PacTec, a maker of industrial bags for radioactive and hazardous waste, this month reasserted its federal court patent-infringement claim against a rival and fought back against that company’s counterclaim of improper behavior.
In an Oct. 1 filing in U.S. District Court, the Clinton, La.-based company acknowledged that an employee in early May photographed work being done by ICE Service Group. PacTec, though, denied the ICE contention that the employee posed as an Energy Department staffer in order to take the pictures.
ICE had cited the incident at the Port of Albany as a sign PacTec was out to improperly procure its trade secrets in the business of logistics, material management, and transportation. It was operating at the port as part of a contract to move hazardous and radioactive waste from the Department of Energy’s Separations Process Research Unit (SPRU) in New York state to Waste Control Specialists’ disposal facility in Andrews County, Texas.
PacTec, though, noted that it voluntarily turned over the photographs to ICE. It also denied the employee asked to look at empty bags, or inquired about other projects ICE was working on at separate locations, as ICE said in its counterclaim. The PacTec filing did not offer any detailed explanation for the employee’s visit to the ICE work site.
PacTec filed suit in June in U.S. District Court in Tennessee, claiming Ambridge, Pa.-based ICE Service Group and a separately owned affiliate, ICE Packaging, had violated its patents for bags used at Energy Department and commercial cleanup sites to gather and transport dirt, gravel, and debris from demolition.
The original complaint claimed the two ICE companies and another firm were “making, using, offering for sale, selling, or importing containment bags embodying PacTec’s patented apparatuses and methods.” The other company named in PacTec’s suit, Madisonville, Tenn.-based Strategic Packaging Systems (SPS), sold certain assets to ICE Packaging in July 2017, according to ICE.
PacTec has accused ICE of willfully and knowingly violating its patents. It said it uncovered the violations between 2016 and 2018 at various DOE sites and a Perma-Fix Environmental Services operation in Oak Ridge, Tenn.
In its September response, the ICE companies denied the patent infringement claims, questioned whether PacTec is still sole owner of the patents, and put forward the improper snooping assertion. ICE said PacTec has apparently used the patents as collateral with lenders.
In the latest filing, PacTec said ICE’s counterclaims, alleging “industrial espionage,” should be tossed in part because ICE is in the litigation with “unclean hands.” The term is a legal doctrine in which one party claims another is not entitled to relief because it is behaving unethically or acting in bad faith.
The company further said it still holds the rights to the patents at issue in the case. “In further reply, PacTec states that defendants have infringed, and are continuing to infringe the patents asserted against them in this action,” according to the brief filed for PacTec by Chattanooga attorney John Jackson.
PacTec has requested a jury trial and monetary damages and seeks to have ICE enjoined from further patent infractions.
Senior U.S. District Judge Thomas Phillips, of the Eastern District of Tennessee, has scheduled the case for trial for Jan. 28, 2020, in Knoxville, Tenn. A final pretrial conference is scheduled about two weeks before then, according to the Sept. 17 scheduling order.
Both PacTec and ICE are subcontractors to Energy Department and nuclear plant decommissioning projects.
