United States District Court, D. Connecticut
CHAPCO, INC. and SAMSARA FITNESS, LLC Plaintiffs,
WOODWAY USA, INC. Defendant.
RULING RE: PLAINTIFFS' MOTION FOR SUMMARY
JUDGMENT OF NON-INFRINGEMENT AND INVALIDITY (DOC. NO. 252)
AND WOODWAY'S MOTION FOR SUMMARY JUDGMENT OF INFRINGEMENT
(DOC. NO. 255)
C. Hall United States District Judge
before the court are the parties' Cross-Motions for
Summary Judgment regarding the recently introduced Generation
III TrueForm Runner treadmill (the “Gen. III”).
See Plaintiffs' Motion for Summary Judgment of
Non-Infringement and Invalidity (“Plaintiffs'
MFSJ”) (Doc. No. 252); Woodway's Motion for Summary
Judgment of Infringement (“Woodway's MFSJ”)
(Doc. No. 255).
reasons stated below, both Motions are
December 29, 2015, the plaintiffs, Chapco, Inc.
(“Chapco”) and Samsara Fitness, LLC
(“Samsara”), filed the Amended Complaint against
the defendant, Woodway USA, Inc. (“Woodway”).
See Amended Complaint (“Am. Compl.”)
(Doc. No. 27). The Amended Complaint seeks, inter
alia, a declaratory judgment that the TrueForm Runner
treadmill (the “Gen. II”) does not infringe
Woodway's U.S. Patent No. 9, 039, 580 (the
“‘580 Patent”) and that the ‘580
Patent is invalid. See id. at ¶¶ 33-40.
Woodway filed its Answer to the Amended Complaint on July 25,
2016, asserting a number of counterclaims including,
inter alia, infringement of claims 1, 4-6, 10-14,
18- 20, and 25 of the ‘580 Patent. See Answer,
Affirmative Defenses, and Counterclaims
(“Answer”) (Doc. No. 54) at ¶¶ 18-26.
December 8, 2016, after briefing and oral argument, the court
issued a Claim Construction Ruling, construing the 9 terms
identified by the parties to be in dispute. See
Claim Construction Ruling (Doc. No. 76). These 9 terms
included 3 terms that were used in claim 25 of the ‘580
patent: frame, bearing rail, and running belt. See
Woodway's Local Rule 56(a)(1) Statement of Facts
(“Woodway's L.R.56(a)(1)”) (Doc. No. 257, Ex.
B (“‘580 Patent”) (Doc. No. 257-2) at Col.
36, L. 1-17. Neither party asked the court to construe any
deadline for dispositive motions was May 1, 2017.
See Minute Entry (Doc. No. 72). The plaintiffs and
Woodway both filed Cross-Motions for Summary Judgment on May
1, 2017. See Plaintiffs' Motion for Summary
Judgment (“Plaintiffs' Original MFSJ”) (Doc.
No. 88); Woodway's Motion for Summary Judgment
(“Woodway's Original MFSJ”) (Doc. No. 94).
The court issued its Ruling on September 26, 2017.
See Ruling on Plaintiffs' Motion for Summary
Judgment and Woodway's Motion for Summary Judgment
(“SJ Ruling”) (Doc. No. 144).
infringement of the ‘580 Patent, Woodway moved for
summary judgment against Samsara that the Gen. II infringes
claims 1, 6, 19, and 20 of the ‘580 Patent.
See Memorandum in Support of Woodway's Original
MFSJ (“Woodway's Original Mem. in Supp.”)
(Doc. No. 97) at 20-28. Woodway did not move for summary
judgment as to claim 25. Chapco and Samsara moved for summary
judgment that the Gen. II does not infringe any of the claims
of the ‘580 Patent, including claim 25. See
Memorandum in Support of Plaintiffs' Original MFSJ
(“Plaintiffs' Original Mem. in Supp.”) (Doc.
No. 88-1) at 8-17 (arguing that the accused products do not
infringe the “Asserted Claims”); id. at
1 (defining the “Asserted Claims” as claims 11-16
of the ‘169 Patent and claims 1, 4-6, 10-14, 18-20, and
25 of the ‘580 Patent). The court granted Woodway's
Motion as to infringement of claims 1, 6, 19, and 20 of the
‘580 Patent and denied the plaintiffs' Motion as to
non infringement of the Asserted Claims. See SJ
Ruling at 19.
invalidity of the ‘580 Patent, Woodway moved for
summary judgment that the ‘580 Patent was not
anticipated by Socwell or Schmidt; made obvious by
combinations of Schmidt and Chickering, Schmidt and Magid, or
Schmidt and Ziebell; or invalid under section 112 of title 35
of the United States Code for indefiniteness, lack of written
description, or lack of enablement. See
Woodway's Original Mem. in Supp. at 30-39. Chapco and
Samsara moved for summary judgment that the “Asserted
Claims, ” including claim 25, are invalid because they
are rendered obvious by Socwell either alone or in
combination with Chickering, Magid, and/or Schmidt.
See Plaintiffs' Original Mem. in Supp. at 27-37.
the court declined to consider the plaintiffs' expert
report to the extent the opinion was not disclosed in the
plaintiffs' Invalidity Contentions, the court granted
summary judgment for Woodway as to obviousness based on
combinations of Schmidt and Chickering, Schmidt and Magid,
and Schmidt and Ziebell. See SJ Ruling at 38-39. On
all other combinations of obviousness raised, however, the
court denied summary judgment because it found that there was
a genuine issue of material fact as to what a person of
ordinary skill in the art would be, and whether such a person
would have had a motivation to combine. See id. at
35-39. The court also granted summary judgment for Woodway on
the issues of anticipation by Socwell and Schmidt,
indefiniteness, lack of written description, and enablement.
See id. at 39-41.
on the issue of Chapco's liability, the plaintiffs moved
for summary judgment that Chapco is not liable for
infringement of the patents under a theory of direct
infringement, alter ego, or indirect infringement.
See Plaintiffs' Original Mem. in Supp. at 4-8.
The court granted summary judgment for the plaintiffs on the
theory of indirect infringement because Woodway failed to
disclose that theory in its Infringement Contentions.
See SJ Ruling at 8-10. The court denied summary
judgment on the theories of direct infringement and alter
ego, however, because it found a genuine issue of material
fact existed as to whether Chapco makes the products and as
to whether Chapco and Samsara are alter egos of Weinstein.
See id. at 6-8, 10-12.
trial set to begin on May 14, 2018, the court held three
Pretrial Conferences on April 10, 2018, April 12, 2018, and
April 30, 2018. In preparing the case for trial, Woodway
dismissed with prejudice a number of its counterclaims,
including its claim that the Gen. II infringes claims 4-5,
10-14, 18, and 25 of the ‘580 Patent. See
Motion to Dismiss (Doc. No. 244) at 2.
the parties were preparing for trial, Chapco and Samsara had
redesigned the Gen. II into a new Generation III model
(“the Gen. III”) that they intended to introduce
on the market on May 15, 2018, in the middle of trial.
See Transcript, April 12, 2018, Pretrial Conference
(“4/12/18 Tr.”) (Doc. No. 238) at 279. Based on
its expert's evaluation of the Gen. III, Woodway asserted
that the Gen. III infringes claim 25 of the ‘580 Patent
and sought leave to add the issue of the Gen. III's
infringement to the current litigation. See id. at
279-80. Claim 25 is a method claim. See ‘580
Patent at Col. 36, L. 1-17. Although Woodway withdrew its
claim for infringement of claim 25 as to the Gen. II, it
argued that claim 25 had been present in the case from the
beginning and was properly alleged in the Amended Complaint.
See id. at 280-81. The plaintiffs stated a
preference for excluding the Gen. III from this case and
instead resolving it in a separate lawsuit, but recognized
that permitting Woodway to try the Gen. III along with the
Gen. II was within the court's discretion. See
id. at 283-84, 290. Partly as a result of unrelated
scheduling conflicts that required the case to be continued
until October, the court permitted the parties to add Gen.
III to the current case. See Transcript, April 30,
2018, Pretrial Conference (“4/30/18 Tr.”) (Doc.
No. 247) at 367-68.
parties agree that “[t]he only changes made between the
Gen II TrueForm Runner treadmill and the Gen III relate to
the wheels' location when the treadmill is in use, and
the rear shaft assembly and its attachment to the
frame.” Woodway's L.R.56(a)(1) at ¶ 1;
Plaintiffs' Local Rule 56(a)(2) Statement of Facts in
Opposition to Summary Judgment (“Plaintiffs'
L.R.56(a)(2)”) (Doc. No. 265) at Resp. No. 1 (admitting
the above statement from Woodway's Local Rule 56(a)(1)
Statement of Facts). The parties further agree that
“[c]laim 25 of the ‘580 patent does not require
the elements of ‘wheels' or a ‘rear
shaft.'” Woodway's L.R.56(a)(1) at ¶ 2;
Plaintiffs' L.R.56(a)(2) at Resp. No. 2 (also admitting
the above statement).
motion for summary judgment may be granted only where
“there is no genuine dispute as to any material fact
and the moving party is entitled to judgment as a matter of
law.” Fed.R.Civ.P. 56(a); see also Redd v. N.Y.Div.
of Parole, 678 F.3d 166, 173- 74 (2d Cir. 2012). The
moving party bears the burden of “showing-that is
pointing out to the district court-that there is an absence
of evidence to support the nonmoving party's case.”
PepsiCo, Inc. v. Coca-Cola Co., 315 F.3d 101, 105
(2d Cir. 2002) (internal quotation marks and citations
omitted). “Once a party moving for summary judgment has
made the requisite showing that there is no factual dispute,
the nonmoving party bears the burden of presenting evidence
to show that there is, indeed, a genuine issue for
trial.” Santos v. Murdock, 243 F.3d 681, 683
(2d Cir. 2001). “For summary judgment purposes, a
‘genuine issue' exists where the evidence is such
that a reasonable jury could decide in the non-moving
party's favor.” Cambridge Realty Co., LLC v.
St. Paul Fire & Marine Ins. Co., 421 Fed. App'x
52, 53 (2d Cir. 2011).
reviewing the record, the court must “construe the
evidence in the light most favorable to the non-moving party
and draw all reasonable inferences in its favor.”
Gary Friedrich Enters., L.L.C. v. Marvel
Characters, Inc., 716 F.3d 302, 312 (2d Cir. 2013).
The function of the district court in considering the motion
for summary judgment is not to resolve disputed questions of
fact but only to determine whether, as to any material issue,
a genuine factual dispute exists. . . . Summary judgment is
inappropriate when the admissible materials in the record
make it arguable that the claim has merit, for the court in
considering such a motion must disregard all evidence
favorable to the moving party that the jury is not required
Rogoz v. City of Hartford, 796 F.3d 236, 245-46 (2d
Cir. 2015) (internal quotation marks, citation, and emphasis