Times Three Clothier,LLC, v. Spanx,Inc.

Filing 70

MEMORANDUM OPINION & ORDER....The June 13 motion by Spanx to strike Times Threes second amended disclosure of asserted claims and infringement contentions relating to the 195 Patent is denied. The stay of proceedings concerning the 195 Patent entere d on May 6, 2014 is vacated and discovery is to proceed. The parties shall meet and confer regarding an appropriate schedule for these actions going forward and submit proposals to the Court by August 27. (Signed by Judge Denise L. Cote on 8/20/2014) (gr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
TIMES THREE CLOTHIER, LLC,
:
:
Plaintiff,
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:
-v:
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SPANX, INC.,
:
Defendant.
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:
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13cv2157 (DLC)
13cv7635 (DLC)
MEMORANDUM OPINION
& ORDER

APPEARANCES:
For plaintiff:
Steven B. Pokotilow
Laura Goldbard George
Irah H. Donner
Binni N. Shah
Stroock & Stroock & Lavan LLP
180 Maiden Lane
New York, NY 10038
For defendant:
Kathleen E. McCarthy
King & Spalding LLP
1185 Avenue of the Americas
New York, NY 10036
Natasha H. Moffitt
King & Spalding LLP
1180 Peachtree Street, N.E.
Atlanta, GA 30309
DENISE COTE, District Judge:
On May 6, 2014, this Court granted defendant Spanx, Inc.’s
motion to strike plaintiff Times Three Clothier, LLC’s amended

disclosure of asserted claims and infringement contentions
relating to U.S. Patent No. 8,568,195 (the “‘195 Patent”).
Times Three Clothier, LLC v. Spanx, Inc., 2014 WL 1795210
(S.D.N.Y. May 6, 2014) (“May 6 Opinion”).

The May 6 Opinion

stayed proceedings concerning the ‘195 Patent and permitted
Times Three Clothier, LLC (“Times Three”) to further amend its
infringement contentions.

Times Three filed its second amended

disclosure of infringement contentions (“SAIC”) on May 30.
Spanx, Inc. (“Spanx”) now moves to strike Times Three’s SAIC.
For the reasons that follow, Spanx’s motion is denied.
BACKGROUND
The May 6 Opinion sets out the relevant facts and is
incorporated by reference.

In short, Times Three alleges that

two Spanx products, “The Top This Tank Style 1847” and “The Top
This Cami Style 1846” (the “Accused Products”), infringe the
‘195 Patent, a utility patent concerning a three-section garment
that slenderizes a woman’s figure through the use of compressive
material in the middle section of the garment.

The ‘195 Patent

comprises 77 claims, four of which are independent of the
others.

Three of the four independent claims specify that the

upper and lower sections are made of “substantially noncompressive” material while the middle section is made of
“compressive” material.

The fourth independent claim is for a

garment with upper and lower sections “comprising a first [and
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second] shaping characteristic,” but it too includes a
“slenderizing middle section” that produces “a compressive
inward force greater than the first and second shaping
characteristics.”

Thus, in each of the four independent claims,

the middle section includes a more compressive material than the
upper and lower sections do.
Times Three served its initial infringement contentions on
January 31, 2014 (the “Initial Contentions”).

Times Three

misunderstood the Accused Products’ labels and confused the
middle and lower sections.

Accordingly, Times Three mistakenly

indicated, in its Initial Contentions, that the Accused
Products’ lower section was most compressive -- a contention
inconsistent with the infringement of the ‘195 Patent, which
requires that the middle section be most compressive.

As

“support” for its Initial Contentions, Times Three cited the
fact that the lower section has a greater spandex content than
the middle section.
After Spanx apprised Times Three of its error, Times Three
served amended infringement contentions on February 19 (the
“Amended Contentions”).

In the Amended Contentions, Times Three

reversed its position and alleged -- as would be necessary for a
finding of infringement -- that the Accused Products’ middle
section is the most compressive.

Spanx moved to strike the

Amended Contentions on March 28; the Court granted Spanx’s
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motion on May 6, stayed proceedings concerning the ‘195 Patent,
and permitted Times Three to file second amended infringement
contentions (SAIC).
Times Three filed the SAIC on May 30, accompanied by a
declaration by Robert Beaulieu (“Beaulieu”).

Beaulieu received

a B.S. in Textile Technology/Chemistry from the University of
Massachusetts at Dartmouth.

Beaulieu was an Assistant Professor

of Textile Dyeing/Chemistry at the Fashion Institute of
Technology (“FIT”) from 1977-2013, served as Chairperson of the
Textile Development and Marketing Department at FIT from 19831993, and belonged to the American Association of Textile
Chemists and Colorists from 1967-2008.
Beaulieu studied the Accused Products visually and
physically.

He also sent samples from the Accused Products’

three sections to Vartest Laboratories, Inc. for stretch and
recovery testing.

According to Beaulieu, the results from those

tests confirm that the middle section is the most compressive.
Times Three cites to Beaulieu’s declaration in its SAIC,
contending that “[a] physical, visual examination of the fabric
used” in the upper and lower sections indicates that they
contain “a substantially non-compressive shaper material that is
configured by its construction, threads, knit and/or pattern
used.”

Likewise, Times Three contends that the middle section

contains a “compressive material that is configured by its
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construction and by its position between the upper section and
lower section, as well as the threads, knits and patterns used.”
In support, Times Three cites Beaulieu’s “testing results
showing a high tensile strain [for the middle section] at
[certain] elongation[s].”
By letter of June 6, Spanx advised the Court that it
intended to move to strike the SAIC.

By Memorandum Endorsement

of June 6, the Court granted the parties’ joint request for a
stay of all deadlines in the above-captioned actions pending
disposition of that motion.
June 13.

Spanx moved to strike the SAIC on

In opposition to Spanx’s motion, Times Three submitted

a second declaration by Beaulieu, clarifying certain points.
Spanx’s motion was fully submitted on July 2.

For the reasons

that follow, Spanx’s motion is denied and the May 6 stay of
proceedings concerning the ‘195 Patent is lifted.
DISCUSSION
The applicable legal standards are set out in the May 6
Opinion; that discussion is incorporated by reference.
6 Opinion, 2014 WL 1795210, at *2-*3.

See May

Many other jurisdictions,

like the Northern District of California, have adopted local
patent rules that require infringement contentions to include
“[a] chart identifying specifically where each limitation of
each asserted claim is found within each Accused
Instrumentality.”

Rule 3–1(c), Patent Local R., N.D. Cal (the
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“California Rule”).

Applying the California Rule, courts in

this district have held that, where such information is
reasonably available to plaintiffs before discovery,
infringement contentions must be sufficient “to raise a
reasonable inference that all accused products infringe” and to
permit the court to “make a principled decision on whether
discovery will proceed.”

Yama Capital LLC v. Canon Inc., 12

Civ. 7159 (KPF), 2013 WL 6588589, at *3 (S.D.N.Y. Dec. 13, 2013)
(citation omitted).

“Plaintiff must allege specific ways in

which [each] limitation exists, with as much specific
identifying information as is reasonably available without
discovery.”

Id. at *6.

In their briefing on Spanx’s March 28 motion to strike, the
parties disputed whether the specificity required by the
California Rule is an “inherent” requirement in the Southern
District’s Local Patent Rules.

The Court declined to reach this

question, noting that, whatever the Local Patent Rules require
by default, they grant the Court discretion to “modify the
obligations . . . set forth in the[ ] Local Patent Rules based
on the circumstances of any particular case.”
1.

Local Patent R.

Given Times Three’s about-face, the Court held that more

detailed infringement contentions were appropriate before
discovery on the ′195 Patent was taken.

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In its SAIC, Times Three cites to the results of physical
testing that, in Beaulieu’s opinion, supports the contention
that the Accused Products’ middle section is the most
compressive.

This suffices to raise a reasonable inference of

infringement.
Spanx argues that Beaulieu’s declarations fail to support
Times Three’s infringement contentions because Beaulieu does not
explain how the particular “threads, knits and patterns used” in
the three sections affect their compressive properties.

Spanx

is correct that Beaulieu’s recitation of this list of fabric
characteristics, with no explanation of how the threads, knits,
and patterns used in the middle section differ from those in the
upper and lower sections, does not support Times Three’s
infringement contentions.

Rather, it is the test results

Beaulieu reports that create a sufficient inference of
infringement to permit discovery to proceed.

Beaulieu’s

reference to threads, knits, and patterns appears to be an
attempt to explain that spandex content may not be the sole
factor rendering a garment section compressive.
Spanx also argues that Beaulieu fails to put the test
results “into any meaningful context,” that a minority of the
results suggests that the lower section is most compressive, and
that the balance of the results suggest that the lower section
is a close second.

Spanx is free to raise arguments concerning
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the scope of claim terms in its claim construction briefing, to
challenge the accuracy of Times Three’s infringement contentions
through summary judgment practice at an appropriate time, and to
raise any available and appropriate Daubert challenges at that
time.

The testing results support a reasonable inference of

infringement of the ‘195 Patent at this early stage of the
proceedings, even though Times Three has failed to identify the
means by which the garment’s characteristics render the middle
section most compressive.
CONCLUSION
The June 13 motion by Spanx to strike Times Three’s second
amended disclosure of asserted claims and infringement
contentions relating to the ‘195 Patent is denied.

The stay of

proceedings concerning the ‘195 Patent entered on May 6, 2014 is
vacated and discovery is to proceed.

The parties shall meet and

confer regarding an appropriate schedule for these actions going
forward and submit proposals to the Court by August 27.

SO ORDERED:
Dated:

New York, New York
August 20, 2014
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DENISE COTE
United States District Judge

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