Speedfit LLC v. Chapco Inc.

• Decision Date: 21 September 2020
• Docket Number: 15-CV-1323 (PKC) (RLM)
• Citation: 490 F.Supp.3d 575
• Parties: SPEEDFIT LLC and Aurel A. Astilean, Plaintiffs, v. CHAPCO INC. and Samsara Fitness LLC, Defendants.
• Court: U.S. District Court — Eastern District of New York

490 F.Supp.3d 575

SPEEDFIT LLC and Aurel A. Astilean, Plaintiffs,

v.CHAPCO INC. and Samsara Fitness LLC, Defendants.

15-CV-1323 (PKC) (RLM)

United States District Court, E.D. New York.

Signed September 21, 2020

Thomas B. Decea, Douglas E. Robinson, Danzig Fishman & Decea, White Plains, NY, Jacob E. Lewin, Fishman & Decea, Armonk, NY, John F. Vodopia, Huntington, NY, for Plaintiffs.

Christine K. Bush, Pro Hac Vice, Hinckley, Allen & Snyder LLP, Providence, RI, Christopher V. Fenlon, Hinckley Allen & Snyder LLP, Albany, NY, Laurel Gilbert, Hinckley Allen & Snyder LLP, Boston, MA, for Defendants Chapco Inc., Robert Weinstein, Brian Weinstein.

Christine K. Bush, Hinckley, Allen & Snyder LLP, Providence, RI, Christopher V. Fenlon, Hinckley Allen & Snyder LLP, Albany, NY, Laurel Gilbert, Hinckley Allen & Snyder LLP, Boston, MA, for Defendant Samsara Fitness LLC.

MEMORANDUM & ORDER

PAMELA K. CHEN, United States District Judge:

Plaintiffs Speedfit LLC and Aurel A. Astilean bring this action against Defendants Chapco Inc. and Samsara Fitness LLC, advancing claims of patent infringement and breach of contract. Currently before the Court are Defendants’ second motion for summary judgment and their motion to strike Plaintiff Astilean's affidavit in support of Plaintiffs’ response to the summary judgment motion. (Dkts. 80, 90.) For the reasons stated below, the Court grants Defendants’ motion for summary judgment and denies their motion to strike.

BACKGROUND

I. Relevant Facts¹

U.S. Patent No. 8,690,738 (the "’738 Patent"), entitled "Leg-Powered Treadmill," was issued to Plaintiff Astilean on April 8, 2014 from U.S. Application No. 13/711,074 filed with the U.S. Patent and Trademark Office (the "PTO") on December 11, 2012. (Defendants’ 56.1 Statement ("Defs.’ 56.1"), Dkt. 82, ¶ 1; Exhibit A, Dkt. 83-1.) Plaintiffs accuse Defendant Samsara of infringing the ’738 Patent by selling the TrueForm Runner ("TrueForm"). (Defs.’ 56.1, Dkt. 82, ¶ 2.) The ’738 Patent has one independent claim, Claim 1, and eight dependent claims. (Id. ¶ 3.) Claim 1 of the ’738 Patent states:

A motor-less, leg-powered curved treadmill comprising:

a treadmill frame having peripheral left and right sides;

a concave row of upper support peripheral ball bearings located at each of the peripheral left and right sides of the treadmill frame; and

a set of respective front and rear pulley end rollers for rotation;

a closed loop treadmill belt, wherein said front and rear pulley end rollers support said closed loop treadmill belt;

wherein said closed loop treadmill belt comprises a plurality of parallel transverse slats oriented perpendicular to an axis of rotation of said belt and attached to each other in a resilient fashion; and

wherein each said transverse slat includes a plurality of fins connected to and extending outward from each said transverse slat and formed with a material with sufficient resiliency, strength and weight to lie on and conform to the respective concave rows of the upper support peripheral ball bearings.

(Exhibit A, Dkt. 83-1, at ECF² 16.) Claim 6 of the ’738 Patent states that "[t]he motor-less, leg-powered curved treadmill as in claim 1 wherein said transverse slats are made of a material selected from the group consisting of rubber, plastic and wood." (Id. at ECF 17.) Claim 9 of the ’738 Patent states that

[t]he motor-less, leg-powered curved treadmill as in claim 1, wherein each said row of peripheral ball bearings are spaced apart from each other on the respective left and right sides of said treadmill frame, wherein said fins of said transverse slats extend cantilevered outward into a vacant mid-section of said treadmill from each said transverse slat and wherein said resiliency enables said transverse slats to dip slightly under the weight of the user runner without any lower support below non-peripheral mid-sections of said transverse slats.

(Id. )

During the prosecution of the ’738 Patent, the PTO Examiner issued an Office Action on May 22, 2013. (Exhibit I, Dkt. 83-9.) Among other issues, the PTO Examiner found that

[c]laims 1–10 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims of U.S. Patent No. 8,343,016 [the " ’016 Patent," another of Plaintiff Astilean's patents]. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is clear that all the elements of the present claims are found in the claims of the [ ’016 ] patent. The difference between the former and the latter lies in the fact that the [ ’016 ] patent claims include many more elements and is much more specific. Thus, the invention of the patent [is] in effect a "species" of the "generic" invention of the present claims. It has been held that the generic invention is "anticipated" by the "species."

(Id. at ECF 6–7 (citation omitted).) In response, Plaintiff Astilean submitted a terminal disclaimer³ as to the ’738 Patent. (Exhibit J, Dkt. 83-10, at ECF 9.) On December 20, 2013, the PTO Examiner in another Office Action noted that the applicant "canceled claims 11–13 thereby eliminating any potentially interfering claims with respect to U.S. Patent Application 13/235,065." (Exhibit 6, Dkt. 86-6, at ECF 7.)

While this case was pending, Plaintiffs were involved in another patent infringement lawsuit before the Honorable Kiyo A. Matsumoto of this District. See Speedfit LLC v. Woodway USA, Inc. ("Woodway") , 432 F. Supp. 3d 183 (E.D.N.Y. 2020). In Woodway , Plaintiffs asserted, inter alia , that Woodway's Speedboard 2/Curve ("Speedboard") infringed " U.S. Patent No. 8,308,619 ("’619 Patent"), entitled ‘Leg-Powered Treadmill,’ [which] was filed on October 29, 2010[ ] and issued to Plaintiff Astilean on November 13, 2012," and " U.S. Patent No. 8,343,016 (the ‘’016 Patent’ ...), also entitled ‘Leg-Powered Treadmill,’ [which] was filed on November 1, 2010[ ] and issued" to Plaintiff Astilean on January 1, 2013. See id. at 195 (citations omitted). The ’738 Patent is a continuation of the ’016 Patent.⁴ (Defs.’ 56.1, Dkt. 82, ¶¶ 6–7, 47.) The ’016 Patent has one independent claim, Claim 1, and sixteen dependent claims. (Id. ¶ 8.) Claim 1 of the ’016 Patent states:

A motor-less, leg-powered curved treadmill comprising:

a treadmill frame;

a set of respective front and rear pulley end rollers for rotation, said front and rear pulleys supporting a closed loop treadmill belt;

said closed loop treadmill belt comprising a plurality of parallel slats oriented perpendicular to an axis of rotation of said belt, said parallel slats attached to each other in a resilient fashion;

said closed loop treadmill belt being of such a length as compared to the distance between the end rollers to permit it to assume a required concave upper contour;

a means for slackening an upper concave portion while simultaneously keeping a lower portion of the belt taut, preventing said lower portion from drooping down during rotation and exertion of walking or running force upon said upper concave portion of said closed loop treadmill belt;

wherein each said slat is made of a material with sufficient resiliency and strength and weight to lie on and conform to a concave row of upper support peripheral ball bearings located at each peripheral side of said upper portion of said motor-less, leg-powered curved treadmill.

(Exhibit C, Dkt. 83-3, at ECF 13.) Claim 6 of the ’016 Patent states that "[t]he motor-less, leg-powered curved treadmill as in claim 1 wherein each said slat includes at least one fin descending downward from each said slat." (Id. at ECF 14.) Claim 7 of the ’016 Patent states that "[t]he motor-less, leg-powered curved treadmill as in claim 6 wherein each said slat includes a plurality of fins descending downward from each said transverse slat." (Id. ) Claim 8 of the ’016 Patent states that

[t]he motor-less, leg-powered curved treadmill as in claim 6 wherein each said row[ ] of peripheral bearings are spaced apart from each other on respective left and right sides of said curved treadmill, wherein further said fins of said slats extend cantilevered downward into a vacant mid-section of said treadmill from each said slat so that said slats are resilient to dip slightly under the weight of a user runner without any lower support below non-peripheral mid-sections of said slats.

(Id. ) Claim 9 of the ’016 Patent states that "[t]he motor-less, leg-powered curved treadmill as in claim 1 wherein said transverse slats are made of a material selected from the group consisting of rubber, plastic and wood." (Id. )

Judge Matsumoto concluded in Woodway that the ’016 Patent was "not entitled to the earlier priority date of the [Provisional Application No. 61/280,265], and the on-sale bar renders the [ ] ’016 Patent [ ] invalid." 432 F. Supp. 3d at 211. Specifically, Judge Matsumoto found that the Speedboard, which anticipated the ’016 Patent, was on sale under 35 U.S.C. § 102(b) at least one year before the filing date of the ’016 Patent, and thus the ’016 Patent was invalid under the on-sale bar. Id. at 203. Judge Matsumoto further found that the ’016 Patent cannot rely on the priority date of the No. 61/280,265 Provisional Application (the "’265 Application"). Id. at 205–06. Judge Matsumoto found that the ’265 Application "did not disclose the pertinent claim limitations of the ’016 Patent," such as "upper support peripheral ball bearings" and the "means for slackening," and therefore it "did not convey with reasonable clarity that, as of November 2, 2009 [the filing date of the ’265 Application], [P]laintiffs were in possession of the curved, non-motorized treadmill invention claimed by" the ’016 Patent. Id. at 205.

II. Procedural History

On March 13, 2015, Plaintiffs commenced this action. (See Dkt. 1.) Thereafter, on August 11, 2015, Plaintiffs filed an amended complaint in which they advanced claims for patent infringement, breach of contract, breach of fiduciary duty, conversion, unjust enrichment, and...