In an unusual sequence of events, Judge Freeman reconsidered and withdrew her previous ruling that plaintiff Fitness Anywhere LLC’s (“TRX”) Patent No. 7,806,814 (“’814 Patent”) was invalid.

TRX accused defendant Woss Enterprises LLC’s (“Woss”) of infringing the ’814 Patent via sales of Woss’s resistant exercise bands.  In August 2016, Judge Freeman granted Woss’s motion for summary judgment that the ’814 Patent was invalid as obvious in light of U.S. Patent No. 7,044,896 (“’896 Patent”) and U.S. Patent No. 7,090,622 (“’622 Patent”).  All three patents have the same named inventor.

In March 2017, a jury awarded TRX $6.76 million in lost profits and other damages, finding that Woss had willfully infringed the ’896 and ’622 Patents and TRX’s trademark.  Less than two months later and before TRX could enforce the judgment, Woss filed for Chapter 7 bankruptcy, triggering an automatic stay that would not be lifted for over a year.[1]

During that year, TRX noticed what appeared to be a new company selling the same infringing product through an online marketplace.  The online market place confirmed that the infringing product was being sold by an individual having the same name and located at the same address as defendant Woss.  Armed with this new evidence of continued infringement, TRX successfully moved to lift the stay in September 2018.[2]

Thus revived, the patent infringement case in Judge Freeman’s court saw TRX moving for reconsideration of the original ruling from August 2016 that the ’814 Patent was invalid as obvious in light of the ’896 and ’622 Patents.  In the original ruling, Judge Freeman found that the primary difference between the ’814 Patent and the prior art was “a second loop attached to said hand grip, where said second loop is a continuous loop which passes through said hand grip.”  The prior art ’896 Patent taught a hand grip that could be formed with a loop passing through the grip and the hand grip could be integrally attached.  The prior art ’622 Patent taught a second loop and grip but did not teach integrally attaching them to the exercise device.  In her original ruling, Judge Freeman found that a skilled artisan would improve the ’622 Patent by integrally attaching the loop and grip and that such improvement would require only combining simple elements disclosed in the prior art.

After the stay was lifted, Judge Freeman reconsidered her prior ruling and agreed with TRX that Woss did not provide sufficient evidence to support a finding of invalidity.  Judge Freeman started by reiterating the heavy burden to invalidate a patent, particularly where a prior art reference was considered by the PTO during its prosecution and it was Woss’s burden to provide evidence showing invalidity.  After emphasizing these burdens, Judge Freeman found that, despite her earlier ruling, Woss did not provide enough evidence to support a finding of invalidity because it simply relied on the argument that no expert testimony was required given the “simplicity of the subject matter.”  In her second look, Judge Freeman found that such evidence was required because common sense might not have led a skilled artisan to convert the detachable loop and grip from the ’622 Patent into an integral second loop and grip as required by the claims.  For instance, the ’622 Patent espoused the virtues of using multiple add-on grip accessories because doing so broadened the use of the device.  TRX argued that evidence was needed on a skilled artisan’s thought process on issues like “how these products are built and assembled, how they are stitched, if two of these straps can pass in these small handles, or better yet, how installing one permanent foot strap could interfere with the use of other accessories.”  Judge Freeman agreed.  Judge Freeman also took notice, albeit only slight, of TRX’s evidence of secondary considerations of non-obviousness.  In light of these facts, Judge Freeman found insufficient evidence to support an obvious finding and overturned her prior ruling.

 

Fitness Anywhere LLC v. Woss Enterprises LLC, Case No. 5:14-cv-01725-BLF, Dkt. 293 (N.D. Cal. October 25, 2018).


Endnotes:

[1]  Fitness Anywhere LLC v. Woss Enterprises LLC, Case No. 5:14-cv-01725-BLF, Dkt. 282 at 1-2 (“Plaintiff’s Status Report”) (N.D. Cal. Sep. 18, 2018).

[2]  Id. at 5-6.