United States District Court, D. Minnesota
Joseph P. Titterington, Esq., and Douglas J. Sorocco, Esq., Dunlap Codding PC, Oklahoma City, OK, and Rachel K. Zimmerman, Esq., Merchant & Gould PC, Minneapolis, MN, on behalf of Plaintiff.
Kurt J. Niederluecke, Esq., Grant D. Fairbairn, Esq., and Ted C. Koshiol, Esq., Fredrikson & Byron, PA, Minneapolis, MN, on behalf of Defendant.
MEMORANDUM OPINION AND ORDER
ANN D. MONTGOMERY, District Judge.
On December 16, 2013, the undersigned United States District Judge heard oral argument on Plaintiff Pictometry International Corporation's ("Pictometry") Motion for Preliminary Injunction and Request for Evidentiary Hearing [Docket No. 25] and its Motion to Dismiss Defendant Geospan Corporation's ("Geospan") Antitrust Counterclaim [Docket No. 12]. Geospan opposes both motions. For the reasons stated herein, Pictometry's motion for injunctive relief is denied, and its motion to dismiss the antitrust counterclaim is granted.
A. Litigation History
This is the fourth lawsuit between the parties in the past six years. On March 20, 2008, Geospan filed suit against Pictometry, alleging infringement of United States Patent No. 5, 633, 946 (the "'946 Patent") (action referred to as "Geospan I"). On March 31, 2011, this Court entered a declaratory judgment of non-infringement in Pictometry's favor. See Geospan Corp. v. Pictometry Int'l Corp., No. 08-816, 2011 WL 1261583 (D. Minn. Mar. 31, 2011). Geospan appealed, and on June 5, 2012, the Federal Circuit Court of Appeals affirmed the declaration of non-infringement in a per curiam decision. See Geospan Corp. v. Pictometry Int'l Corp., 469 F.Appx. 913 (Fed. Cir. 2012).
On October 13, 2009, while Geospan I was still pending, Pictometry sued Geospan in the Western District of New York, alleging infringement of United States Patent No. 5, 247, 356 (the "'356 Patent") (action referred to as "Geospan II"). On June 2, 2011, the Western District of New York transferred Geospan II to the District of Minnesota, where it was assigned to Judge John R. Tunheim. See Order, May 5, 2011 [Geospan II Docket No. 42]. On August 17, 2012, the Court construed one of the patent claims at issue and invalidated the other. See Pictometry Int'l Corp. v. Geospan Corp., No. 11-1423, 2012 WL 3679208 (D. Minn. Aug. 17, 2012). Thereafter, Pictometry stipulated to the dismissal of Geospan II, agreeing that based on Judge Tunheim's Order, Geospan had not infringed the '356 Patent. Stipulation [Geospan II Docket No. 75].
On May 10, 2013, Geospan filed another suit against Pictometry in the District of Minnesota, again alleging Pictometry infringed the '946 Patent at issue in Geospan I. That action ("Geospan III"), before Judge Susan R. Nelson, is ongoing.
Then, on August 28, 2013, Pictometry filed the present action ("Geospan IV") against Geospan in this district. Compl. [Docket No. 1]. Pictometry's sole cause of action alleges Geospan infringed United States Patent No. 7, 424, 133 (the "'133 Patent"), which Pictometry owns by assignment.
B. The '133 Patent
Pictometry and Geospan sell products and services in the field of photogrammetry, the science of obtaining accurate information about physical objects through the interpretation of photographs or other visual images. Theodore M. Lachinski Decl. [Docket No. 42] ¶ 2. Pictometry specializes exclusively in aerial photogrammetry, meaning it flies aircraft with specialized cameras over a geographic area to collect images. Pictometry then uses these images to compile usable data about the terrain. See Stephen L. Schultz Decl. [Docket No. 27] ¶ 3. Geospan initially began its photogrammetry services using ground-based vehicles equipped with special cameras, later expanding into aerial photogrammetry during the late 1990's and early 2000's. Lachinski Decl. ¶¶ 3-5. Pictometry and Geospan have directly competed in aerial photogrammetry since 2005. According to Geospan CEO Thomas Lachinski, Pictometry has an estimated 99% market share, while Geospan has the remaining 1%. Id. at ¶ 6.
The '133 Patent relates to the use of oblique imaging in photogrammetry. Compl. [Docket No. 1] Ex. A (the "'133 Patent"). The '133 Patent specification summarizes the drawbacks associated with traditional photogrammetry, which typically uses orthogonal (at right angle) images. In this process, for instance, a plane would capture images by pointing a camera straight down at a "nadir point" directly underneath it. In the resulting image, only the nadir point is actually at a right angle to the camera; all other points (also referred to as "pixels") around the nadir are at oblique angles and thus increasingly distorted as they get further from the nadir. '133 Patent at 1:30-45. The process of correcting these distortions may leave the corrected (or "ortho-rectified") image difficult for untrained observers to use. The corrected images also include "substantially no information" about the height of the pictured terrain. Id. at 1:56-2:10.
When an image-capturing device aims at a non-right angle relative to the terrain, it results in "oblique images." These images of terrain display the sides of features on land, such as the sides of a house or the ridges of a mountain, and are much easier for a viewer to intuitively understand. Id. at 2:11-20. However, oblique images have traditionally been of little or no use in photogrammetry, because correcting the images for their skewed angles results in finished images that are even more distorted than corrected orthogonal images, and the resulting images do not offer usable geo-location data or accurate measurement data. Id. at 2:33-47.
The '133 Patent describes a method and apparatus for "capturing, displaying, and making measurements of objects and distances between objects depicted within oblique images." Id. at 2:60-64. The invention uses oblique images, along with corresponding positional data, to calculate the distance between selected points. In essence, it uses the more intuitive oblique images to perform some of the same tasks previously performed by orthogonal images in photogrammetry. Id. at 2:60-3:12.
C. The Parties' Claims
On approximately January 19, 2011, the City of Branson, Missouri, held a request for proposals (RFP) for a mapping project. Compl. ¶ 16. Aeroquest Optimal, Inc. ("Aeroquest") submitted a bid in the RFP, and identified Geospan as a subcontractor. Compl. Ex. 3 (Aeroquest RFP). As part of the bid, Geospan described its "Geovista" system as allowing "users to see every location from every angle in a given area and measure anything accurately." Id . Geospan also offered software allowing "the user to view and navigate on the oblique imagery and measure the distance, height, area, bearing, elevation, and roof pitch of features in the images." Id.
On August 28, 2013, Pictometry filed the present action ("Geospan IV") against Geospan, alleging Geospan has directly and indirectly infringed the '133 Patent through its Geovista system. Compl. ¶¶ 19-27. On October 4, 2013, Geospan filed counterclaims against Pictometry, claiming: (1) the Court should issue a declaratory judgment of non-infringement of the '133 Patent; (2) the '133 Patent is invalid; (3) Pictometry has violated Section 2 of the Sherman Act by engaging in anti-competitive conduct; and (4) Pictometry has abused judicial process. Answer & Countercl. [Docket No. 10] ("Countercl.").
On October 25, 2013, Pictometry moved to dismiss the Sherman Act count of the Counterclaim. On November 12, 2013, Pictometry also moved for a preliminary injunction restricting Geospan from infringing any claim of the '133 Patent.
A. Preliminary Injunction
Courts are authorized to grant injunctive relief to protect patent rights. 35 U.S.C. § 283. A preliminary injunction is "an extraordinary remedy never awarded as of right." Winter v. Natural Res. Def. Council, Inc. , 555 U.S. 7, 24 (2008). A party seeking a preliminary injunction must demonstrate: "(1) a reasonable likelihood of success on the merits; (2) irreparable harm if an injunction is not granted; (3) a balance of hardships tipping in its favor; and (4) the injunction's favorable impact on the public interest." Amazon. com, Inc. v. Barnesandnoble.com, Inc. , ...