Fitness Anywhere LLC v. Woss Enterprises LLC
Filing
293
ORDER GRANTING 281 PLAINTIFFS MOTION FOR RECONSIDERATION OF 149 ORDER GRANTING SUMMARY JUDGMENT; DENYING 122 DEFENDANTS MOTION FOR SUMMARY JUDGMENT AS TO INVALIDITY OF U.S. PATENT NO. 7,806,814. Signed by Judge Beth Labson Freeman on 10/25/2018. (blflc2S, COURT STAFF) (Filed on 10/25/2018)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN JOSE DIVISION
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FITNESS ANYWHERE LLC,
Plaintiff,
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v.
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WOSS ENTERPRISES LLC,
Defendant.
United States District Court
Northern District of California
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Case No. 14-cv-01725-BLF
ORDER GRANTING PLAINTIFF’S
MOTION FOR RECONSIDERATION;
DENYING DEFENDANT’S MOTION
FOR SUMMARY JUDGMENT AS TO
INVALIDITY OF U.S. PATENT NO.
7,806,814
[Re: ECF 281]
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Before the Court is Plaintiff Fitness Anywhere LLC’s (“TRX”) motion for reconsideration
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of the Court’s August 23, 2016 Order (ECF 149) granting in part Defendant Woss Enterprises
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LLC’s (“Woss”) motion for summary judgment, which invalidated for obviousness U.S. Patent
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No. 7,806,814 (“’814 Patent”). See Mot., ECF 281. For the reasons stated herein, the Court
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GRANTS reconsideration and withdraws the portion of its prior Order invalidating the ’814 Patent
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as obvious. Woss’s motion for summary judgment is DENIED with respect to its argument that
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the ’814 Patent is invalid. Because TRX represented at the October 5, 2018 case management
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conference that it would not pursue its ’814 infringement claims against Woss should the Court
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grant reconsideration, the Court does not reconsider any portion of its Order relating to Woss’s
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infringement of the ’814 Patent.
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I.
BACKGROUND
Through this action, TRX sues Woss for patent infringement, federal trademark
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infringement, federal and state unfair competition, and tortious interference with prospective
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economic relationships. See generally Am. Compl., ECF 46. TRX sells fitness-related products
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under the TRX brand, including, as is relevant here, resistance exercise bands. See id. Woss also
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sells fitness-related equipment, and TRX alleged that Woss’s products infringe three of TRX’s
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patents, as well as TRX’s trademarks.
The case progressed, and Woss moved for summary judgment, arguing in part that TRX’s
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’814 Patent is invalid as obvious primarily in light of two prior art references: U.S. Patent No.
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7,044,896 (“’896 Patent”) and U.S. Patent No. 7,090,622 (“’622 Patent”). See MSJ at 2–10, ECF
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122. In support of its motion, Woss submitted the expert report of Dr. Glen Stevick. See MSJ,
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Ex. 4, ECF 122-4. However, Woss later withdrew this report and any reference thereto in its
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motion. See ECF 129. TRX opposed the motion, submitting in support of its opposition the
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declaration of Randy Hetrick, the inventor of both prior art patents and the ’814 Patent. See
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Hetrick Decl. ISO MSJ Opp., ECF 130-2.
The Court granted this portion of Woss’s motion for summary judgment, holding that the
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United States District Court
Northern District of California
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’814 patent was invalid as obvious in light of the ’622 Patent as modified by the ’896 Patent. See
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Order at 4–24, ECF 149. The Court first determined that the person of ordinary skill in the art
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(“POSITA”) was an “ordinary layman of average intelligence who is aware of the prior art,” a
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definition that is more favorable to TRX as the non-moving party. See id. at 9. The Court also
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held that claim 1 of the ’814 Patent could serve as a representative claim of the patent for the
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purposes of obviousness. Id. at 19. Next, the Court found that “the fundamental difference
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between the ’814 Patent and the prior art is ‘a second loop attached to said hand grip, where said
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second loop is a continuous loop which passes through said hand grip’” Id.
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As to the prior art, the ’896 Patent teaches that a hand grip can be formed with a loop
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passing through the grip and that the hand grip can be integrally attached. Id. at 20 (citing ’896
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Patent at Fig. 4, ECF 122-6). The ’622 Patent, for its part, teaches a second loop and grip, but
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does not teach attaching them integrally to the exercise device, but rather teaches “a removable
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method ‘to provide[] for a greater number of possible exercises.’” Id. at 21 (alteration in original)
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(quoting Mot., Ex. B (“’622 Patent”) at Abstract, ECF 281). The Court then concluded that there
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were reasons why a POSITA would want to improve on the ’622 Patent by integrally attaching the
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second loop and grip, and that doing so required only “combin[ing] simple elements disclosed in
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the prior patents.” Id. Finally, The Court held there was “no evidence that the prior art teaches
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away from the addition of a second loop passing through the grip.” Id. Given these facts, the
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Court held that the addition of a second integrally attached loop would have been obvious to a
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POSITA. Id.
The Court also rejected each of TRX’s arguments in opposition. First, it rejected TRX’s
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argument that Woss had failed to provide evidence from a POSITA because such evidence is not
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required where the technology is easily understandable. See id. at 22. Next, it held that it was
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TRX’s burden to establish secondary considerations of obviousness, not Woss’s, so Woss’s failure
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to provide evidence to address these considerations was not determinative. Third, the Court
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refused to consider the declaration of TRX’s inventor to support its POSITA arguments. Id. And
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finally, it held that though the Patent and Trademark Office (“PTO”) considered this prior art in
the patent’s prosecution, this was not dispositive because Woss had put forth a prima facie case of
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United States District Court
Northern District of California
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obviousness. Id. at 23. It also held that TRX failed to meet its burden to provide evidence of
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secondary considerations of obviousness because the inventor’s declaration did not sufficiently tie
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the company’s commercial successes to the invention, and because the declaration contained
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“subjective evidence” that could not be considered as objective indicia of non-obviousness. Id. at
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The case proceeded to trial, and the jury found Woss liable for trademark infringement and
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infringement of the ’896 Patent. See ECF 235. After this verdict was rendered, Woss informed
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the Court that it had filed for Chapter 7 Bankruptcy. See ECF 253. All post-verdict deadlines
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were continued in light of the automatic stay in the bankruptcy case. See ECF 254. After the
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automatic stay was lifted, TRX filed a motion for leave for reconsideration of the Court’s Order
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invalidating the ’814 Patent. See ECF 281. On October 10, 2018, the Court granted leave to file a
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motion for reconsideration and construed TRX’s motion for leave to be its motion for
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reconsideration. See ECF 292. Woss did not file a timely opposition to the motion. Final
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judgment has not yet been issued in this case.
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II.
LEGAL STANDARD
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Trial courts have the inherent power to reconsider, set aside, or amend interlocutory orders
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at any time prior to the entry of a final judgment. Fed. R. Civ. P. 54(b). The substantive standard
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governing reconsideration of an interlocutory order is the same as that which governs motions to
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alter or amend judgment under Rule 59(e). Motions for reconsideration are disfavored and
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“should not be granted, absent highly unusual circumstances, unless the district court is presented
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with newly discovered evidence, committed clear error, or if there is an intervening change in the
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controlling law.” McDowell v. Calderon, 197 F.3d 1253, 1254 (9th Cir. 1999) (per curiam)
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(internal quotation and citation omitted). Furthermore, “[a] motion for reconsideration ‘may not
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be used to raise arguments or present evidence for the first time when they could reasonably have
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been raised earlier in the litigation.’” Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co.,
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571 F.3d 873, 880 (9th Cir. 2009) (quoting Kona Enters., Inc. v. Estate of Bishop, 229 F.3d 877,
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890 (9th Cir. 2000)).
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United States District Court
Northern District of California
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III.
DISCUSSION
Having reviewed the relevant briefing, the Order, the underlying patents, and the evidence
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in support of and in opposition to Woss’s motion for summary judgment, the Court agrees with
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TRX that reconsideration of the Order is appropriate because Woss failed to provide sufficient
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evidence to support a finding of obviousness.
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The relevant legal standard for summary judgment and invalidating a patent as obvious are
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set forth in detail in the Order. However, the Court reiterates a few key points here. As the
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summary judgment movant seeking to invalidate a patent, Woss faces a heavy burden on multiple
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fronts. First, Woss must demonstrate obviousness by clear and convincing evidence. See Kao
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Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006). Not only that, but where, as here,
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a prior art reference was considered by the PTO during prosecution, the reference may be
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accorded less weight. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1366
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(Fed. Cir. 2007). And whether there is only one or more than one prior art references, the burden
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falls on the movant to show that a POSITA would have been motivated to combine the elements
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of the references or the embodiments therein or that common sense would have led a POSITA to
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supply a claim limitation missing from the prior art. See In re Stepan Co., 868 F.3d 1342, 1346
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n.1 (Fed. Cir. 2017); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016), cert.
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denied sub nom. Google Inc. v. Arendi S.A.R.L., 137 S. Ct. 1329 (2017).
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Despite this burden, Woss failed to introduce any evidence to support its obviousness
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arguments, instead relying on the “simplicity of the subject matter” for its argument that no expert
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testimony was required. See MSJ at 8, ECF 122. But TRX persuasively argues that such evidence
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was required in this case because common sense might not have led a POSITA to convert the
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detachable second loop and grip from the ’622 Patent into an integrally attached second loop and
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grip, as Woss argued and the Court accepted as true. See Mot. at 5–6. Though the ’814 Patent’s
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integral attachment of the second loop and grip apparently solved several perceived problems with
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the ’622 Patent’s detachable handles (see Order at 21), it also ran directly counter to at least one of
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the ’622 Patent’s alleged improvements over the prior art. As TRX notes, “the ’622 Patent teaches
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that using multiple add-on grip accessories is a benefit which greatly extends the utility of the
device.” Mot. at 5; see Mot. at 5 n.14 (“The utility of the exercise device of the present invention
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United States District Court
Northern District of California
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is greatly extended by providing a number of add-on grip accessories for the device, specifically
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by providing alternative grip devices for attaching to the grips of the exercise device.” (quoting
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’622 Patent at 14:30–35)). Indeed, the Court recognized this functionality of the ’622 Patent in its
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Order. See Order at 19 (“[I]t teaches a removable method ‘to provide[] for a greater number of
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possible exercises.’” (quoting ’622 Patent at Abstract)). What’s more, this improvement was
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made over the ’896 Patent, which taught integrally attached loops that the ’622 Patent to change.
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In light of the teachings of the ’622 Patent that detachable accessories improve
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functionality, the Court cannot support a finding of obviousness in the absence of any evidence
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whatsoever from Woss that a POSITA would have been motivated to invent away this
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functionality. TRX is correct that to meet its burden Woss should have produced evidence
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relevant to how a POSITA would view this change, including perhaps “how these products are
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built and assembled, how they are stitched, if two of these straps can pass in these small handles,
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or better yet, how installing one permanent foot strap could interfere with the use of other
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accessories.” Mot. at 8. This holding is especially warranted because the PTO considered these
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references and found the ’814 Patent not obvious. The references must be read in light of this
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result.
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To the extent Woss could arguably be said to have made a prima facie showing of
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obviousness even without any supporting evidence, the Court must also consider TRX’s evidence
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of secondary considerations. Although this evidence is weak, it is not nothing. While TRX’s
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chief executive officer is also the inventor of each of the relevant patents, his declaration provides
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some evidence as to secondary considerations, including that at the time TRX began selling its
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devices there were no other strap-based exercise devices available for sale on the market, that
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there were several alternative designs he attempted that were unsuccessful, and that the company
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experienced immense commercial success in the two years following the design change (although
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this success is at best correlated with the design change) and received numerous accolades.
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Hetrick Decl. ¶¶ 7, 14–18. Though such evidence alone would not overcome a strong prima facie
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showing of obviousness, it serves to counter the extremely weak (if existent) showing made by
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Woss here. See Mot. at 8–9.
For these reasons, the Court finds that Woss did not meet its burden of demonstrating by
United States District Court
Northern District of California
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clear and convincing evidence that the ’814 Patent is invalid for obviousness.
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IV.
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ORDER
In light of Woss’s failure, the Court GRANTS TRX’s motion for reconsideration of the
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relevant portion of its August 23, 2016 Order granting Woss’s motion for summary judgment.
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The Court withdraws that portion of its Order declaring the ’814 Patent invalid for obviousness.
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See Order at 4–24. Therefore, Woss’s motion for summary judgment is DENIED with respect to
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the invalidity of the ’814 Patent.
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IT IS SO ORDERED.
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Dated: October 25, 2018
______________________________________
BETH LABSON FREEMAN
United States District Judge
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