1 2 3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA 5 SAN JOSE DIVISION 6 7 NOSSK, INC., Case No. 21-cv-08914-BLF
8 Plaintiff, ORDER DENYING PLAINTIFF 9 v. NOSSK, INC.’S MOTION FOR PRELIMINARY INJUNCTION 10 FITNESS ANYWHERE LLC, et al., [Re: ECF No. 28] 11 Defendants.
12 13 Before the Court is Plaintiff NOSSK, Inc.’s (“NOSSK”) motion for preliminary injunction 14 against Defendant Fitness Anywhere LLC d.b.a. TRX (“TRX”) in this declaratory judgment action 15 for noninfringement and invalidity of TRX’s patent—U.S. Patent No. 8,083,653 (the “’653 Patent”). 16 This action stems from TRX’s patent infringement complaint to Amazon regarding two of the 17 products NOSSK sold via Amazon, which resulted in NOSSK’s products being delisted. In its 18 motion for preliminary injunction, NOSSK seeks a mandatory injunction requiring TRX to 19 withdraw its complaint to Amazon regarding NOSSK’s products, which it argues do not infringe 20 TRX’s patent. TRX opposes, arguing that NOSSK fails to show that it is entitled to a preliminary 21 injunction. 22 Based on the below reasoning, the Court DENIES NOSSK’s motion for preliminary 23 injunction. 24 I. BACKGROUND 25 A. Prior Litigation 26 On November 29, 2021, the Court found that the above-captioned case is related to a case 27 previously before this Court: Fitness Anywhere LLC v. WOSS Enterprises LLC, 1 WOSS Enterprises LLC (“WOSS”) is an entity co-owned by NOSSK CEO and co-owner Wolfgang 2 Ott and NOSSK director and co-owner Nadia Ott. 3 TRX filed the WOSS Action on April 14, 2014, alleging based on WOSS’s manufacture and 4 sales of exercise equipment products that it engaged in (1) patent infringement, including of U.S. 5 Patent No. 7,806,814 (the “’814 Patent”); (2) trademark infringement; (3) unfair competition under 6 federal and California state law; and (4) tortious interference with prospective economic 7 relationships. See WOSS Action, ECF No. 1. 8 The WOSS Action went to trial in March 2017, including based on TRX’s infringement 9 claim of U.S. Patent No. 7,044,896 (the “’896 Patent”) as to the following WOSS products: (1) the 10 Titan 1 1/2 in. Wide Strap; (2) the 3000 Equalizer; (3) the Military Gym Style; (4) the Military 1 in. 11 Trainer; (5) the Military 1 1/2 in. Trainer; and (6) the WOSS XT. See WOSS Action, ECF No. 174 12 at 3. Following trial, the jury returned a verdict that WOSS infringed the ’896 Patent. See WOSS 13 Action, ECF No. 235. 14 Following the jury verdict, WOSS filed notice that it had filed for Chapter 7 bankruptcy. 15 See WOSS Action, ECF No. 253. Further, on September 18, 2018, TRX filed a motion for 16 reconsideration of the Court’s summary judgment order finding the ’814 Patent invalid. See WOSS 17 Action, ECF No. 281. The Court granted the unopposed motion, thereby denying summary 18 judgment of invalidity regarding the ’814 Patent. See WOSS Action, ECF No. 293. On November 19 20, 2018, the Court entered a permanent injunction against WOSS enjoining it from making, using, 20 offering to sell, or selling within the United States any of the six products the jury found infringing 21 of the ’896 Patent. See WOSS Action, ECF No. 296. The Court issued a final judgment in the 22 amount of $13,002,462.70 against WOSS. See WOSS Action, ECF No. 305. 23 B. Factual Background 24 TRX is a Delaware corporation with its principal place of business in California. See 25 Complaint, ECF No. 1 ¶ 2. TRX markets and sells exercise equipment products, including 26 suspension trainers, on its website and via third parties like Dick’s Sporting Goods and 27 Amazon.com. See id. ¶¶ 5–8. NOSSK is a California corporation with its principal place of business 1 “high quality suspension bodyweight fitness strap trainers and related devices” via its own website 2 and through third parties like Amazon.com. See id. ¶ 10. NOSSK alleges that Amazon.com sales 3 typically account for 90% of its sales. See id.; Ott Decl., ECF No. 28-22 ¶ 28. NOSSK’s products 4 allegedly include the Home Trainer (“Home Product”) and the Twin Pro Suspension Bodyweight 5 Fitness Strap Trainer (“Twin Pro Product”). See Complaint, ECF No. 1 ¶ 10; Ott Decl., ECF No. 28- 6 22 ¶ 3. 7 On November 25, 2019, TRX allegedly sent NOSSK a letter indicating that the Home 8 Product infringed TRX’s patents—specifically, the ’814 Patent asserted in the WOSS Action and 9 the ’653 Patent at issue here—and the Twin Pro Product infringed the ’814 Patent. See Mathiowetz 10 Decl., ECF No. 28-1, Ex. L at 4–5; Ott Decl., ECF No. 28-22 ¶ 21; Complaint, ECF No. 1 ¶ 33. In 11 response to TRX’s letter, NOSSK allegedly removed the products from all websites, including 12 Amazon.com, and redesigned the products. See Complaint, ECF No. 1 ¶¶ 34–35; Ott Decl., 13 ECF No. 28-22 ¶¶ 22–23, 26; Mathiowetz Decl., ECF No. 28-1, Exs. M–N. NOSSK indicated in a 14 January 14, 2020 letter to TRX that it had redesigned the Home and the Twin Pro Product so it 15 “copies the prior art acknowledged by TRX in the prosecution of the ’814 patent.” See Mathiowetz 16 Decl., ECF No. 28-1, Ex. N at 1. NOSSK indicated that it did not consider the Home Product to 17 infringe the ’653 Patent. See id. at 1–2. In response, TRX sent NOSSK a letter on January 27, 2020 18 indicating that it still considered the Home and Twin Pro Products to infringe its patents. See 19 Mathiowetz Decl., ECF No. 28-1, Ex. O. 20 As of July 2021, NOSSK was selling the allegedly redesigned versions of the Home and 21 Twin Pro Products, including through Amazon.com. See Ott Decl., ECF No. 28-22 ¶¶ 8–9; 22 Complaint, ECF No. 1 ¶¶ 12–15. The Home Product consists of a single strap with handles and foot 23 loops on either end, and a short metal tube sown into the middle of the strap. See Complaint, 24 ECF No. 1 ¶ 12; Mathiowetz Decl., ECF No. 28-1, Ex. A. By shutting the Home Product anchor 25 behind a door, a user can secure the strap and use it as a suspension trainer. See Complaint, ECF No. 26 1 ¶ 12; Mathiowetz Decl., ECF No. 28-1, Ex. A; Ott Decl., ECF No. 28-22 ¶ 3. An image of the 27 Home Product is below: 1 EH Built-In 2 DOOR ANCHOR 3 | closeup 4 5 6 7 8 9 10 11 = 12 || The Twin Pro Product consists of two separate straps, each with a handle on one end and a door
& 13 anchor sown into the other end. See Complaint, ECF No. 1 § 13; Mathiowetz Decl., ECF No. 28-1,
5 14 || Ex. B. An image of the Twin Pro Product is below: ‘ 15 GT Q. 16
= 17 6 Built-in Z 18 Door ANCHO 19 closeu 20 21 22 23 24 25 On or about July 16, 2021, TRX allegedly submitted a complaint to Amazon indicating that 26 NOSSK’s products infringed the °653 Patent. See Complaint, ECF No.1 915; Ott Decl., 27 ECF No. 28-2 46. In response, Amazon removed Twin Pro and Home Product listings from its 28
1 website. See Complaint, ECF No. 1 ¶ 16; id., Ex. D; Ott Decl., ECF No. 28-22 ¶ 7; Mathiowetz 2 Decl., ECF No. 28-1, Ex. C. Between July 31 and September 3, 2021, NOSSK submitted appeals 3 to Amazon regarding the takedown of the product listings. See Complaint, ECF No. 1 ¶¶ 19–23, 4 26–27; Ott Decl., ECF No. 28-22 ¶¶ 11–15, 17–18; Mathiowetz Decl., ECF No. 28-1, Ex. E. 5 Amazon denied the appeals, indicating that it required proof of authorization from TRX by license 6 or purchase or retraction of the complaint before it would consider reinstating any of the product 7 listings. See Complaint, ECF No. 1 ¶¶ 19–23, 26–27; Ott Decl., ECF No. 28-22 ¶¶ 11–15, 17–18. 8 Following the denial of NOSSK’s appeals, NOSSK allegedly sent several letters to TRX 9 indicating that the redesigned Twin Pro and Home Products did not infringe the ’653 Patent and 10 requesting that TRX provide NOSSK analysis indicating why it believed NOSSK’s products were 11 infringing. See Complaint, ECF No. 1 ¶¶ 24–25, 28–30, 32; Ott Decl., ECF No. 28-22 ¶¶ 15–16, 12 19; Mathiowetz Decl., ECF No. 28-1, Exs. F–H, J. In response, NOSSK alleges that TRX did not 13 explain why it considered the Twin Pro and Home Products to infringe the ’653 Patent, and it 14 deferred to its 2019 and 2020 correspondence regarding NOSSK’s products before they were 15 allegedly redesigned. See Complaint, ECF No. 1 ¶¶ 31, 33; Ott Decl., ECF No. 28-22 ¶¶ 20–21; 16 Mathiowetz Decl., ECF No. 28-1, Exs. I, K. 17 On November 17, 2021, NOSSK filed its Complaint, seeking declaratory judgment of 18 noninfringement of the Home and Twin Pro Products and invalidity of the ’653 Patent. See 19 Complaint, ECF No. 1 ¶¶ 50–56. Further, NOSSK claims that by submitting the complaint to 20 Amazon, TRX is liable under California law for (1) trade libel; (2) defamation; (3) violation of the 21 California Unfair Competition Law (“UCL”); (4) tortious interference with a business relationship; 22 and (5) interference with prospective economic advantage. See id. ¶¶ 57–94. On January 3, 2022, 23 NOSSK filed its motion for preliminary injunction, seeking a mandatory injunction requiring TRX 24 to withdraw its complaint to Amazon regarding NOSSK’s products. See Motion, ECF No. 28. TRX 25 opposes. See Opposition, ECF No. 36. 26 C. ’653 Patent 27 TRX owns the ’653 Patent, which is entitled “Exercise Device Having a Door Anchor.” The 1 2007. See ’653 Patent at 1. The ’653 Patent was granted on December 27, 2011. See id. 2 The ’653 Patent has 8 claims—one independent claim (claim 1) and seven dependent claims 3 (claims 2–8). Independent claim 1 provides the following: 4 1. An exercise device for mounting between a door and a door jamb 5 of a closed door, said exercise device comprising:
6 an anchor having a first portion, an enlarged portion, and an elongate portion that extends between said first portion and said enlarged 7 portion, and
8 a pair of portions, where each of the pair of portions is inelastic and has a length that extends from a corresponding grip to an end, and 9 where each of said ends is fixedly connected to said first portion,
10 where, when said anchor is mounted to the closed door:
11 said elongated portion extends from a first side of the closed door to a second side of the closed door, 12 said enlarged portion is not passable through the closed door, and 13 said first portion extends away from the second side of said door by a 14 distance. 15 Dependent claims 2 through 6 of the ’653 Patent provide that the “distance” in claim 1 is various 16 lengths: greater than 1 inch (claim 2); greater than 2 inches (claim 3); greater than 4 inches (claim 17 4); greater than 6 inches (claim 5); and between 1 inch and 18 inches (claim 6). Dependent claim 7 18 provides that the length between “said grip and said end of each of the pair of portions” is 19 independently adjustable. Dependent claim 8 provides that the length between “said anchor and 20 each grip” is adjustable. 21 The ’653 Patent pertains to resistance exercise devices, which the specification describes as 22 “allow[ing] a user to exercise by providing a resistance to the movement of a user’s arms, legs, or 23 torso.” See ’653 Patent, 1:15–25. The ’653 Patent discloses “an inelastic exercise device that is 24 supported by, or that can be easily attached to, a supporting structure, and that allows a user to 25 perform a large number of exercises by easily adjusting the length of the device[.]” Id., 3:14–17. 26 The ’653 Patent provides an exercise device containing a pair of inelastic portions, which can be 27 adjustable. See id., 1:56–59, 2:62–3:19, 3:27–33, 4:47–51, Figs. 3–4, 10. One end of each of the 1 other end of each of the pair of portions is attached to an anchor that a user can close in a door to 2 fix it in place for the purpose of holding the user’s weight while exercising. See id., 1:61–63, 3 3:27–30, 3:63–4:8, 4:33–46, 4:52–5:3, Figs. 1–4, 10–12. The anchor consists of (1) a “first portion,” 4 which attaches to the ends of the pair of portions; (2) an “elongated portion,” which extends from 5 one side of the door to the other; and (3) an “enlarged portion,” which is a piece that is too large to 6 move through the crack between the door and the door frame and therefore holds the device in place. 7 See id., 1:63–67, 5:40–6:50, Figs. 1–4, 10–12. 8 II. LEGAL STANDARD 9 A party may obtain a preliminary injunction by showing that (1) it is “likely to succeed on 10 the merits,” (2) it is “likely to suffer irreparable harm in the absence of preliminary relief,” (3) the 11 “balance of equities tips in [its] favor,” and (4) “an injunction is in the public interest.” Winter v. 12 Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). The burden is always on the movant to show 13 that it is likely to succeed on the merits. BlephEx, LLC v. Myco Indus., Inc., 24 F.4th 1391, 1398 14 (Fed. Cir. 2022). To obtain a preliminary injunction, a movant must make a “clear showing” that it 15 is entitled to the “extraordinary remedy” of a preliminary injunction. See Winter, 555 U.S. at 22. 16 Although Ninth Circuit law applies to preliminary injunctions, dominant effect is given to 17 Federal Circuit precedent insofar as it reflects considerations specific to patent issues. See Macom 18 Tech. Sols. Holdings, Inc. v. Infineon Techs. AG, 881 F.3d 1323, 1328 (Fed. Cir. 2018) (quoting 19 Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 894 (Fed. Cir. 1998)). In the patent 20 law context, showing a likelihood of success on the merits is one such area where Federal Circuit 21 law applies, as it is a question specific to patent law. See Revision Mil., Inc. v. Balboa Mfg. Co., 22 700 F.3d 524, 526 (Fed. Cir. 2012). 23 Since NOSSK seeks to compel TRX to act—i.e., by withdrawing its complaint to Amazon— 24 prior to the entry of a final judgment, NOSSK seeks a mandatory injunction. A mandatory 25 injunction is “one that goes beyond simply maintaining the status quo and orders the responsible 26 party to take action pending the determination of the case on its merits.” See Doe v. Snyder, 28 27 F.4th 103, 111 (9th Cir. 2022). “The standard for issuing a mandatory preliminary injunction is 1 will result and are not issued in doubtful cases or where the injury complained of is capable of 2 compensation in damages.” Id. (quoting Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & 3 Co., 571 F.3d 873, 879 (9th Cir. 2009)) (internal quotations omitted). 4 III. DISCUSSION 5 A. Likelihood of Success on the Merits 6 1. Burden of Proof 7 As a threshold matter, the Court considers which party has the relevant burden of proof at 8 this stage. NOSSK argues that TRX has the burden of showing infringement and NOSSK has the 9 burden of showing invalidity at this stage, since the “burdens at the preliminary injunction stage 10 track the burdens at trial.” Motion, ECF No. 28 at 8 (citing Perfect 10, Inc. v. Amazon.com, Inc., 11 508 F.3d 1146, 1158 (9th Cir. 2007)). 12 NOSSK is incorrect as to the burden of proof regarding infringement. “The burden is always 13 on the movant to show that it is likely to succeed on the merits.” BlephEx, 24 F.4th at 1398–99; see 14 Perfect 10, 508 F.3d at 1158 (“[O]nce the moving party has carried its burden of showing a 15 likelihood of success on the merits, the burden shifts to the non-moving party to show a likelihood 16 that its affirmative defense will succeed.”). NOSSK is required to show likelihood of success on 17 the merits that its products do not infringe the ’653 Patent or that the ’653 Patent is invalid. If 18 NOSSK meets its burden, then the burden shifts to TRX to raise a “substantial question” as to 19 noninfringement or invalidity. See BlephEx, 24 F.4th at 1398–99. If NOSSK cannot show that 20 TRX’s infringement and validity case “lacks substantial merit,” then the preliminary injunction 21 should not issue. Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1325 (Fed. Cir. 22 2004) (quoting Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350–51 (Fed. Cir. 23 2001)). NOSSK appears to seek to import the burdens of proof for preliminary injunction motions 24 brought by a patentee, which do not apply to the present preliminary injunction motion brought by 25 an accused infringer in a declaratory judgment action. 26 2. Noninfringement 27 NOSSK argues that it is likely to succeed in showing that the Twin Pro and Home Products 1 || NOSSK’s noninfringement positions are “nonsensical.” See Opposition, ECF No. 36 at 3-7. The 2 Court considers NOSSK’s noninfringement arguments for the Twin Pro and Home Products in turn. 3 a. Home Product 4 NOSSK argues that the Home Product does not infringe the ’653 Patent based on the doctrine 5 of prosecution history estoppel. “A patentee may, through a clear and unmistakable disavowal in 6 || the prosecution history, surrender certain claim scope to which he would otherwise have an 7 exclusive right by virtue of the claim language.” Vita-Mix Corp. v. Basic Holding, Inc., 8 || 581 F.3d 1317, 1324 (Fed. Cir. 2009). “Prosecution disclaimer can arise from both claim 9 amendments and arguments made to the PTO.” Tech. Props. Ltd. v. Huawei Techs. Co., 10 849 F.3d 1349, 1357 (Fed. Cir. 2017) (citation omitted). When determining whether disclaimer 11 applies, courts consider the statements in the context of the entire prosecution history. See MIT vy. 12 Shire Pharm., Inc., 839 F.3d 1111, 1119-20 (Fed. Cir. 2016). If the challenged statements are 13 ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not |] established. Jd, at 1119. 3 15 Claim 1 of the °653 Patent requires “a pair of portions, where each ... has a length that 16 || extends from a corresponding grip to an end, and where each of said ends is fixedly connected to 3 17 said first portion” of an anchor. See id. at9. An image of the Home Product is below: 18 —_—-
20 21 22 23 24 J J) 25 26 || As shown in the image, the Home Product consists of a single, continuous strap with two grips at the ends and an anchor in the middle. 28 NOSSK argues that during prosecution, TRX disclaimed a single-strap device from the
1 scope of claim 1 by “repeatedly emphasiz[ing] the significance” of having an anchor affixed to two 2 straps in order to overcome the Hetrick Reference (U.S. Patent No. 7,090,622). See Motion, 3 ECF No. 28 at 8–11. NOSSK points to various statements by TRX throughout prosecution of the 4 ’653 Patent where NOSSK described the Hetrick Reference as “having a single elongated member” 5 and containing no teaching of “more than one elongated member having grips.” See Mathiowetz 6 Decl., ECF No. 28-1 ¶ 19(a) (citing Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 Prosecution 7 History at 16–17); id. ¶ 19(b) (citing Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 Prosecution 8 History at 35–36); see also id. ¶¶ 19(c)–(d). Further, NOSSK points to TRX’s amendment of the 9 claims during prosecution to require that the “pair of portions” each has “an end, and where each of 10 said ends is attached to said first portion.” See id. ¶ 19(b) (citing Mathiowetz Decl., ECF No. 28-1, 11 Ex. R, ’653 Prosecution History at 31).1 12 Based on the prosecution history, NOSSK argues that in order to obtain allowance of its 13 claims, TRX disclaimed embodiments consisting of a single strap. See Motion, ECF No. 28 at 9–11. 14 Accordingly, NOSSK argues that the embodiment shown in Figure 4 of the ’653 Patent, which 15 shows a single continuous strap connected to the first portion of the anchor, is “no longer 16 representative of a preferred or claimed embodiment[.]” See Motion, ECF No. 28 at 10. Figure 4 17 is shown below: 18 19 20 21 22 23 24 1 The Court notes that nearly the entirety of NOSSK’s arguments and analysis regarding TRX’s 25 statements during the prosecution history are contained within a declaration attached to its Motion— not in the brief itself. The Court considers this to be an improper attempt to evade its page count 26 requirements. Since TRX does not object in its Opposition, the Court declines to strike NOSSK’s evidence and arguments regarding the prosecution history contained in the Mathiowetz Declaration 27 sua sponte. But the Court hereby ADMONISHES NOSSK. If NOSSK continues to improperly 1 eee 2 400 0
4 GO (Ke ES aS 6 oT eet “aS 7 FIG, 4 8 9 In response, TRX argues that the pair of portions in claim 1| of the °653 Patent can be a single 19 || Strap—‘the same way a pair of pants has a pair of legs.” See Opposition, ECF No. 36 at 4. TRX 11 argues that the claims of the °653 Patent cover both multiple- and single-strap embodiments. See
2 id. at 3-4; °653 Patent, 5:28—30; id., 9:32—10:4. Further, TRX argues that NOSSK misconstrues the E 13 °653 prosecution history. Rather than avoiding the Hetrick Reference by amending the claims to 14 || tequire a pair of separate portions—and to exclude a single continuous strap—TRX argues that it 3 15 overcame the Hetrick Reference by requiring a pair of portions fixed to the first portion of the anchor. 16 || See Opposition, ECF No. 36 at 4-6. TRX points to the examiner’s comments in the November 24, 5 || 2010 final rejection, where the examiner stated that “there are differences between the prior art and 5 18 the claimed invention, viz, that the attachment is slidable in Hetrick and fixed in Applicant’s device, 19 || but the Applicant has not yet claimed that the attachment to the first portion of the anchor is fixed.” 20 Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 Prosecution History at 64. TRX argues that the examiner’s comments “would make no sense” if it had disclaimed a continuous strap, because “only 92 || the continuous strap can slide.” See Opposition, ECF No. 36 at 6. TRX also points to its subsequent 23 amendment of claim 1 of the ’653 Patent to require that the ends of the pair of portions are “fixedly” 24 connected to the first portion of the anchor. See Mathiowetz Decl., ECF No. 28-1, Ex. R, □□□□ 25 Prosecution History at 66. 6 The Court finds that TRX has submitted substantial evidence supporting its claim that the 97 || Home Product infringes claim 1 of the Patent. The examiner’s statement in the November 24, 2g || 2010 final rejection that “the attachment is slidable in Hetrick and fixed in Applicant’s device, but
1 the Applicant has not yet claimed that the attachment to the first portion of the anchor is fixed” is 2 strong evidence that TRX did not disclaim a single-strap embodiment during prosecution. 3 Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 Prosecution History at 64. As TRX argues, in a two- 4 strap embodiment, the anchor is necessarily fixed and not slidable, so the examiner’s statement only 5 makes sense if the scope of claim 1 covered a single-strap embodiment. NOSSK argues that the 6 examiner was only stating that “after all the amendments already made by TRX,” it still was not 7 claiming the “fixed” difference—i.e., that TRX may have needed to overcome Hetrick both by 8 disavowing the single-strap embodiment and by claiming a “fixed” strap. See Reply, ECF No. 44 9 at 5. But NOSSK fails to explain how the examiner’s statement makes sense if a single-strap 10 embodiment was already disclaimed. 11 Further, NOSSK argues that TRX cannot get around its disclaimer of the single-strap 12 embodiment by using “the examiner’s statement late in the prosecution.” See Reply, ECF No. 44 13 at 5. But NOSSK ignores the pervasive evidence throughout prosecution indicating that TRX 14 considered the Hetrick Reference distinguishable based on the “fixed strap” theory. These 15 statements—which consistently accompany the statements NOSSK cites in support of its disclaimer 16 argument—make it at least ambiguous as to whether TRX’s statements during prosecution 17 constitute disclaimer of the single-strap embodiment. For example, NOSSK cites to statements 18 where TRX distinguished the Hetrick Reference because it contained a “single elongated member.” 19 See Mathiowetz Decl., ECF No. 28-1 ¶ 19(a) (citing Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 20 Prosecution History at 16–17). But in the same response to an office action, TRX also stated that 21 “[t]he elongated member [in Hetrick] is separate from the anchor and can be supported over a range 22 of locations.” See Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 Prosecution History at 16. Further, 23 in another response to an office action NOSSK cites, TRX stated that “[i]mportantly, there is no 24 teaching in Hetrick of more than one elongated member having grips, of having grips on different 25 elongated members, or of having an elongated member with grips that is fastened, affixed, or 26 otherwise attached to the anchor.” Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 Prosecution 27 History at 37. This evidence supports TRX’s argument that the ’653 claims encompass multiple 1 ECF No. 36 at 4–5. Thus, it is not sufficiently clear that TRX disavowed the single-strap 2 embodiment to traverse the Hetrick Reference—it consistently distinguished the Hetrick 3 Reference’s lack of a fixed strap. 4 NOSSK also points to TRX’s amendment of claim 1 of the ’653 Patent during prosecution 5 to require that each of the pair of portions has “an end, and where each of said ends is attached to” 6 an anchor. See id. ¶ 19(b) (citing Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 Prosecution History 7 at 31). The Court finds that at this preliminary stage, without the aid of claim construction or expert 8 discovery, the Court has insufficient evidence to make a determination as to whether this claim 9 language forecloses the use of a single strap, or whether, for instance, it could encompass multiple 10 straps stitched together. The Court is particularly reluctant to do so in light of evidence from the 11 specification and from the prosecution history indicating that claim 1 of the ’653 Patent covers a 12 single-strap embodiment. See Mathiowetz Decl., ECF No. 28-1, Ex. R, ’653 Prosecution History 13 at 64; id. at 37 (“Importantly, there is no teaching in Hetrick . . . of having an elongated member 14 with grips that is fastened, affixed, or otherwise attached to the anchor.”); ’653 Patent, 2:67–3:6 15 (describing straps “formed from two or more members joined together, as by stitching or with an 16 adhesive[.]”) 17 Accordingly, the Court finds that NOSSK has failed to meet its burden for likelihood of 18 success in showing TRX’s “clear and unmistakable disavowal” of a single-strap embodiment during 19 prosecution of the ’653 Patent. Vita-Mix, 581 F.3d at 1324. Based on NOSSK’s evidence, it is at 20 least ambiguous whether TRX disclaimed (1) a single-strap embodiment or (2) an embodiment with 21 a strap that was not fixedly connected to an anchor. Statements that are “ambiguous or amenable to 22 multiple reasonable interpretations” are not sufficient to show prosecution disclaimer. Shire 23 Pharm., 839 F.3d at 1119. Further, the examiner’s statement late in the prosecution provides strong 24 evidence that TRX did not disclaim the single-strap embodiment. See Mathiowetz Decl., ECF No. 25 28-1, Ex. R, ’653 Prosecution History at 64. 26 Based on the above reasoning, the Court finds that NOSSK has failed to show likelihood of 27 success regarding noninfringement of claim 1 of the ’653 Patent by the Home Product. b. Twin Pro Product NOSSK argues that the Twin Pro Product does not infringe the ’653 Patent because it does 2 not satisfy the claim 1 requirement of a pair of portions “fixedly connected to said first portion” of 3 the anchor, where the anchor is “an anchor having a first portion, an enlarged portion, and an 4 elongate portion that extends between said first portion and said enlarged portion.” See Motion, 5 ECF No. 28 at 11. NOSSK argues that since the Twin Pro Product is two separate straps, each 6 having its own anchor, there is no pair of portions with both ends fixedly connected to the first 7 portion of the anchor. See id. at 11. An image of the Twin Pro Product is below: 8 = □□ 9 L J 10 Built-in Door %L ANCHO closeu
15 16 & it
Z 18 19 In response, TRX argues that NOSSK improperly seeks to add limitations to the claims 20 |) requiring that the anchor be “a[] single piece anchor having a single strap first portion, a[] single 21 || enlarged portion, and a[] single elongate portion.” See Opposition, ECF No. 36 at 6-7. 22 The Court finds that NOSSK has failed to meet its burden for showing likelihood of success 23 || regarding the Twin Pro Product’s noninfringement of the ’653 Patent. The Federal Circuit “has 24 || repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of 25 ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Baldwin 26 || Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). Further, “[t]he subsequent 27 || use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does not change 28 the general plural rule, but simply reinvokes that non-singular meaning.” Jd. An exception to the
1 default rule for indefinite articles “only arises where the language of the claims themselves, the 2 specification, or the prosecution history necessitate a departure from the rule.” Id. at 1343. NOSSK 3 fails to provide any evidence or argument for why the claims of the ’653 Patent warrant departing 4 from the default rule regarding indefinite articles in patent claims. Accordingly, NOSSK fails to 5 show that “an anchor” in the ’653 claims cannot constitute multiple anchors. Since the only 6 noninfringement argument NOSSK provides for the Twin Pro Product relies on the premise that 7 two straps attached to two separate anchors cannot satisfy the ’653 claims, NOSSK has failed to 8 meet its burden for showing a likelihood of success on the merits regarding noninfringement of the 9 Twin Pro Product. 10 Based on the above reasoning, the Court finds that NOSSK has failed to show likelihood of 11 success regarding noninfringement of claim 1 of the ’653 Patent by the Twin Pro Product. 12 3. Invalidity 13 NOSSK argues that if claim 1 of the ’653 Patent were interpreted to cover the Home and 14 Twin Pro Products, then the claims would be invalid as anticipated by U.S. Patent No. 5,556,369 15 (“Roberts Reference”) and U.S. Patent No. 6,921,354 (“Shifferaw Reference”). See Motion, ECF 16 No. 28 at 11–12. NOSSK further argues that if claim 1 of the ’653 Patent were interpreted to cover 17 the Home and Twin Pro Products, then it would be rendered obvious by the Roberts or Shifferaw 18 References in view of the Hetrick Reference. See id. In response, TRX argues that NOSSK has 19 made no showing regarding the dependent claims of the ’653 Patent. See Opposition, ECF No. 36 20 at 7. Secondly, TRX argues that the Roberts and Shifferaw References are significantly different 21 from the Twin Pro and Home Products, including because the Roberts Reference discloses using a 22 belt buckle as a door anchor and the Shifferaw Reference discloses using a folded strap as part of 23 the door anchor. See Opposition, ECF No. 36 at 7–9. 24 The parties dispute whether NOSSK needs to make a showing of invalidity for all of the 25 ’653 claims to meet its burden of showing likelihood of success on the merits. NOSSK only 26 provides invalidity arguments directed to claim 1—it ignores claims 2 through 8 of the ’653 Patent 27 in its invalidity analysis. See Motion, ECF No. 28 at 11–12. TRX argues that to invalidate the ’653 1 Accordingly, since NOSSK fails to challenge the validity of claims 2 through 8 in its motion for a 2 preliminary injunction, it has not shown likelihood of success on the merits regarding invalidity of 3 the ’653 Patent. See id. In response, NOSSK argues that (1) TRX cannot demonstrate infringement 4 of claim 1 of the ’653 Patent and (2) if the Court were to construe claim 1 as reading on the Home 5 device, then claim 1 is invalid and cannot be infringed. See Reply, ECF No. 44 at 6. NOSSK argues 6 that in either case, claims 2 through 8 cannot be infringed and are therefore irrelevant. See id. 7 The Court finds that NOSSK has failed to show likelihood of success regarding invalidity 8 of the ’653 Patent. NOSSK’s invalidity evidence is minimal. NOSSK has merely pointed to the 9 Roberts and Shifferaw References, provided brief summaries of what they disclose, and claimed in 10 conclusory fashion that if claim 1 of the ’653 Patent is read to cover the Twin Pro and Home 11 Products, then it is invalid. See Motion, ECF No. 28 at 11–12. NOSSK has failed to provide claim 12 charts, annotated diagrams, or any other evidence sufficient to support its contention that the Roberts 13 and Shifferaw References disclose each element of claim 1 of the ’653 Patent.2 See Schering Corp. 14 v. Geneva Pharma., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (“A patent is invalid for anticipation if a 15 single prior art reference discloses each and every limitation of the claimed invention.”) (citations 16 omitted). Further, NOSSK has provided no details regarding any obviousness combination between 17 the Hetrick Reference and either the Roberts or Shifferaw References. Absent such evidence, the 18 Court finds that NOSSK has not shown a likelihood of success regarding invalidity of claim 1 of 19 the ’653 Patent by merely pointing to prior art references, particularly when those references are 20 cited on the face of the patent. See ’653 Patent at 2. 21 Further, NOSSK’s failure to provide any evidence regarding the dependent claims of the 22 ’653 Patent provides an additional ground for why its showing of likelihood of success on the merits 23 is insufficient. The communications from Amazon indicating that NOSSK’s products have been 24 removed from the website merely state that they were removed due to infringement of the ‘653 25 2 On reply, NOSSK provides some exhibits with further detail regarding the similarities between 26 the disclosures in the Roberts and Shifferaw References and claim 1 of the ’653 Patent. See Ott Supp. Decl., ECF No. 44-3, Exs. 1–3; id. ¶¶ 3–6. Since this constitutes new evidence introduced 27 for the first time on reply that TRX did not have an opportunity to respond to, the Court declines to 1 Patent. See Mathiowetz Decl., ECF No. 28-1, Ex. C. There is no indication as to which claim or 2 claims are at issue—in particular, there is no indication that NOSSK’s products only infringe claim 3 1 of the ’653 Patent. See id. Accordingly, to meet its burden for showing likelihood of success 4 regarding invalidity of the ’653 Patent, NOSSK must show likelihood of success of invalidating 5 each claim of the ’653 Patent. See 35 U.S.C. § 282 (“Each claim of a patent (whether in independent, 6 dependent, or multiple dependent form) shall be presumed valid independently of the validity of 7 other claims; dependent or multiple dependent claims shall be presumed valid even though 8 dependent upon an invalid claim.”). Otherwise, there are potentially claims of the ’653 Patent that 9 could survive an invalidity challenge and could serve as the basis for TRX’s infringement complaint 10 to Amazon. Since NOSSK has failed to provide any evidence of the invalidity of claims 2 through 11 8 of the ’653 Patent, it has failed to meet its burden. 12 NOSSK’s arguments to the contrary are unavailing. NOSSK first argues that TRX cannot 13 demonstrate infringement of claim 1 of the ’653 patent—the sole independent claim—so the 14 dependent claims are irrelevant. See Reply, ECF No. 44 at 6. As the Court outlined above, NOSSK 15 has not met its burden for showing likelihood of success on the merits of its noninfringement 16 arguments as to the ’653 Patent. Accordingly, NOSSK’s first argument for the irrelevance of the 17 ’653 dependent claims fails. 18 NOSSK further argues that if claim 1 of the ’653 Patent is construed to read on the Home 19 Product, then it is invalid and cannot be infringed. See id. Therefore, NOSSK argues, the dependent 20 claims cannot be infringed either and are irrelevant. See id. NOSSK’s argument is as puzzling as 21 it is wrong. It is well-established that if an independent claim is invalid under §§ 102 or 103, claims 22 that depend from that independent claim can still be valid. See Wahpeton Canvas Co., Inc. v. 23 Frontier, Inc., 870 F.2d 1546, 1552 n.10 (Fed. Cir. 1989) (“[A] necessarily narrower dependent 24 claim may be valid when the claim from which it depends is not”); 35 U.S.C. § 282. Accordingly, 25 if claim 1 of the ’653 Patent were rendered invalid to the extent it was found to cover the Home 26 Product, the dependent claims could still be valid and NOSSK’s products could be found to infringe 27 those claims. NOSSK was therefore required to show likelihood of success as to invalidity for the 1 kok 2 Based on the above reasoning, the Court finds that NOSSK has failed to meet its burden for 3 showing likelihood of success on the merits. Absent a showing of likelihood of success on the 4 merits, the Court declines to assess whether NOSSK has met its burden as to the other Winter factors. 5 Guzman v. Shewry, 552 F.3d 941, 948 (9th Cir. 2009). 6 || IV. ORDER 7 For the foregoing reasons, IT IS HEREBY ORDERED that NOSSK’s motion for a 8 || preliminary injunction is DENIED. 9 10 Dated: April 12, 2022 kom Lh ham ty) 11 BETH LABSON FREEMAN %L United States District Judge
15 16
= 17 6 18 19 20 21 22 23 24 25 26 27 28