Fitness Anywhere LLC v. Woss Enterprises LLC

Filing 213

ORDER APPROVING 200 JOINT PRETRIAL STATEMENT AND ORDER. Signed by Judge Beth Labson Freeman on 3/7/2017. (patentlcsjS, COURT STAFF) (Filed on 3/7/2017)

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[COUNSEL LISTED ON SIGNATURE PAGE]

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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FITNESS ANYWHERE LLC,

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Plaintiff,

Case No. 5:14-cv-01725 BLF
AMENDED JOINT PRETRIAL
STATEMENT AND ORDER

v.

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WOSS ENTERPRISES, LLC,

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Defendant.

Date:
Time:
Crtrm:
Judge:

February 23, 2017
1:30 p.m.
3, 5th Floor
Hon. Beth Labson Freeman

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VEDDER PRICE P.C.
ATTORNEYS AT LAW
SAN FRANCISCO

AMENDED JOINT PRETRIAL
STATEMENT AND ORDER
5:14-CV-01725 BLF

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Pursuant to the Court’s Standing Order Re Final Pretrial Conference – Jury Trial, the
parties submit the following Amended Joint Pretrial Statement and Order.

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I.

THE ACTION

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A.
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The Parties

The parties to this action are Plaintiff, Fitness Anywhere LLC (“TRX”), a Delaware
limited liability company having its principal place of business in San Francisco, California, and
Defendant, WOSS Enterprises, LLC (“WOSS”), a California limited liability company having its
principal place of business in Antioch, California.

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B.
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TRX asserts claims against WOSS for patent infringement, federal trademark
infringement, federal and state unfair competition, and tortious interference with prospective
economic relationships.

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See First Amended Complaint (Dkt. No. 46).

WOSS asserted a

counterclaim that seeks declaratory judgment, that certain TRX patents are invalid, void and
unenforceable.

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See Defendant’s Second Amended Answer and Affirmative Defenses; First

Amended Counterclaim (Dkt. No. 47).

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Substance of the Action

The Court narrowed the scope of the action through its Order (1) Granting in Part and
Denying in Part WOSS’s Motion for Summary Judgment (finding the 814 Patent invalid; the 197
Patent not infringed; and independent claims 12 and 21 of the 896 Patent not infringed), and
(2) Denying Fitness Anywhere’s Motion for Partial Summary Judgment, and (3) Denying Fitness
Anywhere’s Motion for a Preliminary Injunction (Dkt. No. 149). At the Court’s direction, the
parties have agreed to further reduce the claims and defenses they will assert at trial to the
following:

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1.
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Patent Infringement

TRX asserts that it is owner of all rights, title and interest in United States Patent No.

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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Previously, there were two additional patents-in-suit: U.S. Patent No. 7,806,814 (the “’814
patent”) and U.S. Patent No. 8,043,197 (the “’197 patent”). The Court ruled the ’814 patent
invalid (Dkt. No. 149) and the 197 Patent not infringed, and claims 12-25 of the ’896 patent not
infringed. Id.
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AMENDED JOINT PRETRIAL
STATEMENT AND ORDER
5:14-CV-01725 BLF

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7,044,896 (the “’896 patent”) and that certain WOSS products infringe Claim 1 of the ‘896
Patent, directly, through the doctrine of equivalents and/or by inducing or contributing to the
infringement of another.

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WOSS contends that the doctrine of equivalents is not an issue that Plaintiff is permitted
to raise because neither Plaintiff ‘s PLR 3-1(c) Infringement Contentions nor the Infringement
Contentions set forth in the report of its designated trial expert, Mr. Harvey Voris, relies on the
doctrine of equivalents and that Plaintiff has never otherwise applied the doctrine of equivalents
in connection with the 896 Patent. At his deposition, Mr. Voris said that his testimony at trial will
not include any opinions not contained in his report. There is no discussion or opinion related to
the doctrine of evidence to be found in his report.

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TRX alleges the following WOSS products infringe the above-referenced claims of the
’896 patent:

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(1) the Titan 1 ½ in. Wide Strap;

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(2) the 3000 Equalizer;

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(3) the Military Gym Style (later renamed the ATTACK);

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(4) the Military 1 in. Trainer;

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(5) the Military 1 ½ in. Trainer;

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(6) the WOSS XT.

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Collectively, products (1)-(6) are referenced below as the “Accused Products.” The
parties have stipulated that one Accused Product—the Titan—may stand as a representative
product for them all.2

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WOSS contends that the Accused Products do not infringe independent Claim 1 of the
’896, and thus also do not infringe dependent Claims 2-4 and 6-11. Specifically, WOSS contends
that the Accused Products lack one or more elements specified in Claim 1. WOSS further asserts

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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TRX contends that in the event the Court grants WOSS’s Motion in Limine #1 solely with
respect to the Titan, the parties should select an alternative representative product. WOSS
contends the Court’s ruling on WOSS’s Motion in Limine #1 should apply to all accused
products.
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AMENDED JOINT PRETRIAL
STATEMENT AND ORDER
5:14-CV-01725 BLF

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that certain constructions of Claim 1 of the ’896 patent, are impermissible as they would render
Claim 1 invalid as being anticipated by (35 U.S.C. § 102), or obvious (35 U.S.C. § 103) in view
of, the prior art patent 5,352,172 to Suzaki (“Suzaki patent”). WOSS does not otherwise assert
that the ’896 Patent is invalid.

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2.
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Trademark Infringement

TRX asserts that it owns the registered trademark and service mark SUSPENSION
TRAINING, as well as the registered trademark FITNESS ANYWHERE. TRX contends that
WOSS has infringed TRX’s federally registered marks in two ways. First, WOSS uses terms
confusingly similar to SUSPENSION TRAINING, and second, WOSS uses SUSPENSION
FITNESS, an expression confusingly similar to one or both of TRX’s marks.
WOSS asserts that TRX does not own a federal registration for the words “suspension
trainer” and does not assert any common law trademark rights in the words “suspension trainer.”
Defendant further asserts that TRX’s mark SUSPENSION TRAINING is invalid because it is
generic or merely descriptive and does not operate as a brand name to identify a single source;
that FITNESS ANYWHERE and SUSPENSION FITNESS are not in the context of the market
in which they are used, likely to cause confusion; to the extent WOSS uses the words “suspension
trainer” or “suspension training,” they are used to truthfully describe its own products to inform
customers of the products it sells, and the uses of the products and not as a brand name, whereby
WOSS’s use falls easily in the protected area of classic “fair use”. WOSS further contends that
SUSPENSION FITNESS is not so similar to FITNESS ANYWHERE as to likely to cause
confusion as to source, especially when viewed in the context of the fitness market and also
because WOSS prominently displays its registered mark “WOSS” and its registered Winged Lion
logo trademark in all of WOSS’s ads and on its goods.

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3.
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Federal and State Unfair Competition

TRX asserts that it owns the registered trademark and service mark SUSPENSION
TRAINING, as well as the registered trademark FITNESS ANYWHERE. Plaintiff contends that
WOSS has used confusingly similar imitations of TRX’s federally registered marks and that such

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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AMENDED JOINT PRETRIAL
STATEMENT AND ORDER
5:14-CV-01725 BLF

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use is likely to cause confusion, deception, and mistake by creating the false and misleading
impression that WOSS’s goods are manufactured or distributed by TRX, or are associated with
TRX, or have sponsorship, endorsement, or approval of TRX. Additionally, TRX contends that
WOSS has made false or deceptive statements regarding its own or TRX’s products, including
statements that (i) WOSS’s products are “made in the USA” and (ii) advertising false
“discounted” prices and artificial list prices. TRX contends that WOSS’s actions constitute
unfair competition under California law, in violation of 15 U.S.C. § 1125(a) and California
Business and Professions Code § 17200 and are unlawful under California Business and
Professions Code §§ 17501 and 17501.
WOSS asserts it has made no false or confusing statements that would cause confusion as
to source, and that any damages are beyond speculative given the superior quality, dramatically
lower price point of WOSS’s goods, and the lack of any evidence that any sale was lost due to
WOSS’s use of the alleged trademark infringement, and the availability of other WOSS products
and any one of a dozen third party substitutes at dramatically lower prices. WOSS also contends
that any ads listing “discount prices” were not its ads but those of Amazon and that the WOSS
ads on its own web pages do not include any mention of “discount prices”. WOSS also contends
that all of its products are manufactured in Antioch, California.

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4.
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Tortious Interference with Prospective Economic Advantage

TRX asserts that there exists an economic relationship between TRX and purchasers of
exercise equipment and a probability of future economic benefit to TRX from these purchasers,
and that WOSS has wrongfully acted to disrupt this relationship through misrepresentations to
purchasers and violations of federal patent and trademark laws, and federal and state unfair
competition laws.
WOSS asserts it has not committed, and TRX cannot prove, any interference claim as
alleged because the intent requirement is lacking and because WOSS has committed no
independent wrongful act that supports such a claim under California law. Moreover, damages
from any such acts are speculative for the reasons set forth above. Any loss of Plaintiff’s sales

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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AMENDED JOINT PRETRIAL
STATEMENT AND ORDER
5:14-CV-01725 BLF

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caused by WOSS was a result of fair and honest competition.

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C.

Relief Sought

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By TRX

TRX seeks damages, enhanced damages, punitive damages, costs, attorneys’ fees,
declaratory and injunctive relief as follows:
(a)

A judgment that WOSS has infringed the ’896 patent;

(b)

A judgment that each Accused Product infringes the ’896 patent;

(c)

An order and judgment enjoining WOSS and its officers, directors, agents,

servants, employees, affiliates, attorneys, and all others acting in privity or in concert with
them, and their parents, subsidiaries, divisions, successors and assigns from further acts of
infringement of the ’896 patent;
(d)

A judgment awarding TRX all damages adequate to compensate for

WOSS’s infringement of the ’896 patent, including all pre-judgment and post-judgment
interest at the maximum rate permitted by law;
(e)

A judgment awarding TRX all damages, including treble damages, based

on any infringement found to be willful, pursuant to 35 U.S.C. § 284, together with
prejudgment interest;
(f)

An order and judgment enjoining WOSS and its officers, directors, agents,

servants, employees, affiliates, attorneys, and all others acting in privity or in concert with
them, and their parents, subsidiaries, divisions, successors and assigns from further acts of
misappropriation or infringement of the SUSPENSION TRAINING trademark and
service mark;
(g)

An order and judgment enjoining WOSS and its officers, directors, agents,

servants, employees, affiliates, attorneys, and all others acting in privity or in concert with
them, and their parents, subsidiaries, divisions, successors and assigns from further acts of
misappropriation or infringement of the FITNESS ANYWHERE trademark;

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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AMENDED JOINT PRETRIAL
STATEMENT AND ORDER
5:14-CV-01725 BLF

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(h)

A judgment awarding TRX all damages adequate to compensate for

WOSS’s infringement of the SUSPENSION TRAINING trademark and service mark,
including all pre-judgment and post-judgment interest at the maximum rate permitted by
law;
(i)

A judgment awarding TRX all damages adequate to compensate for

WOSS’s infringement of the FITNESS ANYWHERE trademark, including all prejudgment and post-judgment interest at the maximum rate permitted by law
(j)

A judgment awarding TRX its reasonable attorneys’ fees and costs of suit

pursuant to 35 U.S.C. § 285 and/or 15 U.S.C. § 1117;
(k)

Restitutionary relief against WOSS and in favor of TRX, including

disgorgement of wrongfully obtained profits and any other appropriate relief;
(l)

A judgment that WOSS has violated 15 U.S.C. § 1125(a) and enjoining

WOSS from further violations of that law.
(m)

A judgment that WOSS has violated California Business and Professions

Code § 17200 and enjoining WOSS from further violations of that law.
(n)

An accounting of WOSS’s profits pursuant to 15 U.S.C. § 1117;

(o)

A judgment that WOSS tortiously interfered with TRX’s prospective

economic relationships;
(p)

A judgment for exemplary and punitive damages;

(q)

Any other remedy to which TRX may be entitled, including all remedies

provided for in 35 U.S.C. §§ 284 and 285, 15 U.S.C. §§ 1114, 1116, 1117 and 1125(a),
California Business and Professions Code § 17200, and under any other law.
TRX further refers to the Expert Report of Kimberly Schenk (Dkt. No. 174-5), and
submits herewith a copy of the Supplemental Expert Report of Kimberly Schenk (Dkt. No. 1941), which further set forth TRX’s alleged damages. WOSS asserts the “supplemental report” is
improper and contains nothing but legal argument.

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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AMENDED JOINT PRETRIAL
STATEMENT AND ORDER
5:14-CV-01725 BLF

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By WOSS

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(a)

That Plaintiff be denied all relief it has requested;

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(b)

That none of the Accused Products infringe Claim 1 of the ’896 Patent;

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(c)

That any patent infringement found by WOSS was not willful;

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(d)

That Claim 1 must be construed to exclude a rigid support on which the

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“elongated member” is supported and passes through in order not to be anticipated by the

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prior art Suzaki patent;
(e)

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That the words “suspension trainer” are merely descriptive of a type of

fitness trainer and are not used by WOSS as a source identifier (brand name) but rather as

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a product descriptor and therefore do not infringe any trademark rights of Plaintiff;

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(f)

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That the mark SUSPENSION FITNESS is not likely when and as used by

WOSS to cause confusion as to source with the mark FITNESS ANYWHERE.

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(g)

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That any trademark infringement by WOSS was not intentional or willful

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or egregious, or with the knowledge that such imitation is intended to be used to cause

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confusion, or to cause mistake, or to deceive. 15 U.S.C. §1114(b).

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D.

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The parties agree that the Court has subject matter jurisdiction over all claims and

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counterclaims pursuant to 28 U.S.C. §§ 1331, 1338 and 1367 and 15 U.S.C. § 1121. The parties

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further agree that venue is appropriate because both parties are located and conduct business

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within the State of California and within this judicial district.

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II.

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Federal Jurisdiction and Venue

FACTUAL BASIS OF THE ACTION
A.

Undisputed Facts
1.

TRX is a Delaware limited liability company, and its principal place of

business is in San Francisco, California.
2.

WOSS is a California limited liability company, and its principal place of

business is in Antioch, California.
3.

Venue is proper in this District.

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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AMENDED JOINT PRETRIAL
STATEMENT AND ORDER
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4.

The Court has personal jurisdiction over each of the parties, and each of

them transact business within this District.
5.

U.S. Patent No. 7,044,896, entitled “EXERCISE DEVICE INCLUDING

ADJUSTABLE, INELASTIC STRAPS,” was issued on May 16, 2006 to Randal A.
Hetrick.
6.

TRX owns, by assignment, the entire right, title, and interest in and to the

’896 Patent.
7.

TRX owns a federal trademark registration, Reg. No. 3,255,160, issued by

the United States Patent and Trademark Office on June 26, 2007, for the trademark
SUSPENSION TRAINING.
8.

TRX owns a federal service mark registration, Reg. No. 3,255,161, issued

by the United States Patent and Trademark Office on June 26, 2007, for the service mark
SUSPENSION TRAINING.
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TRX owns a federal trademark registration, Reg. No. 2,975,844, issued by

the United States Patent and Trademark Office on July 26, 2005, for the trademark
FITNESS ANYWHERE.
10.

TRX’s federally registered SUSPENSION TRAINING and FITNESS

ANYWHERE marks are incontestable under 15 U.S.C. § 1065.
11.

WOSS filed an application to register the mark SUSPENSION FITNESS

on November 20, 2014 as actual use. The mark was filed in International Class 028 for
manually-operated exercise equipment. The application was rejected on the grounds that
the mark is merely descriptive of a certain kind of exercise equipment, if not generic and
WOSS abandoned the application.
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WOSS’s first use of SUSPENSION FITNESS in commerce was on

October 19, 2014.
13.

TRX and WOSS compete in the fitness industry in connection with certain

physical training devices.

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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AMENDED JOINT PRETRIAL
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(a)

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the Military 1 ½ in. Trainer; and

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the Military 1 in. Trainer;

(e)

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the Military Gym Style (later renamed the ATTACK);

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the 3000 Equalizer;

(c)

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the Titan 1 ½ in. Wide Strap;

(b)

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WOSS sells or has sold the following products (“Accused Products”):

the WOSS XT.

WOSS sells or has sold other physical trainers which Plaintiff has not

accused of infringement.
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Each of the Accused Products is made, used, sold and/or offered for sale in

the United States.
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Each of the Accused Products is offered for sale via WOSS’s website and

on Amazon.com and has been offered for sale through these websites years before and
during the course of this litigation.
18.

On March 21, 2014, TRX sent and WOSS received a cease-and-desist

letter which included copies of three TRX Patents (7,044,896; 7,806,814; and 8,043,197)
and the certificates of registration for U.S. Trademark Reg. Nos. 3,255,160 and 3,255,161.
19.

WOSS responded to the cease and desist letter.

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TRX never provided WOSS with consent to make use of the alleged

invention claimed in the ’896 Patent.
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Claim 1 of the ’896 patent reads as follows:

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An adjustable, inelastic exercise device comprising: an elongated member having a
pair of ends separated by a length and a mechanism for adjusting said length,
where said elongated member is a substantially inelastic flat strap and, where said
pair of ends includes a first end having a first grip and a second end having a
second grip; and an anchor having a first portion for mounting to a structure and a
second portion including a flexible portion to support said elongated member at a
position along said length when both of said grips are pulled in a direction away
from said anchor, wherein said flexible portion includes a loop, and wherein said
elongated member passes through said loop.

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VEDDER PRICE (CA), LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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AMENDED JOINT PRETRIAL
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22.

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Each of the underlined terms from Claim 1 of the ’896 patent are found in

each of the Accused Products:

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An adjustable, inelastic exercise device comprising: an elongated member having a
pair of ends separated by a length and a mechanism for adjusting said length,
where said elongated member is a substantially inelastic flat strap and, where said
pair of ends includes a first end having a first grip and a second end having a
second grip; and an anchor having a first portion for mounting to a structure and a
second portion including a flexible portion to support said elongated member at a
position along said length when both of said grips are pulled in a direction away
from said anchor, wherein said flexible portion includes a loop, and wherein said
elongated member passes through said loop.

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Although the Accused Products differ in certain respects, the portion of the

products relevant to the patent infringement claim is identical (i.e., any sample Accused

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Product can be representative of all Accused Products at trial for purposes of analyzing

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infringement/non-infringement of Claim 1 of the ’896 patent). The parties have agreed

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that the WOSS Titan Trainer can act as a representative accused product.

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B.
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Disputed Facts
1.

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Whether WOSS, through selling the Accused Products, infringes claim 1-4

and 6-11 of the ‘896 Patent, directly (whether each and every limitation in claim 1 of the

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‘896 patent is found in the accused products) or through the doctrine of equivalents (35

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U.S.C. § 271);3

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2.

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Whether WOSS induced another to infringe claims 1-4 and 6-11 of the

’896 Patent (35 U.S.C. § 271).4

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3.

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Whether WOSS has contributed to infringement by another of claims 1-4

and 6-11 of the ’896 Patent (35 U.S.C. § 271).

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4a.

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Whether the Accused Products have: “a mechanism for adjusting said

length , a first end having a first grip,” and “a second end having a second grip; including

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a flexible portion to support said elongated member at a position along said length when

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VEDDER PRICE (CA), LLP
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SAN FRANCISCO

WOSS contends the doctrine of equivalents is not an issue that Plaintiff is permitted to raise.
See footnote 2.
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WOSS submits that neither induced infringement nor contributory infringement will be an issue
at trial because WOSS will not defend based on the fact that the accused products are delivered to
customers with the components only partially assembled.
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AMENDED JOINT PRETRIAL
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both of said grips are pulled in a direction away from said anchor, a loop, wherein said

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elongated member passes through said loop.”

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4b.

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Whether the Accused Products have: “a mechanism for adjusting said

length [of said elongated member], a first end [of said elongated member] having a first

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grip,” and “a second end [of said elongated member] having a second grip; including a

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flexible portion to support said elongated member at a position along said length [of said

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elongated member] when both of said grips are pulled in a direction away from said

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anchor, a loop, wherein said elongated member passes through said loop.”

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5.

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If WOSS is found to have infringed the ‘896 patent, whether its

infringement was willful.

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6.

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Whether WOSS infringed TRX’s SUSPENSION TRAINING trademark

and service mark.

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7.

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Whether WOSS infringed TRX’s FITNESS ANYWHERE trademark, or a

combination of SUSPENSION TRAINING and FITNESS ANYWHERE.5

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8.

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Whether WOSS has used words confusingly similar to TRX’s federally

registered marks and that such use is likely to cause confusion, or to cause mistake, or to

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deceive as to the affiliation, connection, or association of such person with another person,

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or as to the origin, sponsorship, or approval of his or her goods, services, or commercial

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activities by another person (15 U.S.C. § 1125(a); California Business and Professions

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Code § 17200).

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9.

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Whether WOSS’s use of the words “suspension trainer” are permitted by

law under the doctrine of fair use.

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10.

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Whether WOSS’s use of the words “suspension training” are permitted by

law under the doctrine of fair use.

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WOSS contends one cannot be liable for infringement of a combination of marks.
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are valid (15 U.S.C. §§ 1057, 1065 and 1115); Whether TRX’s SUSPENSION
TRAINING trademark and service mark are merely descriptive;

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such imitation is intended to be used to cause confusion, or to cause mistake, or to
deceive. (15 U.S.C. § 1114(1)(b)).
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such imitation is intended to be used to cause confusion, or to cause mistake, or to
deceive. (15 U.S.C. § 1114(1)(b)).
17.

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Whether WOSS made a false statement of fact in a commercial

advertisement about its own or TRX’s product (15 U.S.C. § 1125(a)(1) (B); Skydive
Arizona, Inc. v. Quattrocchi, 673 F.3d 1105, 1110 (9th Cir. 2012));

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Whether, if WOSS infringed TRX’s FITNESS ANYWHERE trademark

and service mark, such infringement was willful or egregious, or with the knowledge that

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Whether, if WOSS infringed TRX’s SUSPENSION TRAINING trademark

and service mark, such infringement was willful or egregious, or with the knowledge that

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Whether, if WOSS infringed TRX’s FITNESS ANYWHERE trademark,

such infringement was intentional (15 U.S.C. § 1117);

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Whether, if WOSS infringed TRX’s SUSPENSION TRAINING trademark

and service mark, such infringement was intentional (15 U.S.C. § 1117);

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Whether TRX’s FITNESS ANYWHERE trademark is valid (15 U.S.C. §§

1057, 1065 and 1115);

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Whether TRX’s SUSPENSION TRAINING trademark and service mark

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Whether, if WOSS made a false statement(s) of fact, they actually

deceived or had the tendency to deceive a substantial segment of the statement’s audience
(Id.);
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Whether, if WOSS made a false statement of fact, the deception is

material, in that it is likely to influence the purchasing decision of its audience (Id.);
20.

Whether, if WOSS made a false statement of fact, WOSS caused its false

statement to enter interstate commerce (Id.);

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21.

2

Whether, if WOSS made a false statement of fact, TRX has been or is

likely to be injured as a result of the false statement, either by direct diversion of sales

3

from itself to WOSS or by a lessening of the goodwill associated with its products (Id.);

4

22.

5

Whether WOSS acted unlawfully in violation of California Business and

Professions Code § 17533.7 (Cal. Bus. & Prof. Code § 17200; Kwikset Corp. v. Superior

6

Court, 51 Cal.4th 310, 322 (2011));

7

23.

8

Whether WOSS acted unlawfully in violation of California Business and

Professions Code § 17501 (Id.);

9

24.

10

Whether there was a probable economic relationship between TRX and

purchasers of exercise equipment. (California Civil Jury Instructions (CACI) 2202; Youst

11

v. Longo 43 Cal.3d 64, 71, fn. 6 (1987));

12

25.

13

Whether, if there was an probable economic relationship between TRX and

purchasers of exercise equipment, WOSS knew of, intended to, and in fact disrupted the

14

relationship by means other than fair competition (Id.);

15

26.

16

Whether WOSS made misrepresentations of fact to prospective customers

of TRX (Id.);

17

27.

18

Whether WOSS disrupted an economic relationship between TRX and

purchasers of exercise equipment that resulted in harm to TRX (Id.);

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28.

20

Whether WOSS’s wrongful conduct, if any, was a substantial factor in

causing harm to TRX (Id.);

21

29.

The amount of damages, if any, to which TRX is entitled.

22
III.
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24
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DISPUTED LEGAL ISSUES
1.

Whether, if WOSS infringed the ’896 patent, such infringement was willful

(35 U.S.C. § 284);
2.

The remedies, if any, to which TRX is entitled (Id.; 35 U.S.C. § 284, 287;

15 U.S.C. § 1111, 1117).

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3.

2

Whether WOSS is entitled to an award of attorney fees for prevailing on

Summary Judgment that the ’814 patent is invalid, that the ’197 patent is not infringed and

3

that Claims 12 – 25 of the ’896 Patent are not infringed, and if so in what amount.

4

4.

5

Whether, if WOSS is found liable for patent infringement, this case is

exceptional under 35 U.S.C. § 285, such that TRX is entitled to its reasonable attorneys’

6

fees.

7

5.

8

Whether the scope of Claim 1 of the ‘896 patent must be construed to

exclude a rigid support for an elongated member.6

9

6.

10

Whether two linked rigid rings can be construed as a “flexible portion” of

an anchor to support an elongated member at a position along said length when both of

11

said grips are pulled in a direction away from said anchor as called for in claim 1 of the

12

‘896 patent.

13

7.

14

Whether the scope of claim 1 of the ‘896 patent must be construed to

exclude a rigid loop on which an elongated member is supported.

15
IV.
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17

ESTIMATE OF TRIAL TIME
The Court originally set aside eight (8) days for trial. In view of the Court’s rulings and the

parties’ streamlining of issues to be tried, it is now estimated trial will take 4-6 days.

18
V.

TRIAL ALTERNATIVES AND OPTIONS

19
A.
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21
22

Settlement Discussions

The parties participated in a settlement conference before Magistrate Judge Spero on July
11, 2016. Per the Court’s Standing Order, counsel for the parties further discussed settlement on
September 8, 2016 as part of their pretrial meet and confer. The parties have been unable to reach

23
24
25
26
27

6

TRX contends that Paragraphs 5-7 of this section are not disputed legal issues; rather, that the
Court has already definitively ruled on claim construction matters. See Plaintiff’s Motion in
Limine # 4 (Dkt. No. 172). WOSS contends that while the court should not lightly, of course, alter
rulings, the court is free to do so and has the power and discretion to do so at any time for any
appropriate reason. Amarel v. Connell, 102 F.3d 1494, 1515 (9th Cir 1997) (“‘ the interlocutory
orders and rulings made pre-trial by a district judge are subject to modification by the district
judge at any time prior to final judgment. . . .’”).

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a settlement and do not presently believe further settlement discussions will be worthwhile.

2
B.
3
4
5
6
7
8
9
10
11
12

Amendments or Dismissals

WOSS has stipulated that it will not directly challenge the validity of the ’896 patent other
than to show that Claim 1 would be invalid under certain constructions of claim 1.7 (ECF 178.)
Per that stipulation, WOSS has dismissed its counterclaim that the ’896 Patent is invalid. The
parties have no other amendments or dismissals of claims, however, the parties have agreed that
the number of Accused Products is only 6 and that, as to the issue of infringement of Claim 1 of
the ’896 Patent, the issues are the same for all Accused Products so the Patent case can be tried by
a representative Accused Product, the result of which can be applied to the other Accused
Products. The Parties have further stipulated that, with the Court’s permission, exhibits can be
marked with labels of the same color and that any document can be offered, subject to any
appropriate objection by either party.

13
C.
14
15
16
17
18
19
20
21
22

Bifurcation or Separate Trial of Issues

Defendant believes that the a separate trial of issues or order of proof (not bifurcation)
could result in a significant savings in court time. The evidence Plaintiff must present at trial falls
into three major categories: (1) patent infringement; (2) trademark infringement; and, (3)
damages. Should Plaintiff’s damage expert survive a Daubert challenge as presented in
Defendant’s MIL #3 (Doc#163), the damage evidence will be extremely technical, lengthy and
tedious, but will be significantly reduced if not eliminated altogether if Plaintiff cannot produce
sufficient evidence to get to the jury on either or both liability issues. Because, there is a real
possibility of a directed verdict at the close of Plaintiff’s case, Defendant requests that the Court,
pursuant to FRE611(a) and its inherent power, order the introduction of evidence as follows:

23
24
25
26
27

7

Plaintiff contends the Court has already definitively ruled on claim construction matters and
validity of the ‘896 patent is not at issue in trial. See Plaintiff’s Motion in Limine # 4 (Dkt. No.
172). WOSS contends that while the court should not lightly, of course, alter rulings, the court is
free to do so and has the power and discretion to do so at any time for any appropriate reason.
Amarel v. Connell, 102 F.3d 1494, 1515 (9th Cir 1997) (“‘ the interlocutory orders and rulings
made pre-trial by a district judge are subject to modification by the district judge at any time prior
to final judgment. . . .’”).

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2
3
4
5
6
7
8
9
10
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12
13
14
15
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21
22
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25
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Plaintiff submit its liability case for patent infringement and trademark infringement before it puts
on any damage evidence; the Court consider and decide Defendant’s motions for directed verdicts
after Plaintiff rests its liability case. It could also greatly reduce the trial time if the Court would
hold a Daubert hearing before trial to determine if the “gate should be closed” on Ms. Schenk for
not adhering to accepted methodologies and for employing unsupported assumptions.

See

Defendant’s MIL # 4.
Plaintiff proffers bifurcation (or separate trials) is not appropriate in this case. “In the
Ninth Circuit, [b]ifurcation . . . is the exception rather than the rule of normal trial procedure.”
GEM Acquisitionco, LLC v. Sorenson Grp. Holdings, LLC, No. C 09-01484 SI, 2010 WL
1729400, at *3 (N.D. Cal. April 27, 2010) (citations omitted). “The party requesting bifurcation
has the burden to prove that it is warranted in that particular case.” Id. (citing Spectra-Physics
Lasers, Inc. v. Uniphase Corp., 144 F.R.D. 99, 102 (N.D. Cal. 1992)). Defendant has not met its
burden.
Defendant’s arguments for bifurcation are (i) Defendant’s own self serving statements
regarding its likelihood of success in this case and (ii) Defendant’s contention that the damage
evidence will be lengthy and tedious. Defendant’s self serving statements are immaterial to the
issue of bifurcation, and Defendant’s contention regarding the time it would take to address issues
of damages is not supported by facts. Indeed, TRX anticipates the damages portion of its case
will take only 1-2 days. The amount of time required to address damages will depend, in part, on
WOSS’s cross examination of TRX’s damages expert and the extent to which it challenges the
assumptions of the expert; however, in large measure, TRX’s damage analysis relies on WOSS’s
own financials, the authenticity and accuracy of which should not be at issue in this case.
Bifurcation would require the parties to recall witnesses who have knowledge of issues pertaining
to both liability and damages. It may also require duplicative testimony on issues such as how
WOSS came to develop its products and marketing, which may be relevant to both liability and
damages (e.g., willfulness). In sum, bifurcation will not result in judicial economy, but is likely
to actually lengthen proceedings and the Court should deny Defendant’s request.

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D.

2

The foregoing admissions having been made by the parties, and the parties having

3

specified the foregoing issues of fact and law remaining to be litigated, this order shall

4

supplement the pleadings and govern the course of trial of this action, unless modified to prevent

5

manifest injustice.

6

Dated: February 16, 2017

Binding Effect of the Joint Pretrial Statement and Order

7
8
9
10
11
12
13
14
15

/s/ H. Michael Brucker
H. Michael Brucker Law Corp.
H. Michael Brucker
[e-mail]
5855 Doyle Street, Suite 110
Emeryville, CA 94608
T: [phone]
Steven M. Kipperman Law Corporation
Steven M. Kipperman
220 Montgomery St. Ste. 1077
San Francisco, CA 94104
T: [phone]

16
17

Attorneys for Defendant
WOSS Enterprises, LLC

18
19

/s/ Michael J. Waters
VEDDER PRICE P.C.
Alain Villeneuve (admitted pro hac vice)
[e-mail]
Michael J. Waters (admitted pro hac vice)
[e-mail]
222 North LaSalle Street, Suite 2600
Chicago, Illinois 60601-1003
T: [phone]
F: [phone]
Vedder Price (CA), LLP
Heather M. Sager, Bar No. 186566
[e-mail]
275 Battery Street, Suite 2464
San Francisco, California 94111
T: [phone]
F: [phone]
Attorneys for Plaintiff
FITNESS ANYWHERE LLC

20
21
22

24

It is so ordered except as modified by the Court in motions in limine and other pretrial orders
issued by the Court.

25

DATED: March 7, 2017

23

26

_______________________________
Hon. Beth Labson Freeman
United States District Judge

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