Fitness Anywhere LLC v. Woss Enterprises LLC

Filing 40

ORDER Approving 39 Amended Joint Case Management Statement. The proposed schedule at Exhibit A is approved and shall be the case schedule through claim construction. Signed by Hon. Beth Labson Freeman on 10/14/2014. (blflc2, COURT STAFF) (Filed on 10/14/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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FITNESS ANYWHERE LLC
Plaintiff,

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vs.
WOSS ENTERPRISES LLC,

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Defendant.

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Case Number: C 14-01725 JSC
AMENDED JOINT CASE MANAGEMENT
STATEMENT, RULE 26(f)
REPORT, & [PROPOSED] ORDER

The parties to the above-entitled action jointly submit this AMENDED JOINT CASE
MANAGEMENT STATEMENT, RULE 26(f) REPORT & PROPOSED ORDER [final
paragraph] pursuant to the Standing Order for All Judges of the Northern District of California
(dated July 1, 2011), Civil Local Rule 16-9 and the October 2, 2014 Case Management
Conference.

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1. Jurisdiction & Service

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The basis for the court’s subject matter jurisdiction over plaintiff’s claims and defendant’s counterclaims, whether
any issues exist regarding persona jurisdiction or venue, whether any parties remain to be served, and, if any
parties remain to be served, a proposed deadline for service.

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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. No issues

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exist regarding personal jurisdiction or venue. All named parties have been served.

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2. Facts
A brief chronology of the facts and a statement of the principal factual issues in dispute.

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Plaintiff filed a complaint against Defendant for patent infringement, federal trademark
infringement, federal and state unfair competition, and tortious interference with prospective
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economic relationships. The basis of each claim is summarized below:
Patent Infringement – Plaintiff asserts that it is owner of all rights, title and interest in

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United States Patent Nos. 7,044,896, 7,806,814, and 8,043,197 (“the patents-in-suit”). Plaintiff

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contends that Defendants infringe the patents-in-suit by making, using, selling, offering to sell,

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and/or importing into the United States fitness equipment under the names “3000 Equalizer,”

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“3000 Stable,” “Military Gym Style,” “Military 1 in Trainer,” “Military 1.5 in Trainer,” “SST

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Suspension Trainer,” “Titan 1 ½ in Wide Strap,” and “WOSS XT” (collectively “the WOSS

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Products”). Plaintiff seeks injunctive relief, compensatory damages in an amount to be

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determined at trial, treble damages and attorneys’ fees, pursuant to 35 U.S.C. §§ 284 and 285.

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Trademark Infringement – Plaintiff asserts that it owns the registered trademark and

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service mark SUSPENSION TRAINING. Plaintiff contends that Defendant has infringed

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Plaintiff’s federally registered marks. Plaintiff seeks injunctive relief, compensatory damages,

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costs and attorneys’ fees under 15 U.S.C. §§ 1114, 1116 and 1117.

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Federal and State Unfair Competition – Plaintiff asserts that it owns the registered

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trademark and service mark SUSPENSION TRAINING. Plaintiff contends that Defendant has

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used confusingly similar imitations of Plaintiff’s federally registered marks and that such use is

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likely to cause confusion, deception, and mistake by creating the false and misleading impression

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that Defendant’s goods are manufactured or distributed by Plaintiff, or are associated with

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Plaintiff, or have sponsorship, endorsement, or approval of Plaintiff. Plaintiff contends that

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Defendant’s actions are a violation of 15 U.S.C. § 1125(a) and California Business and

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Professions Code § 17200. Plaintiff seeks injunctive relief, compensatory damages,

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disgorgement of profits, costs, and attorneys’ fees.

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Tortious Interference with Prospective Economic Relationships – Plaintiff asserts that
there exists an economic relationship between Plaintiff and purchasers of exercise equipment and
a probability of future economic benefit to Plaintiff from these purchasers, and that Defendant
has acted to disrupt this relationship in the ways summarized above. Plaintiff seeks exemplary
and punitive damages.
Defendant has filed its Answer denying liability to Plaintiff and a Counterclaim, which
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are summarized as follows:

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Patents

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Defendant asserts that Plaintiff’s patents are invalid and not infringed. The purported

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invention(s) is(are) obvious and not novel. Defendant does not make, use, sell or import any

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products covered by any claim of the asserted patents and does not practice any methods covered

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by any claim of the asserted patents and does not induce others to do so or contribute to others

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doing so.

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Trademark

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Defendant asserts that Plaintiff’s “marks” are invalid because they are generic or merely

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descriptive and do not operate to identify a single source, and to the extent Defendant uses any of

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the words in Plaintiff’s “marks” they are used to truthfully describe its own products, and such

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use is classic fair use and not likely to cause confusion. Defendant’s products are of superior

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quality and much lower price point., thereby further reducing likelihood of confusion.

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Moreover, Plaintiff is less than candid by referring to its single “registered … mark” and to

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purported infringements of “marks”. Plaintiff does have registrations of the same mark in three

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categories, two of which categories have absolutely nothing to do with the goods or services of

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Defendant. The foregoing comments refer therefore to the mark in Class 28.

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Unfair Competition

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Defendant asserts it has made no false or confusing statements of any kind, and that any

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damages are beyond speculative given the superior quality and lower price point of Defendant’s

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goods.

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Interference With Prospective Economic Advantage

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Defendant asserts it has not committed and Plaintiff cannot prove any interference claim

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as alleged for several reasons including that the intent requirement is utterly lacking and because
Defendant has committed no independent wrongful act that supports such a claim under
California law. Moreover, damages from any such acts are completely speculative for the
reasons set forth above.
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3. Legal Issues

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A brief statement, without extended legal argument, of the disputed points of law, including reference to specific
statutes and decisions.

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The legal issues to be addressed include:
1. Whether the Defendant makes, uses, sells, offers for sale and/or imports into the
United States, devices that infringe one or more claims of the patents-in-suit in violation of 35
U.S.C. § 271;
2. Whether the asserted claims of the patents-in-suit meet the conditions for patentability
and satisfy all of the requirements set forth in the patent laws, including without limitation the
provisions of 35 U.S.C. §§ 101, 102, 103, and/or 112;
3. The proper construction of the asserted claims;
4. Whether Plaintiff’s SUSPENSION TRAINING trademark and service mark are valid
and protectable marks;
5. Whether Defendant has infringed Plaintiff’s SUSPENSION TRAINING trademark
and service mark;
6. Whether Defendant’s use of any words alleged by Plaintiff to constitute infringement
was a non-infringing nominative use or was a use made fairly and in good faith only to describe
the goods or services of Defendant, 15 U.S.C. § 1115.
7. Whether Defendant has engaged in actionable conduct likely to cause confusion,
deception and/or mistake among consumers;
8. Whether Defendant has engaged in acts that were designed to and which did disrupt
the relationship between Plaintiff and purchasers of exercise equipment; and
9. Whether any party is entitled to damages, costs, attorneys’ fees and/or expenses.

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4. Motions
All prior and pending motions, their current status, and any anticipated motions.

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Plaintiff has filed, Defendant has filed its opposition to, and Plaintiff has filed its reply to,
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a motion to dismiss Defendant’s First Amended Counterclaim. Previously, the following
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motions were filed in connection with this case:
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Title of Motion

Date of Order Issued

Motion for leave to appear in Pro Hac Vice
by Alain Villeneuve (Dkt. No. 8)
Motion for leave to appear in Pro Hac Vice
by Michael J. Waters (Dkt. No. 9)
Motion to Dismiss Counterclaim filed by
Plaintiff (Dkt. No. 20)
Motion to Dismiss Amended Counterclaim
filed by Plaintiff (Dkt. No. 29)

May 13, 2014 (Dkt. No. 10)
May 13, 2014 (Dkt. No. 11)
August 4, 2014 (Dkt. No. 27)
September 26, 2014 (Dkt. No. 35)

The parties anticipate filing, at least, motions for summary judgment on infringement and

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validity; discovery motions, to the extent the parties cannot resolve a dispute; and pretrial and

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post-trial motions.

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Defendants amended their counterclaim on August 8, 2014 and Plaintiff answered the
amended counterclaim on October 7, 2014.

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5. Amendment of Pleadings
The extent to which parties, claims, or defenses are expected to be added or dismissed and a proposed deadline for
amending the pleadings.

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Plaintiff has not amended its Complaint to date. Plaintiff presently has no plans to amend

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its Complaint, but reserves the right to do so in the event it obtains new information in the course

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of discovery.

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6. Evidence Preservation
A brief report certifying that the parties have reviewed the Guidelines Relating to the Discovery of Electronically
Stored Information (“ESI Guidelines”), and confirming that the parties have met and conferred pursuant to Fed. R.
Civ. P. 26(f) regarding reasonable and proportionate steps taken to preserve evidence relevant to the issues
reasonably evident in this action. See ESI Guidelines 2.01 and 2.02, and Checklist for ESI Meet and Confer.

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The parties have reviewed the Guidelines Relating to the Discovery of Electronically
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Stored Information. Additionally, the parties have met and conferred pursuant to Federal Rule of
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Civil Procedure 26(f) regarding reasonable and proportionate steps taken to preserve evidence
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relevant to the issues reasonably evident in this action.

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7. Disclosures

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Whether there has been full and timely compliance with the initial disclosure requirements of Fed. R. Civ. P. 26 and
a description of the disclosures made.

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The parties exchanged Federal Rule of Civil Procedure 26(a)(1) initial disclosures on
August 14, 2014, and such disclosures addressed the topics identified in Rule 26(a)(1)(A)(i)-(iv).

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8. Discovery

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Discovery taken to date, if any, the scope of anticipated discovery, any proposed limitations or modifications of the
discovery rules, a brief report on whether the parties have considered entering into a stipulated e-discovery order, a
proposed discovery plan pursuant to Fed. R. Civ. P. 26(f), and any identified discovery disputes.

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No discovery has been taken to date.

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Plaintiff will require discovery from Defendant on at least the following subjects: (i) the

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structure, function and operation of the WOSS Products; (ii) the Defendant’s proposed

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construction of each asserted claim of the patents-in-suit; (iii) the Defendant’s invalidity

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contentions and evidence in support of same; (iv) Defendant’s use of SUSPENSION TRAINING

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and/or similar imitations thereof in the marketing and sale of its products; (v) Defendant’s

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knowledge and intent in taking the actions complained of in the complaint; and (vi) the costs,

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revenue and profits to Defendant for each of the WOSS Products and products marketed and/or

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sold in connection with Defendant’s use of SUSPENSION TRAINING and/or similar imitations

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thereof.

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Defendant will require discovery from Plaintiff on at least the following subjects: (a) all

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instances of alleged actual confusion; (b) all instances of alleged interference with economic

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relationships; (c) [of the author of the patents in suit] the patent prosecution and meaning of

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terms ascribed during that process; (d) alleged damage.

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The parties have agreed to the following modifications to the discovery rules imposed by
the Federal Rules of Civil Procedure:
1. Claims of Privilege or Work-Product Protection: Attorney-client privileged

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documents, work product documents, and documents subject to any other privilege or immunity

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(including electronically stored information) created after April 14, 2014 (the date the Complaint

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was filed) need not be identified on a party’s privilege log. Additionally, inadvertent production

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of privileged or otherwise protected documents will not constitute grounds for waiver of

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privilege or other protection.

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2. Electronically Stored Information (“ESI”): The parties intend to negotiate and reach
agreement on electronic discovery and production procedure.
3. Method of Service: All papers not required to be filed may be served by email,
provided that the file size of each individual email does not exceed 9 MB.
4. Protective Orders: The parties will meet and confer and attempt to agree on
appropriate protection of discovery materials as and should the need arise.

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9. Class Actions
If a class action, a proposal for how and when the class will be certified.

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Not applicable.
10. Related Cases
Any related cases or proceedings pending before another judge of this court, or before another court or
administrative body.

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There are no presently known related cases or proceedings pending before another judge
of this Court or before another court or administrative body.

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11. Relief
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All relief sought through complaint or counterclaim, including the amount of any damages sought and a description
of the bases on which damages are calculated. In addition, any party from whom damages are sought must describe
the bases on which it contends damages should be calculated if liability is established.

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Plaintiff seeks the following relief for each of its claims:
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1.

Patent Infringement – Plaintiff seeks injunctive relief pursuant to 35 U.S.C. § 283.

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Plaintiff seeks compensatory damages pursuant to 35 U.S.C. § 284 in an amount that presently

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cannot be ascertained but that will be determined at trial. Plaintiff also seeks a trebling of

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damages pursuant to 35 U.S.C. § 284, and attorneys’ fees pursuant to 35 U.S.C. § 285.

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2.

Trademark Infringement – Plaintiff seeks injunctive relief and to recover

Defendant’s profits, actual damages, enhanced profits and damages, costs, and reasonable
attorneys’ fees under 15 U.S.C. §§ 1114, 1116 and 1117.
3.

Federal Unfair Competition – Plaintiff seeks injunctive relief and to recover

Defendants’s profits, actual damages, enhanced profits and damages, costs, and reasonable
attorneys’ fees under 15 U.S.C. §§ 1125(a), 1116 and 1117.
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State Unfair Competition – Plaintiff seeks injunctive relief, as well as

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disgorgement of all Defendant’s profits associated with the alleged unfair competition pursuant
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to California Business and Professions Code § 17203.
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Tortious Interference with Prospective Economic Relationship – Plaintiff seeks

actual damages, as well as exemplary and punitive damages.

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Defendant requests judgment in its favor on all of Plaintiff’s claims, together with
judgment in its favor on its counterclaim. Defendant seeks costs of suit and its attorney fees both
under “bad faith litigation” and other applicable law.

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12. Settlement and ADR
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Prospects for settlement, ADR efforts to date, and a specific ADR plan for the case, including compliance with ADR
L.R. 3-5 and a description of key discovery or motions necessary to position the parties to negotiate a resolution.

The parties have submitted ADR certifications. The parties also have conferred, in July

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2014, on ADR issues per ADR L.R. 3-5, and have participated to an ADR Telephone Conference

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on September 29, 2014. The next ADR Telephone Conference is set for December 9, 2014.

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Plaintiff submits the parties are both willing to engage in settlement discussions and

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believe that formal ADR will be most productive after the parties have exchanged claim

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disclosures, infringement contentions and invalidity contentions.

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Defendant submits that it has invited Plaintiff to enter into early settlement discussions, to
which Plaintiff has stated a willingness based on conditions unacceptable to Defendant.

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13. Consent to Magistrate Judge For All Purposes
Whether all parties will consent to have a magistrate judge conduct all further proceedings including trial and entry
of judgment.
YES
X NO

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14. Other References

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Whether the case is suitable for reference to binding arbitration, a special master, or the Judicial Panel on
Multidistrict Litigation.

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The parties do not believe this case is suitable for reference to arbitration, a special
master, or the Judicial Panel on Multidistrict Litigation.

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15. Narrowing of Issues

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Issues that can be narrowed by agreement or by motion, suggestions to expedite the presentation of evidence at trial
(e.g., through summaries or stipulated facts), and any request to bifurcate issues, claims, or defenses.

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The parties have not yet identified any issues that may be narrowed by agreement or
motion.
16. Expedited Trial Procedure
Whether this is the type of case that can be handled under the Expedited Trial Procedure of General Order 64,
Attachment A. If all parties agree, they shall instead of this Statement, file an executed Agreement for Expedited
Trial and a Joint Expedited Case Management Statement, in accordance with General Order No. 64, Attachments B
and D.

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The parties do not believe that this case may be handled on an expedited basis.

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17. Scheduling
Proposed dates for designation of experts, discovery cutoff, hearing of dispositive motions, pretrial conference and
trial.

The parties’ proposed dates through the claim construction hearing are set forth in the

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attached Exhibit A.

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18. Trial
Whether the case will be tried to a jury or to the court and the expected length of the trial.

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Both parties have demanded a trial by jury on all issues raised by the Complaint and

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Counterclaim. At present, the parties believe that a realistic estimated length of trial is 3-6 days.
19. Disclosure of Non-party Interested Entities or Persons
Whether each party has filed the “Certification of Interested Entities or Persons” required by Civil Local Rule 3-16.
In addition, each party must restate in the case management statement the contents of its certification by identifying
any persons, firms, partnerships, corporations (including parent corporations) or other entities known by the party
to have either: (i) a financial interest in the subject matter in controversy or in a party to the proceeding; or (ii) any
other kind of interest that could be substantially affected by the outcome of the proceeding.

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Each party filed its Certification of Interested Entities or Persons (Plaintiff on April 14,
2014, and Defendant on June 27, 2014), and certified that other than the named parties, it had no
interested parties to report.

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20. Other
Such other matters as may facilitate the just, speedy and inexpensive disposition of this matter.

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The parties are not aware of any other matters that would facilitate the disposition of this
matter.

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21. Patent Local Rule 2-1(a) Disclosures
The disclosures required by Patent L. R. 2-1(a)(1)-(2) and (4) are included in the parties
Joint Case Management Statement. For Patent L.R. 2-1(a)(3), Plaintiff states that it does not
presently anticipate the need for live testimony at the claim construction hearing. All parties
expressly reserve the right to identify witnesses who might provide live testimony at the claim
construction hearing as permitted under Patent L. R. 4-3(e). Plaintiff proposes that it will present
first, followed by Defendant. Plaintiff estimates that the hearing will take no more than 3 hours.
Defendant cannot provide an objective and good faith estimate until it receives Plaintiff’s

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disclosures and disclosure of which claims apply to which products and Plaintiff’s proposed

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constructions of its claims. Depending on those disclosures, Plaintiff’s estimate may be fair, or

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may be too short.

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Dated: October 10, 2014

/s Michael J. Waters
Counsel for Plaintiff

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Dated: October 10, 2014

/s H. Michael Brucker

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Counsel for Defendant

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CASE MANAGEMENT ORDER
The above AMENDED JOINT CASE MANAGEMENT STATEMENT, RULE 26(F) REPORT
& PROPOSED ORDER is approved as the Case Management Order for this case and all parties
shall comply with its provisions. [In addition, the Court makes the further orders stated below:]
The proposed schedule at Exhibit A is approved and shall be the case schedule through claim
construction.
IT IS SO ORDERED.
Dated: October 14, 2014

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UNITED STATES DISTRICT JUDGE

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Exhibit A

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Case Event

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(Through Claim Construction Hearing)

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Parties exchanged initial disclosures.
Plaintiff serves its disclosures under Patent
Rules 3-1 & 3-2.
Defendant serves their disclosures under Patent
Rules 3-3 & 3-4.
ADR Telephone Conference
Parties to discuss ADR possibilities and
conduct any agreed ADR process
Patent Rule 4-1 exchange of proposed terms
for construction.
Patent Rule 4-2 exchange of preliminary claim
constructions and extrinsic evidence.
Patent Rule 4-3 joint claim construction and
prehearing statement.
Submission of Joint Case Management
Statement
Discovery Cutoff – Claim Construction Issues
Case Management Conference
Patent Rule 4-5(a) – Plaintiff’s opening brief
on claim construction
Patent Rule 4-5(b) – Defendant’s responsive
claim construction brief
Patent Rule 4-5(c) – Plaintiff’s reply brief on
claim construction
Claim Construction Hearing

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Latest Permissible Date

August 14, 2014
October 16, 2014
December 1, 2014
December 9, 2014
December 2014-January 2015
February 13, 2014
March 6, 2015
March 21, 2015
April 30, 2015
May 1, 2015
May 14, 2015
May 22, 2015
June 5, 2015
June 12, 2015
July 17, 2015

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