Fitness Anywhere LLC v. Woss Enters. LLC

• Decision Date: 23 August 2016
• Docket Number: Case No. 14-cv-01725-BLF
• Parties: FITNESS ANYWHERE LLC, Plaintiff, v. WOSS ENTERPRISES LLC, Defendant.
• Court: United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California

FITNESS ANYWHERE LLC, Plaintiff, v. WOSS ENTERPRISES LLC, Defendant.

Case No. 14-cv-01725-BLF

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

August 23, 2016

ORDER (1) GRANTING IN PART AND DENYING IN PART WOSS'S MOTION FOR SUMMARY JUDGMENT, (2) DENYING AS MOOT FITNESS ANYWHERE'S MOTION FOR PARTIAL SUMMARY JUDGMENT, AND (3) DENYING FITNESS ANYWHERE'S MOTION FOR A PRELIMINARY INJUNCTION

[Re: ECF 115-1, 122, 132]

This patent and trademark infringement dispute arises between competitors in the fitness and exercise equipment in industry. Plaintiff Fitness Anywhere LLC ("TRX") alleges Defendant Woss Enterprises LLC ("Woss") infringed three of its patents directed at fitness equipment: U.S. Patent Nos. 7,044,896 ("the '896 Patent"); 7,806,814 ("the '814 Patent"); and 8,043,197 ("the '197 Patent") (collectively, "Asserted Patents"). Before the Court are Woss's motion for summary judgment, TRX's motion for partial summary judgment, and TRX's motion for preliminary injunction. For the reasons set forth below, the Court GRANTS IN PART AND DENIES IN PART Woss's motion for summary judgment, DENIES TRX's motion for partial summary judgment, and DENIES TRX's motion for preliminary injunction.

I. BACKGROUND

TRX and Woss make body weight exercise equipment. TRX asserts that eight Woss products infringe claims 1-7, 9-18, 20-22, and 24-29 of the '896 Patent, claims 1-25 of the '814 Patent, and claims 1-2, 4, and 7-10 of the '197 Patent. Order Construing Claims 1-2, ECF 97. The '896 Patent and the '197 Patent relate to resistance exercise devices, and the '814 Patent relates to particular hand and foot grips.

The '896 Patent and the '197 Patent disclose a resistance exercise device comprising three basic parts: an anchor (410); an inelastic, adjustable-length strap (420); and two ends with grips (421a and 421b). Figure 4 appears in each of the Asserted Patents:

Image materials not available for display.

FIG._4

Claim 1 of the '896 Patent claims the exercise device as:

1. An adjustable, inelastic exercise device comprising:

an elongated member [420] having a pair of ends [421a, 421b] separated by a length and a mechanism [422a, 422b] for adjusting said length, where said elongated member is a substantially inelastic flat strap and, where said pair of ends includes a first end having a first grip [423a] and a second end having a second grip [423b]; and

an anchor [410] having a first portion [411] for mounting to a structure and a second portion [413] including a flexible portion to support said elongated member at a position along said length when both of said grips are pulled in a direction away from said anchor, wherein said flexible portion includes a loop [415], and wherein said elongated member passes through said loop.

To use the exercise device, the user secures the anchor to a support, such as a door, and then can perform various exercises by gripping the handles or placing the user's feet in the handles and positioning the user's body in different ways. '896 Patent at 4:53-57; Figs. 15A-15I (depicting various exercises).

The '814 Patent discloses an exercise device with a combination grip. Figure 27 is a perspective view of a grip that may be used as a hand grip or foot grip and includes a hand grip(423a), a loop (425a), and a second loop (2710). '814 Patent at 15:50-60; Fig. 27.

Image materials not available for display.

FIG. 27

A user may exercise using either the hand grip (423a) or may place his or her foot between the hand grip (423) and loop (2710). '814 Patent at 16:25-33. Claim 1 of the '814 Patent claims the exercise device with a combination grip as:

1. An exercise apparatus comprising:

an inelastic portion having at least one end including a first loop;

a hand grip attached to said first loop; and

a second loop attached to said hand grip, where said second loop is a continuous loop which passes through said hand grip,

where said hand grip is integrally attached to said at least one end,

where said second loop is integrally attached to said at least one end, and

where said exercise apparatus is adapted to support the weight of a user of the exercise apparatus by said hand grip, said second loop, or some combination thereof.

II. LEGAL STANDARD

Federal Rule of Civil Procedure 56 governs motions for summary judgment. Summaryjudgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). "Partial summary judgment that falls short of a final determination, even of a single claim, is authorized by Rule 56 in order to limit the issues to be tried." State Farm Fire & Cas. Co. v. Geary, 699 F. Supp. 756, 759 (N.D. Cal. 1987).

The moving party "bears the burden of showing there is no material factual dispute," Hill v. R+L Carriers, Inc., 690 F. Supp. 2d 1001, 1004 (N.D. Cal. 2010), by "identifying for the court the portions of the materials on file that it believes demonstrate the absence of any genuine issue of material fact." T.W. Elec. Serv. Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987). In judging evidence at the summary judgment stage, "the Court does not make credibility determinations or weigh conflicting evidence, and is required to draw all inferences in a light most favorable to the nonmoving party." First Pac. Networks, Inc. v. Atl. Mut. Ins. Co., 891 F. Supp. 510, 513-14 (N.D. Cal. 1995). For a court to find that a genuine dispute of material fact exists, "there must be enough doubt for a reasonable trier of fact to find for the [non-moving party]." Corales v. Bennett, 567 F.3d 554, 562 (9th Cir. 2009).

III. WOSS'S MOTION FOR SUMMARY JUDGMENT

A. The '814 Patent is Invalid as Obvious Based Upon the Prior Art

Woss argues that the '814 Patent is invalid because TRX's invention would have been obvious to one of ordinary skill in view of U.S. Patent No. 7,090,622 (the "'622 Patent") as modified by the '896 Patent. Mot. 2-5, ECF 122. TRX contends that combining the prior art to reveal the invention claimed in the '814 Patent would not have been obvious to one of ordinary skill in the art. Opp. 5-8, ECF 130. Furthermore, TRX argues that there are multiple secondary considerations of nonobviousness that suggest the '814 Patent was not obvious. Id. at 8-10.

1. Legal Standard

A patent is invalid for obviousness "if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to whichthe claimed invention pertains." 35 U.S.C. § 103(a). "Because patents are presumed to be valid, an alleged infringer seeking to invalidate a patent on obviousness grounds must establish its obviousness by facts supported by clear and convincing evidence." Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006) (internal citation omitted). While the clear and convincing standard of proving invalidity does not change, the fact that a prior art reference was previously before the Patent Office may affect the weight accorded to the reference. PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1366 (Fed. Cir. 2007) ("When the party asserting invalidity relies on references that were considered during examination or reexamination, that party bears the added burden of overcoming the deference that is due to a qualified government agency presumed to have done its job.") (internal quotation and citation omitted)

The seminal case of Graham v. John Deere Co., 383 U.S. 1, 17-18, (1966) defined the factual framework underlying the ultimate legal question of whether claimed subject matter would have been obvious to one of ordinary skill in the art at the time the invention was made: (1) the scope and content of the prior art; (2) the level of ordinary skill at the time the invention was made; (3) the differences between the prior art and the claimed invention; and (4) secondary or "objective" considerations, (collectively, the "Graham" factors). Id. Objective evidence of nonobviousness can include evidence of the commercial success of an invention, evidence of a long-felt need that was solved by an invention, evidence that others copied an invention, failure of others facing the same state of the art to develop a satisfactory solution, professional approval or skepticism, or evidence that an invention achieved a surprising result. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1569 (Fed. Cir. 1987). Such evidence must have a nexus, or causal relationship, to the claimed invention in order to be relevant to the obviousness or nonobviousness of the claim. Id. at 1571. Though a court must base its obviousness determination on these factual findings, the question of "[w]hether a claimed invention would have been obvious is a question of law...." Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013).

An obviousness challenge can be based on a combination of multiple prior art references but the burden falls on the challenger to show that a skilled artisan would have had a motivation to combine the references. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). TheSupreme Court has emphasized that "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421. "[A] court can take account of the inferences and creative steps a person of ordinary skill in the art would employ." Id. at 418.

2. Scope and Content of the Prior Art (Graham Factor 1)

The scope of prior art includes "references that are within the field of the inventor's endeavor," as well as "analogous art [that] a person of ordinary skill would reasonably have consulted...and applied...in seeking a solution to the problem that the inventor was...