Speedfit LLC v. Woodway USA, Inc.

Citation432 F.Supp.3d 183
Decision Date09 January 2020
Docket Number13-CV-1276 (KAM) (AKT)
Parties SPEEDFIT LLC and Aurel A. Astilean, Plaintiffs, v. WOODWAY USA, INC., Defendant.
CourtUnited States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)

Patrick M Ardis, Wolff Ardis, P.C., Memphis, TN, R.H. Chockley, Pro Hac Vice, Shelby County Attorney, Memphis, TN, Thomas B. Decea, Danzig Fishman & Decea, White Plains, NY, Douglas E. Robinson, Fishman & Decea, White Plains, NY, Jacob E. Lewin, Fishman & Decea, Armonk, NY, John F. Vodopia, John F. Vodopia, Esq., Huntington, NY, for Plaintiffs.

Kadie M. Jelenchick, Jeffrey N. Costakos, Matthew Peters, Stephanie Quick, Pro Hac Vice, Foley & Lardner LLP, Milwaukee, WI, Sara Madavo, Yonaton Aronoff, Foley & Lardner LLP, New York, NY, for Defendant.

MEMORANDUM & ORDER

MATSUMOTO, United States District Judge:

Before the court are cross-motions for summary judgment by plaintiffs Speedfit LLC ("Speedfit") and Aurel A. Astilean ("Astilean") (collectively, "plaintiffs"), and defendant Woodway USA, Inc. ("Woodway" or "defendant"). Plaintiffs allege Woodway infringed two Speedfit patents relating to a curved, non-motorized treadmill involving a closed-loop treadmill belt designed to maintain a concave running surface and taut lower portion. (ECF No. 150, Supplemental Complaint ("Supp. Compl.") ¶¶ 18-21.)1

BACKGROUND
I. Statement of Facts
A. Astilean's Collaboration with Woodway

In late 2008, Astilean was regularly communicating with Woodway and its personnel about development of a curved, non-motorized treadmill. On December 11, 2008, Eric Weber, Woodway's Director of Sales and Marketing, arranged for delivery of "1 mercury belt[,] 2 complete bearing rails[,] 2 foot fall strips ... [,] and 20 self tapping screws" to Astilean, and directed Nicholas Oblamski, Woodway's Senior Project Engineer, to "add this to the list of moneys Alex [Astilean] owes us." (ECF No. 268-16, Declaration of John F. Vodopia ("Vodopia Decl."), Ex. PL4.)

Four days later, Astilean emailed Oblamski to ask if he "got the new part," (ECF No. 268-17, Vodopia Decl., Ex. PL5), a reference to wooden bearing rails for a wooden prototype of the curved, non-motorized treadmill ("Wooden Prototype"). (ECF No. 283-1, Joint Deposition Testimony Appendix ("JDTA"), 0920:2-19 (Oblamski Dep.).) Oblamski confirmed receipt, and the next day, asked Astilean to provide pictures or a video of the treadmill so that Oblamski could "have a better understanding of how it mounts and how the system works[.]" (Vodopia Decl., Ex. PL5.) Moments later, Oblamski asked Douglas Bayerlein, Woodway's president, and others at Woodway, "[w]hat's the news? Do I get out my skill saw? Alex is wondering when he gets it back and he wants to talk to Eric [Weber] or Doug [Bayerlein]." (ECF No. 268-18, Vodopia Decl., Ex. PL6.) Oblamski's email attached photographs of a treadmill with a curved surface and wooden side panels, stationed in an outdoor yard. (Id. ) On December 17, 2008, Oblamski sent an internal email to Woodway personnel about a "[n]ew project." (ECF No. 268-19, Vodopia Decl., Ex. PL7.) Oblamski's email listed a number of bullet point items, the last of which read "3 treadmills by IHRSA [i.e. , the International Health, Racquet & Sportsclub Association tradeshow], 1 for the show, 1 or 2 for Alex." (Id. )

Astilean and Oblamski continued their correspondence through the end of 2008, into January 2009. Oblamski asked Astilean about the treadmill's specifications, (ECF No. 268-20, Vodopia Decl., Ex. PL8 (email dated 12/18/2008) ("What is the point of having a groove in the wood on each end?[;] Why are there bearings missing?")), and Astilean provided answers. (Id. ("Yes the right side is the front is the one which is not curb anymore at the end, the bearing missing not important, the groove was for testing different height of the axle not important anymore[.]").) Oblamski used Astilean's input to generate computer models of the treadmill or its components. (ECF No. 268-21, Vodopia Decl., Ex. PL9 (email dated 12/18/2008) ("So I measured your bearing rails and came up with a curve on my computer. Everything is on a perfect circle except for the far point on the right, see the picture I've attached called ‘curve.’ ").

In January 2009, the Discovery Channel featured Astilean's Wooden Prototype on a recreational television show. (WW SOF ¶ 121; JDTA0509:17-21 ("Q . Which curved treadmill was shown in that Discovery Channel episode? A . The prototype. Q . Which prototype? A . The wood prototype.").)2 On January 4, after Astilean told Woodway about his Discovery Channel appearance, Oblamski emailed Eric Weber and Doug Bayerlein to ask which prototype of the treadmill would be presented at the IHRSA tradeshow: the Wooden Prototype that Astilean and Speedfit shared with the Discovery Channel, or "the one we make." (ECF No. 268-22, Vodopia Decl., Ex. PL10.) Oblamski suggested that if Astilean "knows this one [i.e. , the Wooden Protoype] will work, we should bring this one," and reiterated the original question, "[d]o we use his for the show, or do we still push ours through quick and get our version to the show?" (Id. ) Weber responded that, whatever the decision, Woodway had to "answer a few questions prior to the show," including, "[h]ow much are we charging Alex for this [ ]or how much will he make on each one [i.e. , treadmill] ...." (Id. )

On January 21, 2009, Astilean sent Oblamski, Bayerlein, and Weber a design for the "new SpeedBoard," and asked Oblamski to put it on CAD, Woodway's computer aided design program, to "see how it will look." (ECF No. 268-23, Vodopia Decl., Ex. PL11.) Astilean told Oblamski that Woodway would have to resolve the problem of "the belt rolling under," but Astilean indicated that he would send along pictures to show Oblamski "how [Astilean] did it." (Id. ) Five days later, Oblamski sent along a computer-generated image of the treadmill model but suggested that the dimensions of the treadmill belt had to be changed to avoid applying too much stress to the front and rear of the structure. (Id. ) With respect to the treadmill's dimensions, Oblamski asked Astilean to "either approve the side cover shape or get me a new side cover shape you'd like to use" so that Oblamski could finalize preparations for the IHRSA tradeshow. (Id. )

On February 25, Astilean reached out to Oblamski to ask how the development of the treadmill was coming along. (ECF No. 268-24, Vodopia Decl., Ex. PL12.) Oblamski assured Astilean that "[e]verything for the speedboard is coming along as planned." Oblamski continued:

You can see the long belt which synchronizes the front and rear shafts and works great. I will put the running belt on tomorrow and see what happens, hopefully it will just work as planned but I'm thinking we'll need to make some adjustments.

(Id. ) Three days later, Oblamski informed Astilean that, while working on the treadmill model, he "finally came up with a good solution" to keep the treadmill belt in position. (ECF No. 268-25, Vodopia Decl., Ex. PL13.) Oblamski still wanted to "try a few different things, like adjusting the tension on the belt," and would try to "improve it some more this coming week before we have to ship it to the show." (Id. )

B. The 2009 Introduction of the Speedboard 2/Curve

On or around March 17, 2009, Woodway publicly introduced, and offered for sale, the Speedboard 2/Curve—a curved, non-motorized treadmill—at the IHRSA tradeshow. (JSOF (WW) ¶ 40; JSOF (Sp.) ¶ 17.)3 Astilean attended the IHRSA tradeshow and worked in Woodway's booth to help "generate buzz" and sell as many treadmills as possible. (JSOF (WW) ¶¶ 41-42.) The parties do not dispute that the curved, non-motorized treadmill displayed at IHRSA in 2009 was on sale prior to October 29 and November 1, 2009. (JSOF (WW) ¶ 47.) According to Astilean, following the curved manual treadmill's "instant success" at IHRSA, the treadmills began to sell at health and fitness clubs in the Unites States during the summer of 2009. (JSOF (WW) ¶¶ 43-45.)

On March 17, 2009, Woodway's counsel filed U.S. Provisional Application, serial no. 61/161,027, on behalf of applicant Nicholas Oblamski ("Oblamski Provisional"). (See ECF No. 268-29, Vodopia Decl., Ex. PL17.) The Oblamski Provisional disclosed a curved treadmill that "can use a main pulley system and a secondary pulley system on either end to control a main belt and a synchronous belt for a safe and comfortable curved running surface." (Oblamski Provisional 1 (Summary [0002] ).)4 Not long after Woodway filed the Oblamski Provisional, Astilean sent an email to Doug Bayerlein, among others, expressing his concern about recent developments regarding the intellectual property rights to the curved, non-motorized treadmills. (ECF No. 268-30, Vodopia Decl., Ex. PL18 (email dated 4/7/2009).) Astilean was concerned that Woodway removed Astilean's name from the "SpeedFit Speedboard prototype curved treadmill" and was showcasing the product without Speedfit's name attached. (Id. ) Astilean declared that Speedfit owned the prototype and design of the curved, non-motorized treadmill, and requested that Woodway immediately stop showcasing the prototype without proper attribution to Speedfit. (Id. ) Astilean closed the email by expressing interest in a future business relationship, contingent on Woodway ceasing its unauthorized use of the treadmill prototype, and urged Bayerlein to contact Astilean's counsel to "discuss a possible licensing arrangement[ ][.]" (Id. )

Bayerlein responded later in the day. He reassured Astilean that the Speedfit name was still being used on Woodway's website, and that the only reason Astilean's name was not being associated with the product was because the name of the designer was not important to potential customers of the curved, non-motorized treadmill. (Id. ) Bayerlein seemingly offered to attribute the design to Astilean, but first demanded that Astilean explain "what you feel is patentable or what you indeed did design," because, in Bayerlein's view, the curved...

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