. and discusses its patented methods
2016-05-19 CBA submits formal proposals to Toll Bros. detailing its patented methods
2016-10-27 Defendant allegedly observed performing infringing activities at High Mountain site
2017-03-15 CBA sends letter to Defendant advising of '105 Patent and potential infringement
2017-05-10 CBA sends another letter to Defendant and others regarding '105 Patent
2019-08-30 Second Amended Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. 7,001,105, Method of In Situ Blending of Soil to Reduce Concentration of Toxic Residue in the Soil, issued February 21, 2006.

The Invention Explained

  • Problem Addressed: The patent's background section describes how conventional soil remediation techniques, such as using plows or bulldozers, are ineffective at vertically mixing contaminated surface soil with cleaner subsurface soil (’105 Patent, col. 2:8-23). This either results in merely spreading the contamination horizontally or requires the costly excavation and removal of soil for off-site treatment (’105 Patent, col. 2:36-49).
  • The Patented Solution: The invention is a method for in-situ remediation that uses a "mobile blending apparatus," such as a modified trencher, to vertically lift and churn contaminated surface soil with clean soil from deeper layers (’105 Patent, Abstract; col. 4:36-41). The apparatus moves progressively across a site, blending the soil to a specified depth until the contaminants are substantially homogenized and diluted to a concentration below regulatory limits (’105 Patent, col. 3:59-66).
  • Technical Importance: This on-site blending method provides a more economical alternative to traditional "dig and haul" remediation by avoiding the significant expenses associated with soil excavation, transportation, and off-site disposal (’105 Patent, col. 3:61-66).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 7, and 8 (Compl. ¶58).
  • Independent Claim 1 recites a method comprising the steps of: (1) "determining a requisite volume of clean soil" needed for dilution; (2) "employing a mobile trencher apparatus modified to lift and churn soil in place to a depth of at least four feet"; and (3) "running the mobile blending apparatus through the area" to blend the soils to a uniform concentration (’105 Patent, col. 8:17-38).
  • Independent Claim 7 recites a similar method specifically for sites with "hot spot" areas, comprising steps of: (1) "determining and marking the location of hot spots"; (2) determining a sufficient volume of clean soil; (3) employing a modified mobile trencher to a depth of at least four feet at a first location; (4) running the apparatus for a sufficient time to blend; and (5) "moving the apparatus to another location...and repeating the steps" (’105 Patent, col. 8:22-48).
  • Independent Claim 8 recites a method comprising the steps of: (1) "using a mobile trencher apparatus modified to lift and churn soil in place to a depth of at least four feet" to mix a first vertical profile of soil; (2) using the trencher to blend that profile to a uniform concentration; and (3) "advancing the mobile trencher apparatus to a second vertical profile and repeating the steps" (’105 Patent, col. 8:49-67).
  • The complaint reserves the right to assert additional claims (Compl. ¶58, n.1).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is not a product but a service: Defendant’s soil remediation methods, as performed at construction sites including the High Mountain and Apple Ridge golf course redevelopment projects (Compl. ¶¶54, 57).

Functionality and Market Context

The complaint alleges that Defendant was hired to perform large-scale soil remediation at luxury home development sites overseen by Toll Bros. (Compl. ¶¶30, 40). The accused infringing activity is the method of blending soil, which allegedly involved using "equipment and methods that directly infringe the ’105 patent" (Compl. ¶42). Specifically, the complaint alleges Defendant used heavy machinery to blend contaminated soil to depths greater than four feet, as required by remediation plans developed for the sites (Compl. ¶¶38, 44). The complaint includes a photograph, Exhibit J, which it describes as depicting Defendant's earth-moving equipment with a boom and trencher at the High Mountain site (Compl. ¶42).

IV. Analysis of Infringement Allegations

The complaint references a preliminary claim chart in Exhibit Q, which was not provided with the complaint document. The narrative infringement theory alleges that Defendant performed the steps of the asserted claims of the ’105 Patent at the High Mountain and Apple Ridge sites (Compl. ¶57).

The complaint alleges that remediation plans for the projects, such as one detailed in a "polygon map," required soil blending to a depth greater than four feet, which maps to the "depth of at least four feet" limitation present in all asserted independent claims (Compl. ¶44). The complaint alleges that Defendant was observed on-site using "earth moving equipment with boom and trencher" to perform this blending, which it contends constitutes the claimed "employing a mobile trencher apparatus" step (Compl. ¶42). The allegation that this process was conducted across the contaminated areas of the sites is intended to satisfy the limitations requiring the apparatus to be run through the area or advanced to subsequent locations (Compl. ¶¶42, 57). The complaint further alleges that the "determining" step of claims 1 and 7 was met when Defendant "ascertained the depth to which its mobile trenchers should be controlled to effectuate the infringing soil remediation" (Compl. ¶58, n.1).

V. Key Claim Terms for Construction

  • The Term: "mobile trencher apparatus modified to lift and churn soil in place"

    • Context and Importance: This term is the central piece of machinery in all asserted claims. The infringement analysis will turn on whether the "earth moving equipment with boom and trencher" allegedly used by the Defendant (Compl. ¶42) falls within the scope of this term. Practitioners may focus on this term because its construction will determine whether a wide range of soil-mixing equipment can infringe or if the claims are limited to a more specific class of device.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests a potentially broad scope, stating that the more general term "mobile blending apparatus" (which includes the trencher) "shall also encompass other similar mobile machinery capable of both mixing and blending soil" (’105 Patent, col. 4:50-52).
      • Evidence for a Narrower Interpretation: The patent also provides specific examples, referring to its own "MITU and MITU-LVR machines" and describing a mechanism with "teeth on the trencher chain or adjacent expansion drums" (’105 Patent, col. 5:40-54). This could support a narrower construction limited to machines operating with a similar chain-based lifting and churning action.

  • The Term: "determining a requisite volume of clean soil" (Claim 1) / "determining that there is a sufficient volume of clean soil" (Claim 7)

    • Context and Importance: This term represents a preliminary step in the claimed method. Its construction is critical because the complaint suggests that third parties (Toll Bros. or its engineering consultants) may have performed the underlying analysis to create the remediation plans that Defendant then executed (Compl. ¶¶36, 44). This raises a potential divided infringement issue.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes this step as involving "simple blending calculations" (’105 Patent, col. 4:49-54). Plaintiff argues in the complaint itself that this language is broad enough to cover the "undertaking by Defendant when it ascertained the depth to which its mobile trenchers should be controlled," which could be interpreted as simply reading and applying a pre-determined plan (Compl. ¶58, n.1).
      • Evidence for a Narrower Interpretation: The word "determining" could be construed to require the infringing party to perform the actual analysis or calculation, not merely to follow instructions derived from another party's determination. Such a reading would suggest that a single actor must perform both the calculation and the physical blending to directly infringe.

VI. Other Allegations

  • Indirect Infringement: While the count is for direct infringement against ENRC, the complaint lays a foundation for potential indirect infringement claims. A footnote states the "Determining Steps are also sufficiently broad to support indirect infringement allegations against third parties which may have pre-determined and directed Defendant to remediate to certain soil depths" (Compl. ¶58, n.1).
  • Willful Infringement: The complaint alleges willful infringement based on Defendant having actual, pre-suit knowledge of the ’105 Patent (Compl. ¶61). The factual basis includes a detailed timeline of communications, alleging that CBA notified Toll Bros. (the party that hired Defendant) of its patents and later sent at least two letters directly to Defendant advising of the ’105 Patent and the potential infringement at the work sites (Compl. ¶¶34, 46, 50).

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

  • A central issue will be one of claim scope: can the term "mobile trencher apparatus modified to lift and churn soil in place," which is described in the patent with reference to specific machinery, be construed broadly enough to read on the general-purpose "earth moving equipment with boom and trencher" that Defendant allegedly used?
  • The case presents a key question of divided infringement liability: can Defendant be found to have directly infringed method claims that include a "determining" step, when the complaint suggests this analytical step was performed by a third party who created the remediation plans? The outcome may depend on whether merely implementing a plan satisfies the "determining" limitation or if a theory of direction or control can be established.
  • A major factual dispute will concern willfulness: given the complaint's detailed allegations of pre-suit notice to both the contracting party and the Defendant directly, a critical question for trial will be whether the evidence supports a finding that Defendant acted with the requisite knowledge and intent to establish willful infringement.