The Green Pet Shop Enterprises, LLC v. Comfort Revolution

District Court, D. New Jersey·Decided September 22, 2025·No. 3:20-cv-02130·Unknown

Opinion

NOT FOR PUBLICATION

UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY

THE GREEN PET SHOP ENTERPRISES, LLC,

Plaintiff, Civil Action No. 20-2130 (GC) (TJB)

v. MEMORANDUM OPINION

COMFORT REVOLUTION,

Defendant.

CASTNER, District Judge THIS MATTER comes before the Court upon Defendant Comfort Revolution’s Motion for Attorneys’ Fees under 35 U.S.C. § 285. (ECF Nos. 116, 117.) Plaintiff The Green Pet Shop Enterprises, LLC opposed, and Defendant replied. (ECF Nos. 118, 119.) The Court has carefully reviewed the parties’ submissions and decides the matter without oral argument pursuant to Federal Rule of Civil Procedure 78(b) and Local Civil Rule 78.1(b). For the reasons set forth below, and other good cause shown, Defendant’s Motion is DENIED. I. BACKGROUND1 The facts of this case have been recounted at length in the Court’s previous opinion granting Defendant’s motion for summary judgment. (ECF No. 113.) The Court therefore assumes the parties’ familiarity with those facts and provides only a brief overview of the facts necessary for deciding this motion.

1 Page numbers for record cites (i.e., “ECF Nos.”) refer to the page numbers stamped by the Court’s e-filing system and not the internal pagination of the parties. The case centers around U.S. Patent No. 8,720,218 (the ’218 Patent), which claims a pressure activated recharging cooling platform, with the purpose of creating a cooling pad for pets that does not require refrigeration. (ECF No. 1 ¶¶ 7-8; ECF No. 1-2 at 2.) Defendant’s allegedly infringing product (the Accused Product) is a “Therapedic Cooling Gel & Memory Foam Pillow.”

(ECF No. 1 ¶ 10.) On April 14, 2010, Plaintiff filed the ’218 Patent with the United States Patent and Trademark Office (PTO). (ECF No. 100-1 ¶ 1; ECF No. 104-1 ¶ 1.) It was issued by the PTO on May 13, 2014. (See ECF No. 100-3 at 2.) The ’218 Patent listed Gerard Prendergast as the sole inventor and Plaintiff as assignee. (Id.) From at least 2015 to 2017, Plaintiff brought ’218-based patent infringement actions against different defendants across several federal jurisdictions. (See ECF No. 117 at 12 (listing cases).) Before filing suit in the instant matter, counsel for Plaintiff “purchased a sample of” the Accused Product, “visually examined the [A]ccused [P]roduct samples and examined them by touch, then compared them to the claims” of Plaintiff’s patent. (ECF No. 118-10 at 4.) The

Accused Product was not marketed as pressure activated. (ECF No. 100-1 ¶ 5; ECF No. 104-1 ¶ 5.) But counsel for Plaintiff tested “whether the sample had a pressure-activated recharging cooling composition” by “press[ing] on the sample with [his] hand,” and, after observing that his “hand felt cooler with the pressure,” he inferred that the cooling composition was pressure- activated. (ECF No. 118-10 at 4-5.) On January 9, 2020, Plaintiff brought this patent infringement action in the Western District of North Carolina. (ECF No. 1.) In February 2020, the case was transferred to this Court. (ECF Nos. 9, 10.) Prendergast sat for a deposition in October 2020. Prendergast testified that he enlisted a factory in China to provide him with a “composition for use in his cooling pad that did not require freezing.” (ECF No. 100-1 ¶¶ 7, 12; ECF No. 104-1 ¶ 7.) The factory then created the product and sent “it and its chemical formula” to Prendergast. (ECF No. 100-1 ¶ 8; ECF No. 104-1 ¶ 8.) The factory “came up with the formula” for the cooling pad, but the “concept of using it . . . for pets” was Prendergast’s. (ECF. No. 100-8 at 30:3-4.) In other words, Prendergast had “the germ,

the seed of the idea of the cool pet pad.” (Id. at 30:1-2.) He also “tweak[ed]” and “test[ed]” the cooling composition provided by the Chinese factory, and it was through this process that he discovered the pads cooled following the application of pressure. (Id. at 12:25-14:3, 14:19-22.) Plaintiff did not disclose the factory’s role in developing the product to the PTO. (ECF No. 100-1 ¶ 12; ECF No. 104-1 ¶ 12.) The case proceeded, with the parties—including Defendant—taking no action in response to Prendergast’s deposition. On November 19, 2021, following a hearing, the Court issued an opinion pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996), to clarify the construction of the Claims. The parties proceeded with discovery. On January 8, 2024, Plaintiff’s expert, Nathanial Lynd, sat for a deposition. (ECF No.

100-5.) Dr. Lynd stated that, to test whether the Accused Product’s “cooling effect was caused by the pressure activation,” he used warmed ground beef to run a comparison: In one model he held the ground beef and applied pressure to the Accused Product and in another he attempted to put the ground beef “as close as” possible to “the [A]ccused [P]roduct without” applying pressure to determine whether pressure or proximity caused the cooling. (See id. at 9, 18-19.) Although there was “no peer review journal that would publish” this type of work because there are “no peer reviewed academic articles on pressure activated cooling compositions,” Dr. Lynd testified that he follows “the scientific method” and that the methodology he employed was “acceptable.” (Id. at 9, 12, 19.) On August 2, 2024, Defendant moved for summary judgment, arguing that Claims 15 and 16 of the Patent were invalid and not infringed by the Accused Product. (ECF No. 100.) Among other theories, Defendant—for the first time and almost four years after Prendergast’s deposition— asserted that the ’218 Patent was invalid because Prendergast was not the sole inventor of the

claimed invention. (ECF No. 100-2 at 37-39.) At the same time the parties litigated this case, they also litigated a similar matter in the District of Delaware (the Delaware Litigation). In that case, Plaintiff asserted two related patents—U.S. Patent Nos. 11,375,685 and 11,716,965—against Defendant. (ECF No. 116-5 ¶¶ 1- 3, 7-8.)2 On September 12, 2024—shortly after the completion of summary judgment briefing in this New Jersey litigation—the Delaware court held a hearing on Defendant’s motion to amend an answer and counterclaims. (ECF No. 116-2.) In that hearing, Defendant sought to add a counterclaim against Plaintiff for inequitable conduct, alleging, among other things, that Plaintiff failed to disclose the 2020 Prendergast deposition (taken as part of the litigation before this Court) to the PTO. (Id. at 9; ECF No. 116-8 ¶¶ 61, 79-85, 112.) The patents in the Delaware Litigation

were filed with the PTO in 2021 and 2022—after the 2020 Prendergast deposition but well before the Defendant in the New Jersey litigation raised the inventorship issue in 2024. (ECF No. 116-5 ¶¶ 7-8.) The Delaware court allowed the claim to be added, finding Defendant’s “allegations plausibly state a claim for inequitable conduct” and were “one of the best pled inequitable conduct claims [the Court had] seen.” (ECF No. 116-2 at 12.) The Delaware court stated that Defendant’s

2 That case is The Green Pet Shop Enters., LLC v. Comfort Rev., LLC, Civ. No. 23-00230 (D. Del. filed Mar. 2, 2023). pleading “talks about the potential inventorship problem as well as an on-sale bar which seems . . . to be even clearer than the inventorship issue.” (Id. at 13.) Meanwhile, this Court evaluated the summary judgment briefing. On March 17, 2025, relying on Prendergast’s deposition, the Court granted summary judgment for Defendant. (ECF

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