Icon Health & Fitness v. Johnson Health Tech North America
Filing
441
MEMORANDUM DECISION AND ORDER granting in part and denying in part 427 Motion for Clarification on 327 Order; granting in part and denying in part 434 Motion for Discovery (Scope in Light of 327 Order). Signed by Judge David Nuffer on 7/19/19 (alt)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
ICON HEALTH & FITNESS, INC., a
Delaware corporation,
Plaintiff,
v.
JOHNSON HEALTH TECH NORTH
AMERICA, INC., a Wisconsin corporation,
Defendant.
MEMORANDUM DECISION AND
ORDER
(1) GRANTING IN PART AND
DENYING IN PART [427] MOTION FOR
CLARIFICATION
AND
(2) GRANTING IN PART AND
DENYING IN PART [434] MOTION
REGARDING THE SCOPE OF
DISCOVERY
AND
NOTICE OF SCHEDULING
DISCUSSION
Case No. 1:10-cv-00209-DN-DBP
District Judge David Nuffer
The parties, Icon Health & Fitness, Inc. (“Icon”) and Johnson Health Tech North
America, Inc. (“Johnson”), seek clarification of prior orders and the scope of discovery that will
be permitted in this case. 1 In particular, the parties’ seek clarification of the December 17, 2013
Memorandum Decision and Order Granting [56] Motion for Partial Summary Judgment and
Denying [186] Motion for Partial Summary Judgment (“MSPJ Order”), 2 and how the MSPJ
Order and other prior orders effect the scope of discovery relating to the causes of action in
Icon’s Fourth Amended Complaint. 3
1
Motion for Clarification on Order Granting and Denying Partial Summary Judgment [327] (“Johnson’s Motion”),
docket no. 427, filed May 17, 2019; Icon Health & Fitness, Inc.’s Motion Regarding the Scope of Discovery in
Light of the Court’s Previous Covered Products Decision (“Icon’s Motion”), docket no. 434, filed May 31, 2019.
2
Docket no. 327, filed Dec. 17, 2013.
3
Docket no. 389, filed Feb. 4, 2015.
Having reviewed and considered the parties’ briefing and the docket, including all
relevant pleadings and prior orders entered in this case,
IT IS HEREBY ORDERED that Johnson’s Motion 4 is GRANTING in part and DENIED
in part, and Icon’s Motion 5 is GRANTING in part and DENIED in part, as follows:
1.
Icon’s Fourth Amended Complaint pertains only to claims 6, 8, and 14-21 of
United States Patent No. 6,193,631 (“the ’631 Patent”). 6
a. Icon alleges infringement and unfair competition by Johnson relating to: (i)
devices, technology, and a website that were subject to the MSPJ Order; 7 and
(ii) devices, technology, and a website that were not subject to the MSPJ
Order. 8
b. The MPSJ Order’s Covered Products determination applied only to claims 6,
7, 8, and 10 of the ’631 Patent, and Johnson’s accused devices that utilize its
“LIVETRACK Interactive USB Technology” and which were listed in the
MSPJ Order’s Undisputed Facts. 9 Those devices are: LS 8.0T Treadmill; LS
4
Docket no. 427, filed May 17, 2019.
5
Docket no. 434, filed May 31, 2019.
6
Fourth Amended Complaint ¶¶ 16-18, 25-35, 43, 46.
7
Id. ¶¶ 19, 21, 25, 27, 30, 40, 42.
8
Id. ¶¶ 20, 22, 26, 28, 31, 40, 42-43.
9
MSPJ Order; Memorandum Decision and Order Denying Plaintiff’s [338] Motion to Reconsider: (1) [327]
“...Order Granting [56] Motion for Partial Summary Judgment...” and (2) [328] “...Order Overruling Icon’s [297]
Objection...” (“[364] Order”) at 10-11, docket no. 364, filed May 5, 2014; Memorandum Decision and Order
Denying Johnson Health Tech North America, Inc.’s [316] Motion and Memorandum in Support of Motion to Strike
the Second Amended Complaint and Granting Icon’s [318] Cross-Motion for Leave to Amend (“[365] Order”) at 7,
docket no. 365, filed May 5, 2014; Memorandum Decision and Order Granting Icon Health & Fitness, Inc.’s [374]
Motion for Leave to Amend and Denying Johnson Health Tech North America, Inc.’s [378] Cross-Motion to
Dismiss Icon’s Unfair Competition Claim (“[388] Order”) at 9, docket no. 388, filed Jan. 13, 2015.
2
10.0T Treadmill; LS 13.0T Treadmill; LS 10.0E Elliptical; LS 13.0E
Elliptical; and LS 7.0 B Recumbent Bike. 10
c. The [365] Order 11 and the [388] Order 12 make clear that Icon could proceed
with the infringement and unfair competition claims in its Fourth Amended
Complaint. 13
2.
The prior orders in this case—in particular, the [364] Order 14—make clear that
Icon cannot pursue discovery on patents not in suit or attempt to introduce such patents in this
case.
a. The only remaining patent at issue in this case is the ’631 Patent. 15 The ’631
Patent is the only patent Icon expressly identifies in its Fourth Amended
Complaint.
b. Although Icon’s unfair competition claim generally refers to Icon’s
“intellectual property portfolio,” “patented technologies,” “innovations,” and
diminution in value of “other ICON Patents,” 16 these references will not be
permitted to act as an end run of the prior orders entered in this case and will
not expand the scope of this case. Icon has no claim in this case for damages
arising generally out of its “intellectual property portfolio,” “patented
10
MSPJ Order ¶ 30 at 11.
11
Defined in footnote 9, supra.
12
Defined in footnote 9, supra.
13
[365] Order at 7-8; [388] Order at 9, 11.
14
Defined in footnote 9, supra.
15
Fourth Amended Complaint ¶¶ 16-18, 25-35, 43, 46.
16
Id. ¶¶ 38-46.
3
technologies,” “innovations,” or to the diminution in value of “other ICON
Patents.”
c. The [364] Order makes clear that Icon cannot bring suit alleging infringement
of one of its patents and then force Johnson and the court to engage in an
analysis of every patent in Icon’s portfolio of Existing Patents to determine
whether the accused Johnson devices are Covered Products. 17 To rule
otherwise would render the parties’ 2009 Settlement Agreement ineffective in
any one suit and would place a significant burden on Johnson and the
judiciary to review and analyze Icon’s entire portfolio of Existing Patents
before determining whether an Icon suit violates the 2009 Settlement
Agreement’s Covenant Not to Sue. 18
d. Any future Covered Products determination in this case will relate only to
Johnson’s accused devices and technologies listed in Icon’s Fourth Amended
Complaint and will be limited to consideration of claims 6, 8, and 14-21 of the
’631 Patent. However, the MPSJ Order already determined that some of these
accused devices (LS 8.0T Treadmill; LS 10.0T Treadmill; LS 13.0T
Treadmill; LS 10.0E Elliptical; LS 13.0E Elliptical; and LS 7.0 B Recumbent
Bike) are Covered Products in relation to claims 6 and 8 of the ’631 Patent. 19
3.
Icon will not be required to provide a more definite statement describing its basis
for maintaining claims against Johnson’s devices that utilize the “LIVETRACK Interactive USB
Technology” or integrate the “Virtual Active” technology.
17
[364] Order at 11-12.
18
Id.
19
MSPJ Order; [364] Order at 10-11; [365] Order at 7; [388] Order at 9.
4
a. Johnson’s Motion is not a proper procedural vehicle to challenge the
sufficiency of the allegations in Icon’s Fourth Amended Complaint.
b. The [365] Order and the [388] Order make clear that factual resolution will
determine whether Johnson’s accused devices and technologies listed in
Icon’s Fourth Amended Complaint are Covered Products under the parties’
2009 Settlement Agreement. 20 The proper vehicle for this resolution is a
motion for summary or trial.
4.
Icon may pursue further discovery with respect to Johnson’s accused devices that
were both subject to the MPSJ Order and listed in the Fourth Amended Complaint, but only in
relation to claims 14-21 of the ’631 Patent. These devices are: LS 8.0T Treadmill, LS 10.0T
Treadmill, LS 13.0T Treadmill, LS 10.0E Elliptical, LS 13.0E Elliptical, and LS 7.0 B
Recumbent Bike. 21
5.
Icon may pursue further discovery with respect to Johnson’s accused devices that
were not subject to the MPSJ Order and are newly listed in the Fourth Amended Complaint.
These devices are: (a) LSPro1 Treadmill, LS 5.0U Upright Bike, LS 6.0R Recumbent Bike; 22
and (b) Vision treadmills, ellipticals, and bikes that incorporate an elegant or touch console and
Matrix “xe” and “xi” model steppers, treadmills, ellipticals, climbmills, and stationary cycles. 23
However, because the Fourth Amended Complaint is limited to claims 6, 8, and 14-21 of the
’631 Patent, such discovery on these devices is limited to claims 6, 8, and 14-21 of the ’631
Patent.
20
[365] Order at 7-8; [388] Order at 9.
21
MSPJ Order ¶ 30 at 11; Fourth Amended Complaint ¶ 19.
22
Fourth Amended Complaint ¶ 19.
23
Id. ¶ 20.
5
6.
Icon may pursue further discovery with respect to Johnson’s livestrong.com and
passportplayer.com websites. However, such discovery is limited to the Johnson devices listed in
the Fourth Amended Complaint, 24 and claims 6, 8, and 14-21 of the ’631 Patent (as referenced in
paragraphs 4 and 5 above).
NOTICE
At the status conference set Tuesday July 23, 2019, the parties should be prepared to
discuss scheduling for the case.
Signed July 19, 2019.
BY THE COURT
________________________________________
David Nuffer
United States District Judge
24
Id. ¶¶ 19-20.
6
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