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Chapco, Inc. v. Woodway USA, Inc.

United States District Court, D. Connecticut

July 24, 2018

CHAPCO, INC. and SAMSARA FITNESS, LLC Plaintiffs,
v.
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)

          Janet C. Hall United States District Judge

         I. INTRODUCTION

         Pending 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).

         For the reasons stated below, both Motions are DENIED.

         II. BACKGROUND

         On 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.[1] 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.

         On 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 other terms.

         The 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).

         As to 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.

         As to 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.

         Because 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.

         Finally, 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.

         With 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.

         While 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.

         The 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).

         III. LEGAL STANDARD

         A 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).

         In 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 to believe.

Rogoz v. City of Hartford, 796 F.3d 236, 245-46 (2d Cir. 2015) (internal quotation marks, citation, and emphasis omitted).

         IV. ...


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