Speedfit LLC v. Woodway USA, Inc.

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

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SPEEDFIT LLC and AUREL A.

ASTILEAN,

Plaintiffs,

MEMORANDUM & ORDER

13-CV-1276 (KAM)(AKT)

-against-

WOODWAY USA, INC.,

Defendant.

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MATSUMOTO, United States District Judge:

Before the court are cross-motions for summary

judgment by plaintiffs Speedfit LLC (“Speedfit”) and Aurel A.

Astilean (“Astilean”) (collectively, “plaintiffs”), and

defendant Woodway USA, Inc. (“Woodway” or “defendant”).

Plaintiffs allege Woodway infringed two Speedfit patents

relating to a curved, non-motorized treadmill involving a

closed-loop treadmill belt designed to maintain a concave

running surface and taut lower portion. (ECF No. 150,

Supplemental Complaint (“Supp. Compl.”) ¶¶ 18-21.)1

1 The parties served their opening briefs on June 28, 2019, (ECF No. 268-

1, Plaintiffs’ Memorandum of Law in Support of Plaintiffs’ Motion for Summary

Judgment (“Pls.’ Mot.”); ECF No. 279-1, Defendant’s Memorandum of Law in

Support of its Motion for Summary Judgment (“Def.’s Mot.”)); their opposition

briefs on July 17, 2019, (ECF No. 280, Memorandum of Law in Opposition to

Defendant’s Motion for Summary Judgment (“Pls.’ Opp.”); ECF No. 277,

Defendant’s Memorandum of Law in Opposition to Plaintiffs’ Motion for Summary

Judgment (“Def.’s Opp.”)); and their replies on August 9, 2019, (ECF No. 278,

Memorandum of Law in Reply to Defendant’s Answer (“Pls.’ Reply”); ECF No.

281, Defendant’s Reply Memorandum of Law (“Def.’s Reply”)). The parties also

submitted a joint Local Civil Rule 56.1 Statement. (ECF No. 283.) The

captions “JSOF (WW) ¶ _” and “JSOF (Sp.) ¶ _” are used in this Memorandum &

Order to denote undisputed facts asserted by defendant and plaintiffs,

BACKGROUND

I. Statement of Facts

A. Astilean’s Collaboration with Woodway

In late 2008, Astilean was regularly communicating

with Woodway and its personnel about development of a curved,

non-motorized treadmill. On December 11, 2008, Eric Weber,

Woodway’s Director of Sales and Marketing, arranged for delivery

of “1 mercury belt[,] 2 complete bearing rails[,] 2 foot fall

strips . . . [,] and 20 self tapping screws” to Astilean, and

directed Nicholas Oblamski, Woodway’s Senior Project Engineer,

to “add this to the list of moneys Alex [Astilean] owes us.”

(ECF No. 268-16, Declaration of John F. Vodopia (“Vodopia

Decl.”), Ex. PL4.)

Four days later, Astilean emailed Oblamski to ask if

he “got the new part,” (ECF No. 268-17, Vodopia Decl., Ex. PL5),

a reference to wooden bearing rails for a wooden prototype of

the curved, non-motorized treadmill (“Wooden Prototype”). (ECF

No. 283-1, Joint Deposition Testimony Appendix (“JDTA”), 0920:2-

19 (Oblamski Dep.).) Oblamski confirmed receipt, and the next

day, asked Astilean to provide pictures or a video of the

treadmill so that Oblamski could “have a better understanding of

respectively. The captions “WW SOF ¶ _” and “Sp. SOF ¶ _” refer to

statements of fact by defendant and plaintiffs, respectively, that are

disputed.

how it mounts and how the system works[.]” (Vodopia Decl., Ex.

PL5.) Moments later, Oblamski asked Douglas Bayerlein,

Woodway’s president, and others at Woodway, “[w]hat’s the news?

Do I get out my skill saw? Alex is wondering when he gets it

back and he wants to talk to Eric [Weber] or Doug [Bayerlein].”

(ECF No. 268-18, Vodopia Decl., Ex. PL6.) Oblamski’s email

attached photographs of a treadmill with a curved surface and

wooden side panels, stationed in an outdoor yard. (Id.) On

December 17, 2008, Oblamski sent an internal email to Woodway

personnel about a “[n]ew project.” (ECF No. 268-19, Vodopia

Decl., Ex. PL7.) Oblamski’s email listed a number of bullet

point items, the last of which read “3 treadmills by IHRSA

[i.e., the International Health, Racquet & Sportsclub

Association tradeshow], 1 for the show, 1 or 2 for Alex.” (Id.)

Astilean and Oblamski continued their correspondence

through the end of 2008, into January 2009. Oblamski asked

Astilean about the treadmill’s specifications, (ECF No. 268-20,

Vodopia Decl., Ex. PL8 (email dated 12/18/2008) (“What is the

point of having a groove in the wood on each end?[;] Why are

there bearings missing?”)), and Astilean provided answers. (Id.

(“Yes the right side is the front is the one which is not curb

anymore at the end, the bearing missing not important, the

groove was for testing different height of the axle not

important anymore[.]”).) Oblamski used Astilean’s input to

generate computer models of the treadmill or its components.

(ECF No. 268-21, Vodopia Decl., Ex. PL9 (email dated 12/18/2008)

(“So I measured your bearing rails and came up with a curve on

my computer. Everything is on a perfect circle except for the

far point on the right, see the picture I’ve attached called

‘curve.’”).

In January 2009, the Discovery Channel featured

Astilean’s Wooden Prototype on a recreational television show.

(WW SOF ¶ 121; JDTA0509:17-21 (“Q. Which curved treadmill was

shown in that Discovery Channel episode? A. The prototype. Q.

Which prototype? A. The wood prototype.”).)2 On January 4, after

Astilean told Woodway about his Discovery Channel appearance,

Oblamski emailed Eric Weber and Doug Bayerlein to ask which

prototype of the treadmill would be presented at the IHRSA

tradeshow: the Wooden Prototype that Astilean and Speedfit

shared with the Discovery Channel, or “the one we make.” (ECF

No. 268-22, Vodopia Decl., Ex. PL10.) Oblamski suggested that

if Astilean “knows this one [i.e., the Wooden Protoype] will

work, we should bring this one,” and reiterated the original

question, “[d]o we use his for the show, or do we still push

ours through quick and get our version to the show?” (Id.)

2 Though the parties do not classify this fact as undisputed, plaintiffs

did not respond to it, so the court will deem it admitted. Giannullo v. City

of New York, 322 F.3d 139, 140 (2d Cir. 2003).

Weber responded that, whatever the decision, Woodway had to

“answer a few questions prior to the show,” including, “[h]ow

much are we charging Alex for this []or how much will he make on

each one [i.e., treadmill] . . . .” (Id.)

On January 21, 2009, Astilean sent Oblamski,

Bayerlein, and Weber a design for the “new SpeedBoard,” and

asked Oblamski to put it on CAD, Woodway’s computer aided design

program, to “see how it will look.” (ECF No. 268-23, Vodopia

Decl., Ex. PL11.) Astilean told Oblamski that Woodway would

have to resolve the problem of “the belt rolling under,” but

Astilean indicated that he would send along pictures to show

Oblamski “how [Astilean] did it.” (Id.) Five days later,

Oblamski sent along a computer-generated image of the treadmill

model but suggested that the dimensions of the treadmill belt

had to be changed to avoid applying too much stress to the front

and rear of the structure. (Id.) With respect to the

treadmill’s dimensions, Oblamski asked Astilean to “either

approve the side cover shape or get me a new side cover shape

you’d like to use” so that Oblamski could finalize preparations

for the IHRSA tradeshow. (Id.)

On February 25, Astilean reached out to Oblamski to

ask how the development of the treadmill was coming along. (ECF

No. 268-24, Vodopia Decl., Ex. PL12.) Oblamski assured Astilean

that “[e]verything for the speedboard is coming along as

planned.” Oblamski continued:

You can see the long belt which synchronizes the front

and rear shafts and works great. I will put the running

belt on tomorrow and see what happens, hopefully it will

just work as planned but I’m thinking we’ll need to make

some adjustments.

(Id.) Three days later, Oblamski informed Astilean that, while

working on the treadmill model, he “finally came up with a good

solution” to keep the treadmill belt in position. (ECF No. 268-

25, Vodopia Decl., Ex. PL13.) Oblamski still wanted to “try a few

different things, like adjusting the tension on the belt,” and

would try to “improve it some more this coming week before we have

to ship it to the show.” (Id.)

B. The 2009 Introduction of the Speedboard 2/Curve

On or around March 17, 2009, Woodway publicly

introduced, and offered for sale, the Speedboard 2/Curve—a

curved, non-motorized treadmill—at the IHRSA tradeshow. (JSOF

(WW) ¶ 40; JSOF (Sp.) ¶ 17.)3 Astilean attended the IHRSA

tradeshow and worked in Woodway’s booth to help “generate buzz”

3 It appears the treadmill displayed at the IHRSA show was initially sold

and promoted by Woodway as the “Speedboard 2.0,” until Woodway changed the

name to Curve sometime after the summer of 2009. (JDTA0855:8-19; JDTA0763:7-

20; JDTA2620:3-2621:13; JDTA0898:25-0900:14; see also JSOF (Sp.) ¶ 18.)

Woodway’s trademark application for “Curve,” filed March 16, 2009, indicates

that Woodway first used “Curve” on the treadmill in January 2010, after

defendant removed the name Speedboard from the models it sold in 2009. (JSOF

(Sp.) ¶ 18.) The parties agree that the treadmill introduced at IHRSA is one

form of the allegedly infringing “Legacy Manual Treadmills,” (hereinafter

“Legacy Treadmills”). (See JSOF (WW) ¶ 40.)

and sell as many treadmills as possible. (JSOF (WW) ¶¶ 41-42.)

The parties do not dispute that the curved, non-motorized

treadmill displayed at IHRSA in 2009 was on sale prior to

October 29 and November 1, 2009. (JSOF (WW) ¶ 47.) According

to Astilean, following the curved manual treadmill’s “instant

success” at IHRSA, the treadmills began to sell at health and

fitness clubs in the Unites States during the summer of 2009.

(JSOF (WW) ¶¶ 43-45.)

On March 17, 2009, Woodway’s counsel filed U.S.

Provisional Application, serial no. 61/161,027, on behalf of

applicant Nicholas Oblamski (“Oblamski Provisional”). (See ECF

No. 268-29, Vodopia Decl., Ex. PL17.) The Oblamski Provisional

disclosed a curved treadmill that “can use a main pulley system

and a secondary pulley system on either end to control a main

belt and a synchronous belt for a safe and comfortable curved

running surface.” (Oblamski Provisional 1 (Summary [0002]).)4

Not long after Woodway filed the Oblamski Provisional, Astilean

sent an email to Doug Bayerlein, among others, expressing his

concern about recent developments regarding the intellectual

property rights to the curved, non-motorized treadmills. (ECF

4 As background for Oblamski’s purported invention, the provisional

application explains that, in conventional treadmills, “[t]he belt can

eventually stretch causing slippage and tracking problems and wear to both

belt and deck,” and that the need to keep the belt taut at all times causes

wear to the bearings at the front and rear of the treadmill. (Id. 1

(Background [0001]).)

No. 268-30, Vodopia Decl., Ex. PL18 (email dated 4/7/2009).)

Astilean was concerned that Woodway removed Astilean’s name from

the “SpeedFit Speedboard prototype curved treadmill” and was

showcasing the product without Speedfit’s name attached. (Id.)

Astilean declared that Speedfit owned the prototype and design

of the curved, non-motorized treadmill, and requested that

Woodway immediately stop showcasing the prototype without proper

attribution to Speedfit. (Id.) Astilean closed the email by

expressing interest in a future business relationship,

contingent on Woodway ceasing its unauthorized use of the

treadmill prototype, and urged Bayerlein to contact Astilean’s

counsel to “discuss a possible licensing arrangement[][.]”

(Id.)

Bayerlein responded later in the day. He reassured

Astilean that the Speedfit name was still being used on

Woodway’s website, and that the only reason Astilean’s name was

not being associated with the product was because the name of

the designer was not important to potential customers of the

curved, non-motorized treadmill. (Id.) Bayerlein seemingly

offered to attribute the design to Astilean, but first demanded

that Astilean explain “what you feel is patentable or what you

indeed did design,” because, in Bayerlein’s view, the curved

treadmill was prior art and therefore, not patentable. (Id.)

Bayerlein concluded by insisting that he wanted to work with

Astilean but had to know “what it is that you feel you can

obtain a patent on and how we (Woodway) would be protected on

that patent.” (Id.)

Cc. The ‘265 Provisional Application

On November 2, 2009, Astilean’s representatives filed

U.S. Provisional Patent Application No. 61/280,265 (“*265

Provisional”). (ECF No. 271-5, Declaration of Kadie M.

Jelenchick (“Jelenchick Decl.”), Ex. E.) The ‘265 Provisional

is five paragraphs long and features the following, single

visual illustration of the Wooden Prototype:

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(See generally ‘265 Provisional.)

As an initial matter, the’265 Provisional instructs

that “[t]he description of the invention which follows, together

with the accompanying drawing should not be construed as

limiting the invention to the example shown and described,

because those skilled in the art to which this invention

appertains will be able to devise other forms thereof.” (‘265

Provisional (Brief Description of Several Views of the

Drawing).)

The ‘265 Provisional discloses that “[s]prings (not

shown) exert spring urgency in opposite directions” to hold taut

the length of the lower belt. (‘265 Provisional; see also JDTA

1857:21-1858:1 (Bostan Dep.) (testifying that Astilean came up

with springs referenced in provisional application as a solution

to maintain curvature of running belt).) The ‘265 Provisional

also states that the “inability to maintain the concave shape”

of the treadmill “is overcome by the weight 30 which in practice

has been found to hold the concave shape 34 during the uphill

running of the exercise 36.” (‘265 Provisional.) The ‘265

Provisional did not disclose literally, or visually, a timing

belt, timing belt pulleys, timing belt idlers, or the concept of

synchronous motion. (JSOF (WW) ¶ 28.)

D. The Patents-in-Suit

U.S. Patent No. 8,308,619 (“’619 Patent”), entitled

“Leg-Powered Treadmill,” was filed on October 29, 2010, and

issued to Astilean on November 13, 2012. (ECF No. 271,

Jelenchick Decl., Ex. B; JSOF (WW) ¶¶ 1-2.) The ‘619 Patent

claims priority under 35 U.S.C. § 119(e) to the ‘265

Provisional, and ipso facto, asserts November 2, 2009 as its

priority date. (JSOF (WW) ¶¶ 3-4; ‘619 Patent, col. 1, lines 5-

8; ECF No. 271-7, Jelenchick Decl., Ex. G (“Pls.’ 2nd Supp. Ans.

to Def.’s 1st Set of Ints.”), 4.) U.S. Patent No. 8,343,016

(“’016 Patent,” and with ‘619 Patent, “Patents-in-suit”), also

entitled “Leg-Powered Treadmill,” was filed on November 1, 2010,

and issued on January 1, 2013 to Astilean. (JSOF (WW) ¶¶ 7-8;

ECF No. 271-4, Jelenchick Decl., Ex. D.) Like the ‘619 Patent,

the ‘016 Patent asserts November 2, 2009 as its priority date,

based on the ‘265 Provisional. (JSOF (WW) ¶ 9; ‘016 Patent,

col. 1, lines 5-8; Pls.’ 2nd Supp. Ans. to Def.’s 1st Set of

Rogs, 6.) The ‘619 Patent ultimately issued with a single

independent claim (Claim 1). (JSOF (WW) ¶ 10.) The ‘016

Patent, a continuation-in-part of the ‘619 Patent application,

issued with 17 claims, only one of which is independent (Claim

1). (JSOF (WW) ¶ 12.)

The ‘619 Patent relates to “a motor-less leg-powered

curved treadmill.” (‘619 Patent, col. 1, lines 44-45.)5 Claim 1

of the ‘619 Patent discloses the following limitations: (1)

“said parallel slats attached to each other in a resilient

fashion”; (2) “a timing belt having respective timing belt

pulleys attached to said front and rear pulley rollers for said

closed loop treadmill belt”; (3) “wherein timing belt idlers are

used to configure said timing belt geometrically to fit within

constraints of side contours of said treadmill”; and (4) “said

timing belt will not permit drooping down of said lower taut

portion of said closed loop treadmill belt because all

respective motion is synchronous.” (JSOF (WW) ¶ 17; ‘619

Patent, col. 4, lines 61-62; col. 5, lines 10-11 to col. 6, line

19; col. 6, lines 1-4; col. 6, lines 6-9.) The ‘619 Patent

application describes a timing belt, timing belt pulleys, timing

belt idlers, or the concept of synchronous motion as an

5 The ‘619 Patent’s “Summary of the Invention” provides as follows:

The present invention is a motor-less leg-powered curved treadmill

produced wherein the curved, low friction surface allows people to walk,

jog, run, and sprint without making any adjustments to the treadmill other

than shifting the user’s center of gravity forward and backwards. This

novel speed control due to the curve allows people of any weight and size

to adjust their own speed in fractions of a second. The user controls

the speed by positioning their body along the curved running surface.

Stepping forward initiates movement, as the user propels themselves up

the curve the speed increases. To slow down, the user simply drifts back

towards the rear curve. . . . This unique design of the curve in a low

friction surface allows any user, regardless of weight and size, to find

and maintain the speed they desire.

(‘619 Patent, col. 1, lines 44-63.)

alternative to the use of springs as described in the ‘265

Provisional. (JSOF (WW) @ 33; Jelenchick Decl., Ex. A ("619

Application”), 3, 6, Fig. 3.)

Claim 1 of ‘016 Patent specifies the following

limitation for a “motor-less, leg-powered curved treadmill”:

“wherein each said slat . . . conform[s] to a concave row of

upper support peripheral ball bearings located at each

peripheral side of said upper portion of said motor-less, leg-

powered curved treadmill.” (JSOF (WW) @ 19; *016 Patent, col.

6, lines 48-52.) Claim 1 of the ‘016 Patent also claims “a

means for slackening an upper concave portion while

simultaneously keeping a lower portion of the belt taut,

preventing said lower portion from drooping down during rotation

and exertion of walking or running force upon said upper concave

portion of said closed loop treadmill belt.” (JSOF (WW) @ 21;

‘016 Patent, col. 6, lines 30-52.) Figure 2 of the ‘016 Patent

discloses the following illustration:

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Though the ‘619 and ‘016 Patents both claim the

benefit under 35 U.S.C. § 119(e) of the ‘265 Provisional and its

November 2, 2009 filing date, (JSOF (WW) 3, 4, 9; ECF No.

271-13, Jelenchick Decl., Ex. M (file history of ‘619 Patent),

33, 48; ECF No. 271-14, Jelenchick Decl., Ex. N (file history of

‘016 Patent), 10, 32; Pls.’ 2nd Supp. Ans. to Def.’s 1st Set of

Ints., 4, 6), neither Patents’ file history explicitly states

that the Patent and Trademark Office (“PTO”) made a priority

14

determination with respect to the Patents-in-suit. (See

generally Jelenchick Decl., Exs. M, N; see also WW SOF ¶ 24.)

II. Procedural History

A. The Supplemental Complaint

Plaintiffs commenced this action on March 11, 2013.

(See ECF No. 1.) On December 28, 2016, after multiple

amendments to the complaint and substantial motion practice, the

court granted defendant’s motion to dismiss plaintiffs’

infringement claims asserted in the Third Amended Complaint

(“TAC”). (ECF No. 143, MTD Order.) The dismissal of

plaintiffs’ infringement claims was principally based on

plaintiffs’ failure to demonstrate their standing to assert

infringement of the Patents-in-suit without joining the curved,

non-motorized treadmill’s purported co-inventor, Daniel Bostan.

(MTD Order 11.)

Thereafter, on February 10, 2017, plaintiffs filed the

fourth iteration of their complaint against defendant Woodway.

(ECF No. 150, Supplemental Complaint (“Supp. Compl.”).) The

Supplemental Complaint circumvents the standing bar discussed in

the MTD Order by asserting infringement as of June 1, 2015, the

date that Bostan and Astilean assigned their rights, title and

interest in the ‘619 and ‘016 Patents to Speedfit.6 (See Supp.

Compl. ¶¶ 11-13; see also ECF No. 268-2, Vodopia Decl., Ex.

PL30.)

The Supplemental Complaint claims that Woodway

infringed the Patents-in-suit. (Supp. Compl. ¶¶ 11, 12, 57-66.)

Plaintiffs allege that Astilean disclosed the Wooden Prototype

to Woodway in December 2008, one month after Astilean filed the

‘239 Provisional Application to protect the invention.7 (Id. ¶¶

40-41.) After meeting with Bayerlein to discuss the treadmill

prototype, Astilean worked with Oblamski to build a model of the

treadmill for the IHRSA tradeshow. (Id. ¶¶ 19, 41.) The

Supplemental Complaint alleges that even though Woodway did not

commit to a specific compensation for Speedfit or Astilean,

“both Astilean and Bayerlein understood that Speedfit would be

compensated” for plaintiffs’ work in connection with the

tradeshow model. (Id. ¶ 41.) Plaintiffs allege that Woodway

subsequently misappropriated their unique concept, design, and

6 During a telephonic status conference held before this court on January

19, 2017, plaintiffs proposed filing a fourth amended complaint alleging

infringement claims on behalf of Speedfit as of June 1, 2015. (See ECF

Minute entry dated 1/19/2017.) Defendant expressed a preference that

plaintiffs file a supplemental complaint to avoid relation back issues, to

which plaintiffs consented, and plaintiffs subsequently filed the

Supplemental Complaint on February 10, 2017. (See id.; Supp. Compl.)

7 The ‘239 Provisional was initially filed on November 7, 2008, but was

superseded by the ‘265 Provisional filed on November 2, 2009. (Id. ¶ 40.)

patent rights, by filing the Oblamski Provisional in Oblamski’s

name, to the exclusion of Speedfit and Astilean. (Id. ¶ 2.)

The Supplemental Complaint also asserts claims for

breach of contract, unjust enrichment, and constructive trust.

The breach of contract claim is premised on two written non-

disclosure agreements (“NDAs”) that Astilean claims to have

entered into with Bayerlein, in 2003 and 2005, respectively, as

well as a purported oral confidentiality agreement. (Supp.

Compl. ¶ 25 (“On or about May 1, 2003, after a meeting between

Astilean and Bayerlein at the Hilton Hotel in New York City, the

parties entered into a [NDA] and duly executed a writing

embodying the terms of the [NDA].”); id. ¶ 27 (“In May 2005, . .

. the parties entered into a second nondisclosure/circumvention

agreement and signed a writing embodying the terms of the second

[NDA] which were orally conveyed to Plaintiffs.”); id. ¶ 69.)

According to plaintiffs, defendant breached “these agreements”

by selling the curved, non-motorized treadmills, and by filing

the Oblamski Provisional, which identified Oblamski as the sole

inventor of the treadmills and did not mention plaintiffs. (Id.

¶ 70.)

The Supplemental Complaint further alleges that

Woodway was unjustly enriched by income received from sales of

the curved, non-motorized treadmill. (Id. ¶ 7, 72-74.) In

addition, plaintiffs assert Woodway’s income from the infringing

treadmill’s sales should be segregated in a constructive trust

in Speedfit’s name because Woodway’s actions were an abuse of

the confidential and fiduciary relationship that allegedly

existed between plaintiffs and defendant. (Id. ¶¶ 7, 75-81.)

B. Claim Construction

On August 15, 2017, the court held a Markman hearing,

and subsequently issued an order, dated November 20, 2017,

concerning the appropriate claim construction for “means for

slackening,” recited in Claim 1 of the ‘016 Patent. (ECF No.

189, Claim Constr. Order.) The parties stipulated that “means

for slackening” should be construed as a means-plus-function

limitation, and the claimed function construed as slackening the

upper concave or curved portion of the treadmill belt, while

simultaneously keeping the lower portion taut. (Claim Constr.

Order 16.)

The court construed Claim 1 of the ‘016 Patent “as

limited to the structures specifically described in the

specification, i.e., those disclosed in Figures 2, 3, and 4, and

their equivalents.” (Id. 17-18.) In doing so, the court

rejected plaintiffs’ proposed broadening of the term to include

“any disclosed species and equivalents thereof, that function to

keep the lower part of the belt from drooping and/or the upper

part of the belt slack.” (Id. 19.) Notably, the court observed

that the ‘265 Provisional did “not disclose the specific

structure intended to perform the slackening function.” (Id.

20.) The Claim Construction Order nevertheless clarified that

the construed “means for slackening” limitation still

“protect[ed] any structure deemed to be an ‘equivalent,’ . . . a

question of fact to be addressed at the infringement stage

following claim construction.” (Id. 21.)

C. Plaintiffs’ Expert

On March 29, 2019, the court decided two Daubert

motions, only one of which is pertinent here. Woodway moved to

preclude testimony offered by James Whelan, plaintiffs’

technical expert, concerning the ‘265 Provisional, (ECF No.

211), and the court granted defendant’s motion, (ECF No. 241,

Whelan Order).

Whelan’s report, dated July 27, 2015, addressed

whether “the invention as described in the [‘265] provisional

patent application was sufficient to allow one to make the

invention as claimed in [the Patents-in-suit].” (ECF No. 212-1,

Expert Report of James Whelan (“Whelan Rept.”), 3.) The

parties’ Daubert motion papers disputed the purpose of the

Whelan Report. According to defendant, plaintiffs were trying

to support their claim that the Patents-in-suit were entitled to

the ‘265 Provisional’s priority filing date under 35 U.S.C. §

119.8 (Whelan Order 14-15.) Plaintiffs countered that the PTO

already determined priority when it granted the Patents, but

conceded that the IHRSA tradeshow disclosure of the

Speedboard2/Curve could constitute disclosure of prior art if

not for the ‘265 Provisional’s priority filing date. (Id. 15.)

The Whelan Report concluded that: (1) the ‘265 Provisional and

the Patents-in-suit “claimed common elements;” (2) the ‘265

Provisional disclosed “different methods for keeping the

[treadmill’s] lower belt portion taut” than the Patents-in-suit

did; and (3) the different methods claimed in the Patents-in-

suit “were mechanical and performed similar[ly] as to the method

disclosed in the [‘265 provisional].” (Id. 21 (brackets in

original).)

Though the court found Whelan qualified as a relevant

person of ordinary skill in the art (“POSITA”), his opinion that

the disclosures in the ‘265 Provisional and Patents-in-suit had

common elements and performed similarly did not satisfy the

standard for enablement under 35 U.S.C. § 112, was considered

conclusory and unreliable, and thus precluded. (Id. 13-14, 21-

8 As noted above, the Patents-in-suit were filed on October 29 and

November 1, 2010, respectively. As discussed in greater detail below, sales

of the allegedly infringing treadmill more than a year before the Patents’

filing dates could constitute invalidating prior art unless the Patents-in-

suit are entitled to priority dating to the earlier filing date for the ‘265

Provisional, November 2, 2009. See 35 U.S.C. §§ 102(a)-(b) (2000).

22.) Critically, although Whelan determined that the ‘265

Provisional and Patents-in-suit claimed common elements and

shared a similar advantage in the concave upper belt portion,

albeit by using different methods to achieve that advantage,

Whelan did not expressly conclude that the description of the

invention in the ‘265 Provisional was sufficient to allow him to

make the invention as claimed in the Patents-in-suit. (Id. 21.)9

III. The Parties’ Motions

Defendant’s core contention is that the Patents-in-

suit are invalid. Specifically, the public disclosure and sale

of the Speedboard 2/Curve beginning in March 2009, at the IHRSA

tradeshow, more than a year before the Patents-in-suit were

filed, triggered the “on-sale” bar set forth by 35 U.S.C. §

102(b). (Def.’s Mot. 1). Defendant asserts that plaintiffs

cannot overcome this invalidity challenge by claiming priority

9 Whelan also completed a Rebuttal report (“Rebuttal”), and on August 26,

2015, plaintiffs served this Rebuttal on defendant. (See ECF No. 212-2,

Whelan Rebuttal Report (“Whelan Rebuttal”).) Among other contentions,

Whelan’s Rebuttal specifically responded to the report of defendant’s

technical expert, Dr. Kim Blair, which concluded, inter alia, that the

Patents-in-suit are invalid as anticipated. (Id. at 12; see also ECF No.

214, Report of Dr. Kim Blair (“Blair Rept.”), 2, 32, 35-37.) Dr. Blair’s

report further concluded that Nicholas Oblamski, Woodway’s engineer, “is an

inventor of certain of the subject matter of the [patents-in-suit]” and that

“clear and convincing evidence” establishes that Oblamski “conceived of and

reduced to practice a synchronous belt” system without any contribution from

Astilean or Bostan. (Whelan Rebuttal 12; Blair Rept. 3, 33.) The court

precluded Whelan and Blair’s opinions as to derivation and Oblamski’s status

as an inventor of the Patents-in-suit. (Whelan Order 30.)

under the ‘265 Provisional, which was filed on November 2, 2009,

less than a year after sales of the Speedboard 2/Curve began,

because the ’265 Provisional did not contain a sufficient

written description of the claims and limitations ultimately

disclosed by the ‘619 and ‘016 Patents. (Id.)

In the alternative, defendant contends summary

judgment is at least warranted for plaintiffs’ infringement

claims directed at Woodway’s current line of curved, manual

treadmills (“Current Treadmills”), which defendant insists are

distinct from the Legacy Treadmills, or “Curve Products,” that

are the subject of the Supplemental Complaint’s infringement

allegations. (Def.’s Mot. 1-2; see also JSOF (WW) ¶ 59; Supp.

Compl. ¶ 62 (“Defendant has infringed . . . by making, selling,

and using the Curve Products . . . .”).) Woodway began to phase

out the Curve Products in February 2016, (JSOF (WW) ¶ 61), and

the Current Treadmills do not literally meet the “means for

slackening” limitation in the ‘016 and ‘619 Patents. (Def.’s

Mot. 2.)

Defendant further points out that plaintiffs have

failed to produce the written agreements underlying their breach

of contract claim, warranting dismissal. (Def.’s Mot. 23; WW

SOF ¶¶ 82, 83.) Defendant also argues that any purported oral

agreement violates the Statute of Frauds by creating obligations

that cannot be performed within one year, and also fails for

indefiniteness. (Def.’s Mot. 24-28.) Defendant contends that

plaintiffs other state law claims for unjust enrichment and

constructive trust are merely repurposed breach of contract

claims, and that plaintiffs have failed to show the existence of

a confidential or fiduciary relationship that would support

imposition of a constructive trust. (Id. 2.)

Plaintiffs cross-move for summary judgment on two

grounds. First, plaintiffs assert that the court should

exercise its “broad if not infinite discretion” to hold

defendant liable for unjust enrichment. (Pls.’ Mot. 12.)

Plaintiffs aver that liability and damages for unjust enrichment

are foregone conclusions based, inter alia, on what plaintiffs

describe as defendant’s “tortious conduct, which includes theft,

bad faith, fraud and deceit.” (Id. 12-17.) Regarding

plaintiffs’ infringement claims, plaintiffs assert no trial is

necessary to establish that the Curve products—the Speedboard

2/Curve, the Curve XL, the Curve 3, and the Ecomil—include “each

and every element” of the independent claims in the Patents-in-

suit. (Id. 17.) Plaintiffs initially construe “means for

slackening” as “any structure that prevents the upper portion of

the closed loop treadmill belt from floating up between the end

rollers, found in the patent and file history, and equivalents

thereof, as understood by one of ordinary skill in the art,”

without reference to the court’s Claim Construction Order. (Id.

18.) Plaintiffs then argue, relying on an attorney-generated

flowchart, that each of the claimed elements in Claim 1 of the

‘016 and ‘619 Patents are found in the Woodway Legacy

Treadmills, leading to the inexorable conclusion that the

elements of the Legacy Treadmills are “equivalent” to Claim 1 of

the respective Patents-in-suit. (Id. 19-25.)

LEGAL STANDARD FOR SUMMARY JUDGMENT

“The court applies the same summary judgment standards

to patent infringement matters as it does to motions involving

other types of claims.” Mich & Mich. TGR, Inc. v. Brazabra,

Corp., 128 F. Supp. 3d 621, 629 (E.D.N.Y. 2015), aff’d sub nom.

Mich & Mich TGR, Inc. v. Brazabra Corp., 657 F. App’x 971 (Fed.

Cir. 2016) (citations omitted). “When deciding issues in a

patent case, a district court applies the law of the circuit in

which it sits to nonpatent issues and the law of the Federal

Circuit to issues of substantive patent law,” id. at 631

(citations omitted), as well as to procedural issues that are

“intimately involved in the substance of enforcement of the

patent right.” Id. (quoting Advanced Cardiovascular Sys., Inc.

v. Medtronic, Inc., 265 F.3d 1294, 1303 (Fed. Cir. 2001)).

Summary judgment is appropriate only where “the

pleadings, depositions, answers to interrogatories, and

admissions on file, together with the affidavits, if any, show

that there is no genuine issue as to any material fact and that

the moving party is entitled to a judgment as a matter of law.”

Lowe v. City of Shelton, 128 F. App'x 813, 814 (2d Cir. 2005)

(citing Fed. R. Civ. P. 56(c)). “[T]he mere existence of some

alleged factual dispute between the parties will not defeat an

otherwise properly supported motion for summary judgment; the

requirement is that there be no genuine issue of material fact.”

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986)

(emphasis in original). For summary judgment purposes, a fact

is material if it “might affect the outcome of the suit under

the governing law,” and a dispute is genuine “if the evidence is

such that a reasonable jury could return a verdict for the

nonmoving party.” Id. at 248; accord Mich & Mich. TGR, 128 F.

Supp. 3d at 629 (citations omitted). Additionally, no genuine

issue of material fact exists “unless there is sufficient

evidence favoring the nonmoving party for a jury to return a

verdict for that party. If the evidence is merely colorable, or

is not significantly probative, summary judgment may be

granted.” Anderson, 477 U.S. at 249-50 (citations omitted);

accord Mich & Mich. TGR, 128 F. Supp. 3d at 629 (citation

omitted).

In ruling on a motion for summary judgment, the

court’s function is only to “determine whether there is a

genuine issue for trial,” not to “weigh the evidence and

determine the truth of the matter.” Anderson, 477 U.S. at 249.

Further, the court must “view the evidence presented in a light

most favorable to the nonmoving party and . . . draw all

reasonable inferences in favor of the nonmoving party.” Mich &

Mich. TGR, 128 F. Supp. 3d at 630 (quoting CA, Inc. v.

Simple.com, Inc., 780 F. Supp. 2d 196, 209 (E.D.N.Y. 2009))

(omission in quoted material). “The movant has the burden of

showing that there is no genuine issue of [material] fact.”

Anderson, 477 U.S. at 256. The nonmoving party “need only

present evidence from which a jury might return a verdict in his

favor” to defeat a motion for summary judgment, id. at 257,

though making such a showing requires “specific facts showing

that there is a genuine issue for trial,” not merely “that there

is some metaphysical doubt as to the material facts.” Caldarola

v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002) (emphasis in

original) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio

Corp., 475 U.S. 574, 586-87 (1986)).

The nonmoving party may not rest only on the

pleadings, and “[e]ach statement of material fact by the movant

or opponent must be followed by citation to evidence which would

be admissible, as required by [Rule] 56(e) and Local Civil Rule

56.1(d).” Mich & Mich. TGR, 128 F. Supp. 3d at 630 (citations

omitted). Local Civil Rule 56.1 provides that the party

opposing a summary judgment motion “shall include a

correspondingly numbered paragraph responding to each numbered

paragraph in the statement of the moving party.” Local Civ. R.

56.1(b). “If the opposing party fails to controvert a fact so

set forth in the moving party’s Rule 56.1 statement,” or does so

in a manner that does not comply with Local Rule 56.1(b)-(d),

“that fact will be deemed admitted.” Giannullo, 322 F.3d at

140.

DISCUSSION

I. Patent Infringement

A. Validity of Patents-in-Suit

Defendant moves for summary judgment against

plaintiffs’ patent infringement claim on the grounds that the

underlying Patents-in-suit are invalid. For the reasons that

follow, defendant’s motion is GRANTED.

1. Applicability of the “On-sale” Bar

Patents are presumed valid once awarded. 35 U.S.C. §

282(a). In an action for patent infringement, however, the

defendant may argue that the patent itself is invalid,

regardless of whether it asserts non-infringement of the

patent’s claims. 35 U.S.C. § 282(b). To do so, a defendant

carries the heavy burden of proving the patent’s invalidity by

clear and convincing evidence, Microsoft Corp. v. I4I Ltd.

P'ship, 564 U.S. 91, 111 (2011), meaning evidence that instills

in the court an “abiding conviction” that the patent’s

invalidity is highly probable. ActiveVideo Networks, Inc. v.

Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012).

Generally, a defendant may prove a patent is invalid

by showing that it is anticipated by a single prior art

reference; or would have been obvious to a person of ordinary

skill in the art at the time of the invention. See 35 U.S.C. §§

102, 103. A patent will also be invalid if, more than a year

before the patent application was filed, the invention was both

ready for patenting and the subject of a commercial offer for

sale. Endo Pharm. Inc. v. Amneal Pharm., LLC, No. 12 CIV. 8060

(TPG), 2015 WL 9459823, at *37 (S.D.N.Y. Aug. 18, 2015), amended

in part, No. 12 CIV. 8060 (TPG), 2016 WL 1732751 (S.D.N.Y. Apr.

29, 2016) (citing Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67

(1998)). This invalidity defense is known as the “on-sale” bar.

35 U.S.C. § 102(b).10

10 The Patents-in-suit were filed before March 16, 2013. As a result, the

version of section 102 that preceded the Leahy-Smith America Invents Act

(“AIA”) governs. Pub. L. No. 112-29, 125 Stat. 284, 285-93 (2011); see AIA §

3(n)(1), 125 Stat. at 293 (applying the relevant AIA amendments only to

applications and patents containing a claim with an effective filing date

of March 16, 2013, or later); see also Fleming v. Escort Inc., 774 F.3d 1371,

1374 n.1 (Fed. Cir. 2014). The applicable version of section 102(b) bars

entitlement to a patent where:

The on-sale bar applies when two conditions are

satisfied before the critical date, i.e. the relevant filing

date of the patents at issue: (1) the claimed invention must be

the subject of a commercial offer for sale; and (2) the

invention must be ready for patenting. Pfaff, 525 U.S. at 67.11

An invention is “ready for patenting” when, prior to the

critical date, the invention is reduced to practice, or is

depicted in drawings or described in writings of sufficient

nature to enable a person of ordinary skill in the art to

practice the invention. Hamilton Beach Brands, Inc. v. Sunbeam

Prod., Inc., 726 F.3d 1370, 1374–75 (Fed. Cir. 2013) (citation

omitted). The on-sale bar is a question of law based on

underlying factual findings. See Grp. One, Ltd. v. Hallmark

Cards, Inc., 254 F.3d 1041, 1045–46 (Fed. Cir. 2001); see also

Leader Tech., Inc. v. Facebook, Inc., 678 F.3d 1300, 1305 (Fed.

Cir. 2012) (“Whether a patent is invalid for a public use or

sale is a question of law, reviewed de novo, based on underlying

[T]he invention was patented or described in a printed publication in

this or a foreign country or in public use or on sale in this country,

more than one year prior to the date of the application for patent in the

United States . . . .

35 U.S.C. § 102(b).

11 An actual sale is not required for the activity to be an invalidating

commercial offer for sale. Atlanta Attachment Co. v. Leggett & Platt, Inc.,

516 F.3d 1361, 1365 (Fed. Cir. 2008).

facts, reviewed for substantial evidence following a jury

verdict.”).

Based on the record before the court, the on-sale bar

critical date for the Patents-in-suit is October 29, 2009, one

year before the ‘619 Patent’s filing date. Defendant has

submitted clear, convincing, and undisputed evidence that the

accused Woodway Legacy Treadmills were offered for sale prior to

October 29, 2009. Plaintiffs do not dispute that the Speedboard

2/Curve was introduced to the public and offered for sale in

March 2009 at the IHRSA tradeshow. (JSOF (Sp.) ¶ 17 (“[The

Speedboard 2/Curve] was disclosed to the public by Woodway and

Astilean and offered for sale on or about March 17, 2009.”)

(emphasis added).) The Speedboard 2/Curve displayed at the

IHRSA show was one of the Woodway Legacy Treadmill models

accused of infringing the Patents-in-suit. (Def.’s Mot. 16;

Pls.’ Opp. 9; see also Supp. Compl. ¶ 19; TAC ¶ 15.) Astilean

also testified that Woodway began selling Legacy Treadmills

beginning in the spring of 2009. (JSOF (WW) ¶ 44.)12

Accordingly, defendant has established by clear and

convincing evidence that the Patents-in-suit are invalid under

35 U.S.C. ¶ 102(b). Unless plaintiffs can demonstrate that the

12 Woodway asserts May 5, 2009 as the date of its first sale of Legacy

Treadmills, based on its accounting registers. (ECF No. 272, Jelenchik

Decl., Ex. H, 1.)

Patents-in-suit are entitled to an earlier priority date, and

defeat the on-sale bar, defendant’s motion for summary judgment

will be granted and plaintiffs’ patent infringement claim will

be dismissed.

2. Priority and the Written Description Requirement

a. Legal Standard

The priority date of a patent is governed by 35 U.S.C.

§ 119(e)(1).13 Section 119(e)(1) sets forth four requirements

that must be met for a non-provisional patent application to

claim priority to a provisional application filing date, and

therefore, gain the benefit of that earlier date. Only one of

the four requirements pertains here: “the specification of

the provisional must ‘contain a written description of the

invention and the manner and process of making and using it, in

such full, clear, concise, and exact terms,’ 35 U.S.C. § 112 ¶

1, to enable an ordinarily skilled artisan to practice the

13 Section 119(e)(1) provides:

An application for patent filed under section 111(a) or section 363 of

this title for an invention disclosed in the manner provided by the first

paragraph of section 112 of this title in a provisional application filed

under section 111(b) of this title, by an inventor or inventors named in

the provisional application, shall have the same effect, as to such

invention, as though filed on the date of the provisional application

filed under section 111(b) of this title, if the application for patent

filed under section 111(a) or section 363 of this title is filed not later

than 12 months after the date on which the provisional application was

filed and if it contains or is amended to contain a specific reference to

the provisional application.

35 U.S.C. § 119(e)(1).

invention claimed in the non-provisional application.” Dynamic

Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378

(Fed. Cir. 2015) (citation omitted) (emphasis in original).14

Section 112, paragraph 1 embodies two separate requirements that

an applicant must satisfy to establish priority: a written

description requirement and an enablement requirement. Ariad

Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.

2010) (“Since its inception, this court has consistently held

that § 112, first paragraph, contains a written description

requirement separate from enablement . . . .”).15

“The purpose of the written description requirement is

to ensure that the scope of the right to exclude, as set forth

in the [patent] claims, does not overreach the scope of the

inventor's contribution to the field of art as described in the

patent specification.” AbbVie Deutschland GmbH & Co., KG v.

Janssen Biotech, Inc., 759 F.3d 1285, 1299 (Fed. Cir. 2014)

(citations, internal quotation marks, and brackets omitted). To

14 For the reasons discussed in footnote 10, the pre-AIA text of 35 U.S.C.

§ 112 governs.

15 Defendant’s motion briefly alludes to the enablement requirement of 35

U.S.C. § 112 ¶ 1 in a footnote. (Def.’s Mot. 7 n.11.) Though the court will

not consider an argument confined solely to a footnote, United States v.

Restrepo, 986 F.2d 1462, 1463 (2d Cir. 1993), it is unclear what evidence, if

any, plaintiffs could proffer to show that the ‘265 Provisional would enable

a POSITA to practice the invention claimed in the Patents-in-suit, given the

findings in the Whelan Order. (See Whelan Order 21 (“The court precludes

Whelan’s opinion as to whether the ‘265 provisional enabled a POSITA to make

the invention as claimed in the patents-in-suit . . . .”).

satisfy the written description requirement, “the applicant must

‘convey with reasonable clarity to those skilled in the art

that, as of the filing date sought, he or she was in possession

of the invention,’ and demonstrate that by disclosure in the

specification of the patent.” Carnegie Mellon Univ. v.

Hoffmann–La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)

(quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.

Cir. 1991)); see also Tronzo v. Biomet, Inc., 156 F.3d 1154,

1158 (Fed. Cir. 1998) (“[D]isclosure in a parent application

that merely renders the later-claimed invention obvious is not

sufficient to meet the written description requirement; the

disclosure must describe the claimed invention with all its

limitations.”). Moreover, the written description requirement

is not subsumed by the possession inquiry. Thus, “a showing of

‘possession’ is ancillary to the statutory mandate” for an

adequate description of the claimed invention. Enzo Biochem,

Inc. v. Gen-Probe Inc., 323 F.3d 956, 969–70 (Fed. Cir.

2002)(emphasis in original). In other words, “a showing of

possession alone does not cure the lack of a written description

in the specification, as required by the statute.” (Id.)

To satisfy the written description requirement, “the

specification must describe an invention understandable to [a]

skilled artisan and show that the inventor actually invented the

invention claimed,” Ariad, 598 F.3d at 1351, not a “mere wish or

plan” for obtaining the claimed invention. Regents of the Univ.

of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir.

1997). Identity of description is not necessary. See,

e.g., Crown Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d

1367, 1376 (Fed. Cir. 2002) (“[T]he disclosure as originally

filed does not have to provide in haec verba support for the

claimed subject matter at issue.”). Identity of that which is

described, however, is necessary. “What is claimed by the

patent application must be the same as what is disclosed in the

specification . . . .” Festo Corp. v. Shoketsu Kinzoku Kogyo

Kabushiki Co., 535 U.S. 722 (2002); accord Lockwood v. American

Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).

The written description inquiry is a question of fact

and a patent’s compliance with the written description

requirement necessarily varies depending on context. Ariad, 598

F.3d at 1351 (citations omitted). Nonetheless, compliance with

written description requirement is amenable to summary judgment

in cases where no reasonable fact finder could return a verdict

for the non-moving party. PowerOasis, Inc. v. T-Mobile USA,

Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008). A plaintiff seeking

entitlement to the priority date of a provisional application

bears the burden of satisfying the written description

requirement. See id. at 1303-04.

b. The ‘265 Provisional Does Not Satisfy the

Written Description Requirement

The ‘265 Provisional did not convey with reasonable

clarity that, as of November 2, 2009, plaintiffs were in

possession of the curved, non-motorized treadmill invention

claimed by the Patents-in-suit.

First, the evidence on record shows that the ‘265

Provisional did not disclose the essential claim limitations in

the ‘619 Patent. Claim 1 of the ‘619 Patent discloses four

limitations: (1) “said parallel slats attached to each other in

a resilient fashion;” (2) “timing belt having respective timing

belt pulleys attached to said front and rear pulley rollers for

said closed loop treadmill belt;” (3) “wherein timing belt

idlers are used to configure said timing belt geometrically to

fit within constraints of side contours of said treadmill;” and

(4) “said timing belt will not permit drooping down of said

lower taut portion of said closed loop treadmill belt because

all respective motion is synchronous.” (JSOF (WW) ¶ 17

(emphasis added).) Plaintiffs’ technical expert, James Whelan,

flatly acknowledged in his deposition that the ‘265 Provisional

did not disclose these claim limitations. For example, when

defendant’s counsel asked Whelan to identify where “slats

attached to each other in a resilient fashion” was disclosed in

the ‘265 Provisional, Whelan testified that the “structure is

not disclosed . . . .” (JDTA2850:13-18.) The ‘265 Provisional

is also both literally and visually silent as to the other

elements: a timing belt, timing belt pulleys, timing belt

idlers, and synchronous motion. (JSOF (WW) ¶ 28; see

JDTA2850:19-2851:16 (Whelan Dep.).)

The ‘265 Provisional discloses, as a means for keeping

the lower portion of the running belt taut and the upper portion

concave, “[s]prings (not shown) exert spring urgency in opposite

directions holding taut the length of the lower belt portion 26A

in a dimension of approximately twenty-three inches denoted by

arrow 30 and in the upper belt portion 26B weighing

approximately forty pounds, denoted by arrow 30.” (‘265

Provisional; JDTA1857:21- JDTA1858:1 (Bostan Dep.) (“Q: So you

identified that the springs referenced in the provisional patent

application were a solution to maintain the curvature of the

running belt? A: Correct.”).) The ‘619 Patent, however,

describes a timing belt, timing belt pulleys, timing belt

idlers, and the concept of synchronous motion, elements missing

from the ‘265 Provisional, (JDTA2850:19-2851:16 (Whelan Dep.)),16

16 Whelan’s testimony with respect to synchronous movement of the belts

was more equivocal, but he nonetheless conceded that “the wording” for

synchronous movement “is not in [the ‘265 Provisional].” (JDTA2851:12-16.)

as an alternative to the use of springs. (JSOF (WW) ¶ 33.) In

their depositions, Astilean and Bostan also admitted that Figure

1 of the ‘265 Provisional, reflecting the Wooden Prototype, did

not disclose a timing belt or associated components for

synchronous motion. (See WW SOF ¶ 35.)17

The written description in the ‘265 Provisional is no

less deficient with respect to the ‘016 Patent. Claim 1 of the

‘016 patent discloses: “wherein each said slat . . . conform[s]

to a concave row of upper support peripheral ball bearings

located at each peripheral side of said upper portion of said

motor-less, leg-powered curved treadmill.” (JSOF (WW) ¶ 19

(emphasis added).) Claim 1 of the ‘016 patent also claims “[a]

motor-less, leg-powered curved treadmill comprising: . . . a

means for slackening an upper concave portion while

simultaneously keeping a lower portion of the belt taut,

17 Astilean conceded that the concept of timing belts and synchronous

movement were not disclosed in the ‘265 Provisional. (JDTA0327:2-4.) He

also suggested that the ‘265 Provisional should not be construed as limiting

the invention to the figure disclosed and described in the application, and

that there were alternative methods of accomplishing the same function.

(JDTA0327:4-17.) Asked why the alternative approaches were not disclosed in

the ‘265 Provisional, Astilean said “we were in a rush to file it. . . . we

said we will come in with the rest.” (JDTA0327:18-22.)

Bostan’s testimony also confirms that Figure 1 in the ‘265 Provisional

does not reflect a timing belt component:

Q. Would you refer to the photograph in Exhibit 8, would you ever refer

to that structure as a timing belt?

. . .

A. No, this is not a timing belt.

(JDTA1823:4-JDTA1824:9.)

preventing said lower portion from drooping down during rotation

and exertion of walking or running force upon said upper concave

portion of said closed loop treadmill belt.” (‘016 Patent, col.

6, lines 30-52 (emphasis added).)

As with the ‘619 Patent, the undisputed record

establishes that the ‘265 Provisional did not disclose the

pertinent claim limitations of the ‘016 Patent.18 At his

deposition, Whelan acknowledged that the ‘265 Provisional did

not disclose upper support peripheral ball bearings.

(JDTA2843:23-25 (“Q. Where, if anywhere, does the 2009 Astilean

provisional patent application refer to one or more linear

arrays of bearings? A. The provisional does not mention that

structure. Q. Does the 2009 provisional patent application

mention ball bearings at all? A. I don’t believe so.”).)

Whelan’s testimony also indicates the ‘265 Provisional

did not disclose a “means for slackening.” Pursuant to the

Claim Construction Order, “means for slackening” is “limited to

only those structures specifically disclosed in the

specification, namely, Figures 2, 3, and 4, which, as set forth

in the specification, perform the claimed function of

18 The ‘016 Patent also requires parallel “slats attached to each other in

a resilient fashion.” (JSOF (WW) ¶ 97.) As noted above, the ‘265

Provisional does not disclose this limitation.

maintaining the concave or curved surface of the upper portion

of the treadmill belt while keeping the lower portion taut.”

(Claim Constr. Order 21.) Whelan admitted that Figures 2, 3,

and 4 were not disclosed in the ‘265 Provisional. (JDTA

2840:13-2841:24.) Whelan further acknowledged that, whereas the

‘265 Provisional disclosed the use of springs to keep the lower

belt portion taut and the upper belt portion concave, the ‘619

Patent disclosed a “timing belt,” and the ‘016 Patent disclosed

a “means for slackening” using three different structures.

(JDTA2853:6-2855:20; see also ‘016 Patent, col. 2, lines 24-28

(support belt, Figure 2); id. col. 3, lines 29-33 (timing belt,

Figure 3); id. col. 2, lines 34-37 (linear array of ball

bearings, Figure 4).) Whelan then admitted the following in

response to defendant’s counsel:

Q. But you will agree with me that the provisional

patent application disclosed a different method than

the methods outlined in the '619 and '016 patents?

A. I'll agree they disclose the same methods of keeping

the upper belt portion concave and lower belt

portion taut, but there are different structures to

do that. The method is keeping the lower belt

portion taut and the upper belt portion in a slacken

state.

Q. So they solve the same problem but do it in a

different way, is that fair?

A. They solve the same problem using different

structures, yes. The way is really the same; lower

belt portion taut and upper belt portion concave.

(JDTA2856:9-2856:23 (emphasis added).)

It is well-established that means-plus-function

limitations “represent[] a quid pro quo by permitting inventors

to use a generic means expression for a claim limitation

provided that the specification indicates what structure(s)

constitute(s) the means.” Chicago Bd. Options Exchange, Inc. v.

Int’l Securities Exchange, LLC, 677 F.3d 1361, 1367 (2d Cir.

2012). Structures will only be deemed equivalent to those

asserted in a means-plus-function claim limitation where the

differences are “insubstantial,” i.e., “if the assertedly

equivalent structure performs the claimed function substantially

the same way to achieve substantially the same result as the

corresponding structure described in the specification.”

Easyweb Innov., LLC v. Twitter, Inc., No. 11-cv-4550, 2016 WL

1253674, at *14 (E.D.N.Y. Mar. 30, 2016) (quoting Odetics, Inc.

v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999)).

In addition, “means-plus-function claims are limited to the

particular structures the specification describes as performing

the recited function (and their statutory equivalents), even if

a person of ordinary skill in the art would know what other

structures could be employed to perform the function.” Id.

(collecting cases).

Whelan’s testimony that the support belt, timing belt,

and linear array of ball bearings disclosed in the ‘016 Patent

are “different structures” than the springs disclosed in the

‘265 Provisional, even if they “solve the same problem,” merely

confirms that the “means for slackening” limitation, as

construed by the court, was not adequately described in the ‘265

Provisional. Astilean’s deposition testimony further

corroborates this conclusion. (JDTA:0318:5-15 (“Q. So again,

maybe you can point me where in the provisional application the

slackening mechanism can be found. A. . . . There is nothing in

the provision[al].” Q. So there is nothing in the provisional

about the slackening mechanism? A. No I don’t think it was, no.

. . . It was just in the patent application.”).)

As the party seeking entitlement to priority,

plaintiffs have not met their burden to show a genuine dispute

of material fact exists whether a person of ordinary skill in

the art would conclude, after reviewing the ‘265 Provisional,

that plaintiffs were indeed in possession of the invention

claimed by the Patents-in-suit. Absent entitlement to an

earlier priority date, the Patents-in-suit are rendered invalid

by the on-sale bar, 35 U.S.C. § 102(b). Defendant’s motion for

summary judgment with respect to plaintiffs’ claim for patent

infringement is GRANTED and the infringement claim is therefore

dismissed.

c. Plaintiffs’ Contentions are Unavailing

Plaintiffs assert a number of arguments against

summary judgment in their opposition brief and Rule 56.1

statement, but for the reasons discussed below, each lacks merit

and fails to save their infringement claim.

First, plaintiffs argue that the PTO implicitly

granted the Patents-in-suit priority dating to November 2, 2009.

According to plaintiffs, “the USPTO determin[ed] that the

patents in suit properly rely upon the filing date of the ‘265

provisional application, under 35 U.S.C. § 119(e).” (Pls.’ Opp.

9.) As evidence, plaintiffs point to self-made assertions of

priority in the ‘619 and ‘016 Patent applications. (JSOF (WW)

¶¶ 3, 4, 9; Jelenchick Decl., Ex. M (file history of ‘619

Patent), 33, 48; Jelenchick Decl., Ex. N (file history of ‘016

Patent), 10, 32.) In addition, plaintiffs refer the court to

Astilean’s information disclosure statements (“IDSs”), (ECF Nos.

280-3, 280-4, Supp. Vodopia Decl., Exs. PL33, PL34), which

likewise claim priority to the ‘265 Provisional’s filing date,

and which also note the March 2009 disclosure of the Speedboard

2/Curve at the IHRSA tradeshow. (Pls.’ Opp. 19.) Based on

these disclosures to the PTO, plaintiffs leap to the conclusion

that, since the ‘619 and ‘016 Patents were granted, the PTO must

have also granted the earlier priority date of the ‘265

Provisional.

The Federal Circuit has deemed “unsound” the

proposition, asserted here by plaintiff, that “a patent is

entitled to the benefit of the filing date of its provisional

precursor,” because the PTO does not examine provisional

applications as a matter of course. Dynamic Drinkware, 800 F.3d

at 1380. Absent an explicit finding by the PTO, no presumption

of entitlement to priority attaches. PowerOasis, 522 F.3d at

1305. It follows that that courts routinely reject assertions

that issuance of a patent connotes implicit acceptance of

priority claims. E.g., Chizmar v. ACCO Brands Corp., No. 14-CV-

2181 PKC, 2015 WL 2408818, at *6 (S.D.N.Y. May 8,

2015), aff'd, 636 F. App’x 803 (Fed. Cir. 2016); Bone Care

Int’l, LLC v. Pentech Pharm., Inc., 741 F. Supp. 2d 865, 873–74

(N.D. Ill. 2010) (rejecting patentees’ argument that “the

examiner implicitly ‘accepted’ their assertion regarding the

priority date” by issuing the patent, in the absence of any

explicit determination of priority in the patent’s file

history).

Here, plaintiffs’ priority assertion is especially

unsound. Plaintiffs have not, and apparently cannot, point the

court to any specific language in the ‘619 or ‘016 Patent

applications or file histories, or any other kind of evidence,

that suggests the PTO rendered a priority determination. (See,

e.g., Pls.’ Resp. WW SOF ¶ 24 (plaintiffs “[d]isagree,” without

citation to any, much less admissible, evidence, in response to

defendant’s statement that the PTO made no priority

determination with respect to the Patents-in-suit).) Lacking

such evidence, the court will not read any priority

determination into the PTO’s grant of the ‘619 and ‘016 Patents.

Second, plaintiffs repeatedly assert that because the

Patents-in-suit enjoy the presumption of validity, defendant has

not carried its burden to prove by clear and convincing evidence

that plaintiffs are not entitled to priority and did not satisfy

the written description requirement. (Pls.’ Opp. 10, 19.) It

is settled law that the party challenging the validity of a

patent has the burden to prove invalidity, and that the burden

of persuasion to prove invalidity by clear and convincing

evidence never shifts and remains with the accused infringer.

See PowerOasis, 522 F.3d at 1305; Tech. Lincensing Corp. v.

Videotek, Inc., 545 F.3d 1316, 1329 (Fed. Cir. 2008). But once

an accused infringer “has established a prima facie case of

invalidity and its burden is met,” the patentee bears the burden

of coming forward with evidence to prove entitlement to claim

priority to an earlier filing date. PowerOasis, 522 F.3d at

1305-06. Defendant has established a prima facie case of

invalidity pursuant to the on-sale bar, 35 U.S.C. § 102(b).

Plaintiffs attempt to satisfy their burden to produce evidence

to the contrary, by asserting that the Patents-in-suit are

entitled to claim priority based on the filing date of the ‘265

Provisional, and relatedly, that the ‘265 Provisional adequately

discloses the limitations and specifications of the Patents-in-

suit.

Leaving aside the irrefutable evidence that the ‘265

Provisional did not adequately describe the inventions claimed

by the Patents-in-suit, given plaintiffs’ burden of production,

their failure to proffer adequate and admissible material

evidence warrants summary judgment. Plaintiffs’ “evidence” is

comprised almost exclusively on attorney ipse dixit and

conclusory arguments. As but one example, plaintiffs respond to

defendant’s contention that the ‘265 Provisional does not

disclose “slats attached to each other in a resilient fashion,”

“upper support peripheral ball bearings,” and a “means for

slackening,” (see Def.’s Mot. 12-15), as follows:

This is not true-there clearly is support for the slats,

the slats as resiliently attached and the means for

slackening in the form of the timing belt and idlers

required by claim 1 of the ‘619 patent and the means for

slackening and upper support peripheral bearings as

called out by claim 1 of the ‘016 patent.

(Pls.’ Mot. 20.) No citation to admissible evidence supports

plaintiffs’ contention.

Plaintiffs also cite ubiquitously to Astilean’s own

declaration. (ECF No. 280-5, Declaration of Aurel A. Astilean

in Opposition (“Astilean Opp. Decl.”).) Relying on this

declaration, plaintiffs claim to have raised factual issues

about whether the ‘265 Provisional discloses the elements

pertinent to the Patents-in-suit. For example:

Plaintiffs acknowledge that the ‘265 provisional

application does not expressly show “upper support

peripheral bearings” but respectfully assert that the

upper support peripheral bearings are inherent as hidden

beneath the running belt in Fig. 1, as known to a POSA,

or the wooden prototype could not operate. For that

matter, there is no evidence (only allegations) that can

be relied upon to hold otherwise. This is clear not only

from Mr. Astilean’s Declaration of July 12, 2019 . . .,

but also from other evidence of record.

(Pls.’ Mot. 22 (emphasis in original).) Neither plaintiffs’

opposition nor Astilean’s declaration cites to admissible

evidence for this contention.19 For that matter, Astilean’s

declaration cites no evidence whatsoever, and as defendant

correctly notes, is mostly conclusory, and without basis in

Astilean’s personal knowledge. (See Def.’s Reply 8-9.)

19 Ironically, plaintiffs effectively admit that the ‘265 Provisional does

not disclose the upper support peripheral bearings element of the Patents-in-

suit because they are “hidden.”

Federal Rule of Civil Procedure 56(c) requires that

affidavits submitted in connection with a summary judgment

motion “be made on personal knowledge, set out facts that would

be admissible in evidence, and show that the affiant or

declarant is competent to testify on the matters stated.” Fed.

R. Civ. P. 56(c). “When an affidavit does not comply with these

basic requirements, the offending portions should be disregarded

by the court.” Wilson v. Sessoms-Newton, No. 14-CV-0106

(PKC)(ST), 2017 WL 5508365, at *2 (E.D.N.Y. Nov. 15, 2017)

(quoting Wahad v. F.B.I., 179 F.R.D. 429, 435 (S.D.N.Y. 1998)).

Astilean’s opinions regarding the adequacy of the ‘265

Provisional are not admissible because plaintiffs have made no

showing that Astilean is competent to testify on such matters.

Plaintiffs have not disclosed Astilean as a POSITA or expert in

their disclosures pursuant to Rule 26(a)(2) of the Federal Rules

of Civil Procedure. (See ECF No. 271-28, Jelenchick Decl., Ex.

BB (describing scope of Astilean’s knowledge as: (i) the

activities of Speedfit; (ii) the circumstances surrounding the

breach of contract allegations; and (iii) other alleged wrongs

Plaintiffs have suffered).) Astilean also admitted he was

incapable of answering infringement-related questions at his

deposition.20

20 Astilean deferred to “the lawyers” when asked infringement-related

questions at his deposition. (E.g., JDTA0485:21- JDTA0487:5 (“Q. Mr.

Third, plaintiffs urge the court not to confine Claim

1 in the ‘016 and ‘619 Patents to the specific embodiment of the

invention described and illustrated in the ‘265 Provisional.

(Pls.’ Opp. 23-26.) Plaintiffs thus imply that the written

description requirement is not as stringent as defendant

suggests.21 Plaintiffs rely on Phillips v. AWH Corp., an en banc

decision of the Federal Circuit, which stated that “[a]lthough

the specification often describes very specific embodiments of

the invention, we have repeatedly warned against confining the

claims to those embodiments.” 415 F.3d 1303, 1326-27 (Fed. Cir.

2005). The text quoted by plaintiffs has superficial appeal,

but Phillips does not address the written description

Astilean, are there any curved treadmills that you allege infringe the claims

of the '016 patent that don't infringe the claims of the '619 patent? . . .

A. That's very complicated questions, and I don't think I'm capable to answer

that.”).) To be clear, however, to the extent infringement is a legal issue,

Astilean need not have offered testimony on that topic.

21 Plaintiffs claim the Federal Circuit does not require a written

description to recite a known structure or any particular form of disclosure.

(Pls.’ Opp. 12.) As a generic statement of law, this is not per se

incorrect, but plaintiffs do not explain how that abstract legal principle

applies to the specific facts on record. Moreover, the cases plaintiffs cite

for this proposition cabined their holdings to context-specific

circumstances. For example, in Falko-Gunter Falkner v. Inglis, which

concerned the written description for a novel vaccine, the Federal Circuit

held that an adequate written description of an invention that involves a

biological macromolecule is not necessarily required to contain a recitation

of known DNA structures. 448 F.3d 1357, 1366 (Fed. Cir. 2006). Likewise, in

Carnegie Mellon Univ. v. Hoffman-La Roche Inc., the Federal Circuit

acknowledged that a written description need not “utilize any particular form

of disclosure to describe the subject matter claimed,” but also clarified the

need for “reasonable clarity” demonstrated by disclosure in the

specification. 541 F.3d 1115, 1122 (Fed. Cir. 2008). Carnegie Mellon

concerned the adequacy of written descriptions in the context of

biotechnological inventions. Id. In any event, plaintiffs neglect to

explain how either Inglis or Carnegie Mellon excuses the ‘265 Provisional’s

failure to specify the claim limitations of the Patents-in-suit.

requirement. The Phillips panel was primarily concerned with

“danger of reading limitations from the specification,” that is,

the particular section of a patent that describes the invention,

into the patent’s claims. Id. at 1323. The panel explained

that the purpose of the specification was to provide a POSITA

with an example of the best mode to make and use the invention.

Id. Unlike a patent’s specification, a provisional application

is wholly extrinsic to the patent itself. Indeed, defendant

does not contend that Claim 1 of the Patents-in-suit ought to be

limited to the specific embodiments set forth in their

respective specifications. Nor have the parties characterized

the ‘265 Provisional as a “specification” with respect to the

Patents-in-suit. Rather, plaintiffs seek priority entitlement

for the Patents-in-suit based on an entirely separate disclosure

in a provisional application. But nothing in Phillips suggests

that the written description of an invention in a provisional

application may be expanded, for purposes of entitlement to

priority, to encompass limitations in a later-filed patent that

were not reasonably conveyed in the provisional itself.

In a similar vein, plaintiffs assert that the written

description in the ‘265 Provisional was adequate because any

“missing” elements subsequently disclosed by the Patents-in-suit

were “inherent” all along in the Provisional’s description.

(Pls.’ Opp. 14, 20-22.) “Under the doctrine of inherent

disclosure, when a specification describes an invention that has

certain undisclosed yet inherent properties, that specification

serves as adequate written description to support a subsequent

patent application that explicitly recites the invention’s

inherent properties.” Yeda Research & Dev. Co. v. Abbott GMBH &

Co. KG, 837 F.3d 1341, 1345 (Fed. Cir. 2016). Plaintiffs

suggest the only claimed element not expressly disclosed by the

written description in the ‘265 Provisional is the “upper

support peripheral ball bearings,” but that this “hidden”

element is inherent because any “like device” must have bearings

for the belt to slide upon. (Pls.’ Opp. 14.) Disregarding, for

the moment, plaintiffs’ inaccurate contention that “upper

support peripheral ball bearings” is the only element absent

from the ‘265 Provisional’s written description, an assertion

belied by the record, “in order for [inherency] to be

determined, one skilled in the art must examine the disclosure

for evidence that the missing descriptive matter was present in

the original application[].” Realtime Data, LLC v. Morgan

Stanley, No. 11 CIV. 6696 KBF, 2012 WL 2434750, at *2 (S.D.N.Y.

June 26, 2012) (citing TurboCare Div. of Demag Delaval

Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111 (Fed. Cir.

2001)). Plaintiffs cite no evidence, much less the testimony or

affidavit of a POSITA, that the ‘265 Provisional’s disclosure

necessarily contained the missing descriptive matter.

Accordingly, the Patents-in-suit are not entitled to

the earlier priority date of the ‘265 Provisional, and the on-

sale bar renders the ‘619 and ‘016 Patents invalid. The lack of

entitlement to an earlier priority date, coupled with the on-

sale bar, requires denial of, and alternatively moots,

plaintiffs’ motion, which seeks summary judgment against

defendant as to patent infringement. (See Pls.’ Mot. 17-26.)22

B. Direct Infringement

22 Even so, the court would find that plaintiffs’ motion fails to show no

issue of triable fact that the Woodway Legacy Treadmills meet each claim

limitation in Claim 1 of the Patents-in-suit. See Lemelson v. United

States, 752 F.2d 1538, 1551 (Fed. Cir. 1985) (“It is . . . well settled that

each element of a claim is material and essential, and that in order for a

court to find infringement, the plaintiff must show the presence of every

element . . . in the accused device.”); Laitram Corp. v. Rexnord, Inc., 939

F.2d 1533, 1535 (Fed. Cir. 1991) (“[T]he failure to meet a single limitation

is sufficient to negate infringement of the claim . . . .”).

In addition, in their infringement analysis, plaintiffs appear to have

disregarded the court’s construction of “means for slackening.” (Compare

Pls.’ Mot. 18 (“Speedfit construes the means for slackening of claim 1 of the

’016 patent to mean any structure that prevents the upper portion of the

closed loop treadmill belt from floating up between the end rollers, found in

the patent and file history, and equivalents thereof, as understood by one of

ordinary skill in the art.”)(emphasis added), with Claim Constr. Order 17-18

(construing “means for slackening” term “as limited to the structures

specifically described in the specification, i.e., those disclosed in Figures

2, 3, and 4, and their equivalents.”)(emphasis added).) It is axiomatic that

a patent infringement analysis requires “compar[ing] the allegedly infringing

device against the claims as construed to determine whether the device

embodies every limitation of the claims.” Nassau Precision Casting Co. v.

Acushnet Co., 95 F. Supp. 3d 332, 347 (E.D.N.Y. 2015)(citations

omitted)(emphasis added). Plaintiffs’ failure to apply the Claim

Construction Order is a fatal defect in their patent infringement analysis.

The determination that the Patents-in-suit are invalid

renders an infringement analysis moot. Even assuming, arguendo,

that the ‘016 and ‘619 Patents were valid, the court would still

grant summary judgment and dismiss plaintiffs’ infringement

assertions based on the “doctrine of equivalents” theory. (See

Supp. Compl. ¶¶ 62, 66.) The court would also grant summary

judgment and dismiss plaintiffs’ infringement claims related to

the Woodway Current Treadmills.

1. Doctrine of Equivalents

a. Legal Standard

Even if an accused product does not literally infringe

the asserted claims of a patent, the product may infringe under

the doctrine of equivalents if the differences between the

element of the accused product and the claim limitation at issue

are insubstantial. Schoell v. Regal Marine Indus., Inc., 247

F.3d 1202, 1209–10 (Fed. Cir. 2001) (citing Dawn Equip. Co. v.

Kentucky Farms, Inc., 140 F.3d 1009, 1015–16 (Fed. Cir. 1998)).

“One test used to determine whether differences are

insubstantial is to determine whether the element performs

substantially the same function in substantially the same way to

obtain substantially the same result as the claim limitation.”

Id. (citation omitted). The Supreme Court, however, has

acknowledged that this particular “linguistic framework” may not

be appropriate in every case. Warner-Jenkinson Co. v. Hilton

Davis Chem. Co., 520 U.S. 17, 39-40 (1997). Rather, “[a]n

analysis of the role played by each element in the context of

the specific patent claim [must] inform the inquiry as to

whether a substitute element matches the function, way, and

result of the claimed element, or whether the substitute element

plays a role substantially different from the claimed

element.” Id. at 40.23

The party alleging infringement bears the burden of

proving equivalence at trial, and therefore, failure to set

forth specific facts showing that there is a genuine issue for

trial whether the accused product is insubstantially different

from the claimed invention, merits a grant of summary judgment.

Schoell, 247 F.3d at 1210. “The doctrine of equivalents is not

a talisman that entitles a patentee to a jury trial on the basis

of suspicion; it is a limited remedy available in special

circumstances, the evidence for which is the responsibility of

the proponent.” Id. at 1210; see also Zelinski v. Brunswick

Corp., 185 F.3d 1311, 1317 (Fed. Cir. 1999) (affirming the

23 Other considerations may also be relevant in determining the range of

equivalents to which the claimed invention is entitled, including “the

prosecution history of the patent in suit, the pioneer status of the

invention (or lack thereof), and the limitations on patentability of the

allegedly equivalent device that would have been imposed by prior art extant

at the time that the patent application was filed.” Monster Cable Prod.,

Inc. v. Quest Grp., No. C 04-0005 MHP, 2005 WL 1875466, at *8 (N.D. Cal. Aug.

8, 2005), aff'd, 210 F. App'x 993 (Fed. Cir. 2006) (collecting cases).

district court’s grant of Brunswick’s motion for summary

judgment of noninfringement under the doctrine of equivalents

because the only evidence submitted by patentee was a conclusory

statement by a patent law expert). Both the Supreme Court and

Federal Circuit have “made clear that the evidence of

equivalents must be from the perspective of someone skilled in

the art, for example ‘through the testimony of experts or others

versed in the technology . . . .’” AquaTex Indus., Inc. v.

Techniche Sols., 479 F.3d 1320, 1329 (Fed. Cir. 2007) (quoting

Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605,

608 (1950)).

b. Plaintiffs Have Not Proffered Evidence

Regarding the Doctrine of Equivalents

Plaintiffs have offered no expert testimony concerning

infringement, much less infringement under a “doctrine of

equivalents” theory. (See WW SOF ¶ 67 (“Plaintiffs did not

offer any expert testimony regarding infringement.”); see also

Pls.’ Resp. WW SOF ¶ 67 (“Neither Plaintiffs nor Defendant

offered testimony from a patent expert concerning infringement,

as same is a fact issue.”).) Plaintiffs’ technical expert,

James Whelan, did not offer any opinions concerning infringement

in his Report or Rebuttal, (see generally Jelenchick Decl.,

Exs. K (Whelan Report) and L (Whelan Rebuttal)), as Whelan

confirmed at his deposition. (JDTA2790:5-7 (“Q. Did you offer

any opinions with respect to infringement in either of your

expert reports? A. No.”); JDTA2791:12-16 (“Q. So in your expert

reports you didn’t offer any opinion on whether any of WOODWAY’s

treadmill products infringed on any claim of the Astilean

patents, did you? A. Correct.”).)

Plaintiffs respond with conclusory language that

“there is clear evidence of record” that the Woodway Legacy

Treadmills “include[] each and every element [of] claim 1 of the

‘619 and ‘016 patents,” and the Current Treadmills “include a

means for slackening.” (Pls.’ Opp. 2.) Plaintiffs then cite to

a litany of documents, (id. (citing, inter alia, Vodopia Decl.,

Exs. PL22, PL23, PL25-PL29), without the slightest explanation

of how they are probative of infringement. In any event, a

review of the documents cited does not yield any disputed,

material factual issues with respect to infringement, and none

constitutes evidence from the perspective of someone skilled in

the art. Accordingly, plaintiffs’ claim of infringement, to the

extent based on a Doctrine of Equivalents theory, is dismissed,

and defendant’s motion for summary judgment in this respect is

GRANTED.

2. Woodway Current Treadmills

The record lacks evidence that the Woodway Current

Treadmills infringe the Patents-in-Suit. On March 2, 2017,

during discovery, Woodway produced computer aided design or

“CAD” files of the production versions of the Current

Treadmills. (JSOF (WW) ¶ 63; ECF No. 272-2 through -5,

Jelenchick Decl., Exs. T (Current CURVE), U (Current ECOMILL), V

(Current CURVE THREE 3.0), and W (CURVE Trainer).) The CAD

files of the production versions of the Current Treadmills

illustrate, at various stages, the specific components, sub-

assemblies, and final assembly details of the Woodway Current

Treadmills. (JSOF (WW) ¶ 64.)

Defendant contends that the Current Treadmills lack

any of the claimed “means for slackening,” as described in the

‘619 and ‘016 Patents and, therefore, as a matter of law, the

court should dismiss plaintiffs’ infringement claims as to the

Woodway Current Treadmills. For example, although the CAD files

for the Woodway Legacy Treadmills include an item described as

“BELT, SYNC . . .” in the parts list, (see Jelenchick Decl.,

Exs. X (Legacy CURVE), Y (Legacy ECOMILL), and Z (CURVE THREE

3.0 Legacy)), the CAD files for the Current Treadmills do not

refer to a synchronous mechanism, much less in relation to a

belt or ball bearings. (Jelenchick Decl., Exs. T, U, V, and W.)

Defendant also points out that the Current Treadmills do not

have a timing belt stretching across the frame to connect the

front and rear shafts of the treadmill through the use of timing

belt pulleys or timing belt idlers, and do not illustrate any

support belt or linear ball bearings underneath the frame above

or near the feet. (Def.’s Mot. 20-21.) Nicholas Oblamski also

testified that Current Treadmills have “no methods of

synchronization.” (JDTA3001:18-23.)

Ultimately, the court need not wade into the merits of

whether or not the Current Treadmills infringe because

plaintiffs did not timely disclose or supplement their

infringement contentions with respect to the Current Treadmills.

Plaintiffs served their Disclosure Pursuant to Local Patent Rule

6 on August 4, 2014, which was directed to the Woodway Legacy

Treadmills being offered at the time. (JSOF (WW) ¶ 58; ECF No.

271-18, Jelenchick Decl., Ex. R.) Plaintiffs’ operative

infringement allegations in the Supplemental Complaint are

directed to the same “Curve Products.” (JSOF (WW) ¶ 59; Suppl.

Compl. ¶ 62.) Beginning in February 2016, however, Woodway

began phasing out its Legacy Treadmills and introduced its

Current Treadmills, which include a new CURVE, ECOMILL, CURVE

THREE 3.0, and CURVE Trainer treadmill. (JSOF (WW) ¶ 61.) The

court gave plaintiffs leave to take further discovery on the

Current Treadmills. (ECF No. 154, Am. Sched. Order, ¶¶ 4, 6-7.)

Plaintiffs sought and obtained written discovery and took three

depositions about the Woodway’s newer line of treadmills. (JSOF

(WW) ¶ 60; Jelenchick Decl., Ex. S; JDTA2887; JDTA2982;

JDTA3062.) The court imposed a March 24, 2017 deadline for

plaintiffs to serve revised Local Patent Rule 6 Disclosures,

(Am. Sched. Order), which provided plaintiffs the opportunity to

apprise defendant and the court of plaintiffs’ infringement

contentions and theories concerning the Current Treadmills.

Two-and-a-half years later, plaintiffs still have not done so.24

(WW SOF ¶ 62.)

In Nationwide Sales & Servs. Inc. v. Envirocare Techs.

Int'l, Ltd., a patent infringement case where plaintiffs’

counsel had inexplicably failed to submit claim charts setting

forth their infringement contentions under Local Patent Rule 6,

Magistrate Judge Brown granted summary judgment and dismissed

plaintiffs’ infringement claims. No. CV 16-6617 (GRB), 2018 WL

2436969, at *6 (E.D.N.Y. May 30, 2018), aff'd sub

nom. Nationwide Sales & Servs. Inc. v. Steel City Vacuum Co.,

771 F. App'x 490 (Fed. Cir. 2019).25 Judge Brown likened

plaintiffs’ lapse to “a failure to prosecute.” Id. Here,

plaintiffs failure to serve revised Local Patent Rule 6

disclosures setting forth their infringement claims with respect

24 Plaintiffs do not dispute the fact of their delinquency. (Pls.’ Resp.

WW SOF ¶ 62.) Plaintiffs instead attempt to assert that the claim charts

embedded within their motion papers are functionally equivalent to Local

Patent Rule 6 disclosures. (Id.) The court respectfully disagrees and, even

if plaintiffs were correct, plaintiffs’ tardiness is inexcusable.

25 The parties in Nationwide consented to jurisdiction by Judge Brown.

to the Current Treadmills likewise constitutes a failure to

disclose and prosecute. At this stage of the litigation, it

would be highly prejudicial to defendant if it were forced to

learn of, and defend, plaintiffs’ infringement theories for the

first time at the summary judgment stage. Defendant’s motion

for summary judgment is thus GRANTED, and plaintiffs’

infringement claim with respect to the Current Treadmills is

therefore dismissed.

II. State Law Claims

A. Breach of Contract

“Under New York law, a breach of contract claim

requires proof of (1) an agreement, (2) adequate performance by

the plaintiff, (3) breach by the defendant, and (4) damages.”

Prof'l Merch. Advance Capital, LLC v. C Care Servs., LLC, No.

13-CV-6562 RJS, 2015 WL 4392081, at *4 (S.D.N.Y. July 15, 2015)

(quoting Fischer & Mandell, LLP v. Citibank, N.A., 632 F.3d 793,

799 (2d Cir. 2011)).

The Supplemental Complaint alleges that Woodway

breached two written agreements from May 2003 and May 2005, by,

among other things, selling the Woodway Legacy Treadmills and

seeking patent protection for the same. (Supp. Compl. ¶¶ 68,

70.) The alleged May 2003 agreement is a purported non-

disclosure agreement between Astilean and Bayerlein, however, it

is not clear what the parties agreed to keep confidential or

what any of the other terms of the agreement were. (Id. ¶ 25.)

The alleged May 2005 agreement included terms that were also

“orally conveyed” to plaintiffs. (Id. ¶ 27.) The purported

terms of the second agreement provided that the NDA was

applicable to “all disclosures made by Speedfit and all actions

taken by Woodway as a result of said disclosures, including,

without limitation, the construction of prototypes of personal

exercise equipment based on Speedfit’s design.” (Id.) The

agreement is also alleged to have granted Speedfit “every right

of every kind in and to its designs and any other information

supplied by Woodway, and to any prototypes that Woodway builds

as a result thereof . . . .” (Id.) Neither the Supplemental

Complaint nor the record before the court provides further

detail or evidence regarding other contractual provisions, such

as when the alleged contract terminated, limitations to the

scope of confidentiality, or remedies for breach.

In discovery, defendant requested “[a]ll agreements

and all documents relating to any such agreements between

Plaintiffs and Defendant.” (ECF No. 271-29, Jelenchick Decl.,

Ex. CC, 5.) Defendant also propounded an interrogatory

requesting plaintiffs “[i]dentify with particularity and provide

a copy of each contract Plaintiffs contend Defendant[] breached,

specifying for each contract, the parties thereto, the date of

formation, the subject matter, and all material terms.” (ECF

No. 271-30, Jelenchick Decl., Ex. DD, at 7.) At the time,

plaintiffs claimed that copies of the NDAs “were previously

provided to Defendant[] and contain all material terms therein.”

(ECF No. 271-31, Jelenchick Decl., Ex. EE, 12-13.) Eventually,

citing “plaintiffs’ continued failure to produce the

nondisclosure agreements,” defendant sought and obtained the

court’s leave to move for default judgment on plaintiffs’ breach

of contract claim. (ECF No. 76, ¶ 1(e).) Before defendant

filed its motion, however, plaintiffs filed the Supplemental

Complaint.

With the purported written NDAs still missing from the

record, (see Def.’s Mot. 22-24), plaintiffs now acknowledge that

“there is no NDA in evidence,” and accordingly, the purported

NDAs may no longer serve as the basis of plaintiffs’ breach of

contract claim. (Pls.’ Opp. 2-3.) Though neither the

plaintiffs’ opposition to summary judgment nor the Supplemental

Complaint is a model of clarity, plaintiffs recently clarified

on the record at oral argument that they have abandoned and

waived their breach of contract claim. (Dec. 20, 2019 Hr’g Tr.

50:13-14.)26

Leaving aside plaintiffs’ abandonment and waiver of

their breach of contract claim, even if the court construed

plaintiffs’ allegations as relating to an oral agreement,

plaintiffs have failed to show mutual assent to be bound or

definite terms. “Under New York law, a binding contract can be

formed without the execution of a written agreement.” Rapay v.

Chernov, No. 16CV4910(DLC), 2017 WL 892372, at *3 (S.D.N.Y. Mar.

6, 2017) (quoting Delaney v. Bank of Am. Corp., 766 F.3d 163,

171 (2d Cir. 2014)). Still, “the plaintiff must demonstrate

that the terms of any agreement are definite.” Id.; Express

Indus. & Terminal Corp. v. New York State Dep't of Transp., 93

N.Y.2d 584, 589, 715 N.E.2d 1050, 1053 (1999) (“To create a

binding contract, there must be a manifestation of mutual assent

sufficiently definite to assure that the parties are truly in

agreement with respect to all material terms.”); see also Joseph

Martin, Jr., Delicatessen, Inc. v. Schumacher, 52 N.Y.2d 105,

109 (1981) (“[B]efore the power of law can be invoked to enforce

26 Plaintiffs assert that they pled an alternative claim for unjust

enrichment, which is now “ripe,” in the event the alleged NDAs were not

produced. (Pls.’ Opp. 3; see also WW SOF ¶ 83 (“Woodway did not agree to the

terms of the alleged 2003 or 2005 “non-disclosure agreements” referenced in

¶¶ 25 and 27 of the Supplemental Complaint, orally or otherwise.”); Pls.’

Resp. WW SOF ¶ 83 (“Nondisclosure agreement(s) are not in evidence and not

part of this case. The absence of these contracts is precisely why the unjust

enrichment claim is ripe for adjudication.”)(emphasis added).)

a promise, it must be sufficiently certain and specific so that

what was promised can be ascertained.”). “Even if the parties

believe that they are bound, if the terms of the agreement are

so vague and indefinite that there is no basis or standard for

deciding whether the agreement had been kept or broken, or to

fashion a remedy, and no means by which such terms may be made

certain, then there is no enforceable contract.” Foros Advisors

LLC v. Digital Globe, Inc., 333 F. Supp. 3d 354, 360 (S.D.N.Y.

2018) (quoting Candid Prods., Inc. v. Int’l Skating Union, 530

F. Supp. 1330, 1333 (S.D.N.Y. 1982)). “Whether the essential

terms of a contract are too indefinite is generally an issue of

law, properly determined on a motion for summary judgment.”

Scarpinato v. 1770 Inn, LLC, No. 13-CV-0955 JS SIL, 2015 WL

4751656, at *3 (E.D.N.Y. Aug. 11, 2015) (citations omitted).

Plaintiffs have not offered any evidence that there

was a meeting of the minds on the terms of any oral agreement.

(See WW SOF ¶¶ 80-84.)27 At the very least, this void in the

record generates “substantial ambiguity regarding whether both

parties have mutually assented to all material terms,” and

27 Defendant’s SOF notes the lack of specifics regarding the alleged oral

confidentiality agreement, represents that Woodway lacks information

regarding the agreement’s execution and its terms, and states that Woodway

did not sign or otherwise agree to the NDAs referenced in the Supplemental

Complaint. (WW SOF ¶ 7, 80-84.) Plaintiffs note their disagreement with

defendant’s statements, but do not cite any evidence regarding the existence

of the disputed agreement other than Astilean’s vague testimony. (Pls.’

Resp. WW SOF ¶¶ 80-84.)

precludes enforcement of the alleged oral agreement.

Scarpinato, 2015 WL 4751656, at *3 (citations omitted). There

is also a dearth of evidence about the specific terms of the

oral agreement. Astilean’s recollection was that the NDA

required Astilean and Woodway to “[d]isclose everything between

the parties.” (JDTA0180:2-5.)28 Astilean’s testimony later in

the deposition added little clarity. He testified that he had a

“shake-hand deal” with Bayerlein, whereby Bayerlein was

“supposed to create a prototype apparatus way to sustain country

for the – for an exercise video to be placed in the shooting set

for a video with Jessica Simpson.” (JDTA0646:10-15.)29

Though Astilean and Bayerlein appear to have discussed

the topics of a treadmill prototype, based on the record before

it, the court has no means of construing an enforceable contract

with definite terms. See Schumacher, 417 N.E.2d at 544.

28 Presumably, Astilean meant to suggest that the parties were required to

share information and not disclose the shared information to outside parties.

29 Astilean also claimed he had other hand shake agreements with

Bayerlein, though it is unclear whether these are the same oral agreement

alleged in the Supplemental Complaint:

I have shake-hands with Mr. Bayerlein would never leave the company a

treadmill without the Speedfit name on it, the curved one. I had a shakes-

hand with Mr. Bayerlein at the thousand treadmills sold, that slot, that

tread slot will be named Speedfit not Woodway anymore. I had – one more.

I had the shake-hands with Mr. Bayerlein he will eventually build a

Speedmobile if one of the products I brought to him would become

successful.

(JDTA0647:6-15.)

Consequently, the breach of contract claim is not viable and

defendant’s motion for summary judgment on this claim is

GRANTED.

B. Unjust Enrichment

Plaintiffs allege in the Supplemental Complaint that

“[d]efendant has been unjustly enriched through the receipt of

proceeds of the sale of the Curve . . . .” (Supp. Compl. ¶ 73.)

Under New York law, a claim for unjust enrichment requires a

plaintiff to establish: (1) that the defendant benefitted; (2)

at the plaintiff’s expense; and, (3) that equity and good

conscience require restitution. Bank of Am., N.A. v. NMR Realty

Abstract Servs., Ltd., No. 12-CV-797 JMA, 2014 WL 3585716, at *5

(E.D.N.Y. Jan. 2, 2014) (citing Beth Israel Med. Ctr. v. Horizon

Blue Cross & Blue Shield of New Jersey, Inc., 448 F.3d 573 (2d

Cir. 2006)). The essence of an unjust enrichment claim is that

“one party has received money or a benefit at the expense of

another.” Kaye v. Grossman, 202 F.3d 611, 616 (2d Cir. 2000)

(quoting City of Syracuse v. R.A.C. Holding, Inc., 685 N.Y.S. 2d

381 (N.Y. App. Div. 4th Dep't 1999)).

1. Defendant’s Motion

Defendant’s motion seeks to dismiss the plaintiffs’

unjust enrichment claim on Statute of Frauds grounds. The

Statute of Frauds provides that an agreement will not be

recognized or enforceable if it is not in writing and “when the

agreement by its terms is not to be performed within one year

from the making thereof[.]” Cron v. Hargro Fabrics, Inc., 91

N.Y.2d 362, 366, 694 N.E.2d 56 (1998) (citing N.Y. Gen. Oblig.

Law § 5-701(a)(1)). New York courts interpret the Statute of

Frauds narrowly. Optionality Consulting Pte. Ltd. v. Nekos, No.

18-CV-5393 (ALC), 2019 WL 4523469, at *7 (S.D.N.Y. Sept. 18,

2019). Accordingly, New York courts have limited the reach of

the one year performance requirement of the Statute of Frauds to

“those contracts which, by their terms, ‘have absolutely no

possibility in fact and law of full performance within one

year.’” Id. (citation omitted). If an agreement may be “fairly

and reasonably interpreted” as susceptible to performance inside

of one year, the Statute of Frauds will not bar the

enforceability of the agreement, no matter how “unexpected,

unlikely, or even improbable that such performance will occur

during that time frame.” Id.; Camp Summit of Summitville, Inc.

v. Visinski, No. 06-CV-4994 CM GAY, 2007 WL 1152894, at *5

(S.D.N.Y. Apr. 16, 2007) (“The question is not what the

probable, or expected, or actual performance of the contract

was; but whether the contract, according to the reasonable

interpretation of its terms, required that it should not be

performed within the year.”) (citations and internal quotation

marks omitted). “Where an oral agreement between the parties

calls for performance of an indefinite duration and may only be

terminated within one year by a party's breach, the contract

falls within the Statute of Frauds and is void.” Id. (citation

omitted).

Where the Statute of Frauds precludes enforcement of

an oral agreement, “[a] party may not circumvent the Statute of

Frauds by repleading an already barred breach of contract claim

as a claim for unjust enrichment.” Almeciga v. Ctr. for

Investigative Reporting, 185 F. Supp. 3d 401, 412-13 (S.D.N.Y.

2016) (quoting Four Star Capital Corp. v. Nynex Corp., 183

F.R.D. 91, 108 (S.D.N.Y. 1997)); see also Almazan v. Almazan,

2015 WL 500176, at *13 (S.D.N.Y. Feb. 4, 2015) (“[P]laintiffs

may not pursue unjust enrichment claims if such claims are based

on an oral agreement that is barred by the Statute of Frauds.”)

(internal quotation marks omitted); KJ Roberts & Co. v. MDC

Partners Inc., 2014 WL 1013828, at *12 (S.D.N.Y. Mar. 14, 2014)

(“[T]he Statute of Frauds applies to the Alleged Agreement;

therefore, Plaintiff cannot use a theory of quantum meruit or

unjust enrichment to escape it.”), aff’d, 605 Fed. Appx. 6 (2d

Cir. 2015). Otherwise, plaintiffs could easily circumvent the

Statute of Frauds. Almeciga, 185 F. Supp. 3d at 413.

Defendant’s argument posits that because the written

NDAs do not exist, plaintiffs’ breach of contract action must be

based on the oral agreement referenced in the Supplemental

Complaint. (Def.’s Mot. 29.) Defendant further contends that

because the oral agreement between Astilean and defendant sets

forth legal obligations that cannot possibly be performed with

one year, it runs afoul of New York’s Statute of Frauds, see

N.Y. Gen. Oblig. Law § 5-701, and therefore, so does plaintiffs’

duplicative unjust enrichment claim. (Def.’s Mot. 27-29.) As

discussed above, however, plaintiffs’ breach of contract claim

was abandoned and waived, and also fails because there is

insufficient evidence that the parties entered into a contract

with definite terms. In short, there was no contract as an

initial matter for the Statute of Frauds to bar, and therefore,

the concern that plaintiffs’ unjust enrichment claim may be used

to circumvent the Statute of Frauds’ one year rule is

inapposite. The purpose of General Obligations Law § 5–

701(a)(1) is “to prevent fraud in the proving of certain legal

transactions particularly susceptible to deception, mistakes and

perjury.” Foster v. Kovner, 44 A.D.3d 23, 26 (N.Y. App. Div.

1st Dep’t 2007). But, whereas here, no legal transaction

occurred, allowing plaintiffs’ unjust enrichment claim to

proceed does not frustrate the policy underlying the Statute of

Frauds’ one year rule. See Kovner, 44 A.D.3d at 29 (“[I]nasmuch

as the breach of contract claims are not barred by the statute

of frauds, this rationale is inapplicable and the unjust

enrichment claim should be sustained as an alternative basis for

relief in the event it is determined that there was no oral

agreement . . . .”) (citations omitted); cf. Nakamura v. Fujii,

253 A.D.2d 387, 390 (N.Y. App. Div. 1st Dep’t 1998) (“[A]lthough

the existence of a valid and enforceable contract generally

precludes quasi-contractual recovery, where, as here, a bona

fide dispute exists as to the existence of the contract, the

plaintiff may proceed on both breach of contract and quasi-

contract theories.”).

Accordingly, given the lack of a contract claim,

plaintiffs’ unjust enrichment claim is not duplicative of a

breach of contract claim, and does not circumvent the Statute or

Frauds. Defendant’s motion for summary judgment as to

plaintiffs’ unjust enrichment claim is, therefore, DENIED.

2. Plaintiffs’ Motion

Plaintiffs also seek summary judgment against

defendant on the unjust enrichment count. (Pls.’ Mot. 1, 12-

17.) Regrettably, plaintiffs’ motion is a blunderbuss of

conclusory remarks, purportedly factual statements that lack

citation to evidence, and ad hominem attacks against defendant.

Accordingly, the court must disregard the bulk of plaintiffs’

motion.

Nonetheless, when distilled to statements reasonably

susceptible to factual support, plaintiffs’ theory appears to be

as follows: Astilean and Speedfit disclosed the Wooden Prototype

to Bayerlein in 2008; Bayerlein and his team at Woodway the

relied on Astilean’s input and know-how to develop the

Speedboard 2; the Speedboard 2 ultimately became the Curve, one

of the Woodway Legacy Treadmill models; the Curve and other

Woodway Legacy Treadmills, which were developed, at least in

part, using Astilean’s contribution of time, technical

knowledge, and effort, were sold in the market and resulted in

profits for Woodway; Astilean and Speedfit, however, did not

receive any portion of these profits.

Whether Woodway was enriched at plaintiffs’ expense is

a question of fact that turns principally on how much weight a

jury assigns to Astilean and Speedfit’s contribution to the

Speedboard 2/Curve model that was introduced at IHRSA in 2009;

whether that contribution, if any, benefitted defendant; and

whether, and to what extent, it would be wrong for defendant to

retain any benefit conferred by plaintiffs’ contribution.

Based on the current record, the court cannot decide

these factual issues regarding plaintiffs’ unjust enrichment

claim. The facts in the record establish that Astilean and

Oblamski, Woodway’s engineer, were in frequent contact beginning

in late 2008, leading up to the Speedboard 2/Curve’s debut at

the IHRSA tradeshow in March 2009. The record further

establishes that Astilean, at various points, furnished

plaintiffs with drawings, pictures, and videos about the Wooden

Prototype, in addition to component parts, (Vodopia Decl., Exs.

PL5, PL6), and answered Oblamski’s questions about certain

technical specifications for the treadmill. (Id., Ex. PL8.)

Oblamski used Astilean’s input to generate computer models of

treadmill prototypes on Woodway’s internal system. (Id., Ex.

PL9.) A jury could find, based on this evidence, that Astilean

made a substantial contribution to defendant’s development of

the Woodway Legacy Treadmills, and that equity entitles

plaintiffs to some share of defendant’s profits.

On the other hand, after Astilean’s Wooden Prototype

was featured on the Discovery Channel in January 2009, Oblamski

asked Bayerlein and Weber whether Woodway would use Astilean’s

model for the IHRSA show, or “the one [Woodway] make[s].”

(Vodopia Decl., Ex. PL10.) After Astilean sent Oblamski a

design for a “new Speedboard” on January 21, 2009, Oblamski

indicated the dimensions of the treadmill might have to be

changed to avoid causing too much stress on the treadmill’s

structure. (Id., Ex. PL11.) The next month, with the IHRSA

show approaching, Oblamski told Astilean that he was building a

treadmill prototype with a long belt that “synchronizes the

front and rear shafts,” but planned to “make some adjustments.”

(Id., Ex. PL12.) Days after, Oblamski told Astilean that he

“finally came up with a good solution” to keep the treadmill

belt in position, and would continue to tinker with the

prototype to improve its functionality. (Id., Ex. PL13.) A

jury reviewing this record could reasonably infer that

Astilean’s contribution to the Speedboard 2/Curve was

negligible, that it was Oblamski’s “solution” of keeping the

treadmill belt in position that gave the treadmill its value and

made it marketable, and therefore, equity does not require

divesting Woodway of any portion of its profits for the Legacy

Treadmills.

In sum, questions of fact preclude a finding of

liability against defendant for unjust enrichment at the summary

judgment stage. Plaintiffs’ motion for summary judgment as to

their claim for unjust enrichment is therefore DENIED. As a

result, plaintiffs’ motion for summary judgment with respect to

damages for unjust enrichment is also DENIED without prejudice

as premature. (See Pls.’ Mot. 14-17.)

C. Constructive Trust

Plaintiffs assert that Woodway’s income from its sales

of the Curve should be “segregated in a constructive trust in

Speedfit’s name.” (Supp. Compl. ¶ 7.) “Generally, a

constructive trust may be imposed when property has been

acquired in such circumstances that the holder of the legal

title may not in good conscience retain the beneficial

interest.’” Sharp v. Kosmalski, 40 N.Y.2d 119, 121, 351 N.E.2d

721, 723 (1976) (internal quotation marks and citations

omitted). The elements for imposition of a constructive trust

under New York law are: “(1) a confidential or fiduciary

relation, (2) a promise, (3) a transfer in reliance thereon and

(4) unjust enrichment.” Counihan v. Allstate Ins. Co., 194 F.3d

357, 361–62 (2d Cir. 1999) (quoting Sharp, 40 N.Y.2d at 121).

“Although these factors provide important guideposts, the

constructive trust doctrine is equitable in nature and should

not be ‘rigidly limited.’” In re Koreag, Controle et Revision

S.A. v. Refco F/X Assoc., Inc. (In re Koreag), 961 F.2d 341, 352

(2d Cir. 1992) (citation omitted). However, in order for a

constructive trust claim to survive, plaintiffs must prove that

property is “held under circumstances that render unconscionable

and inequitable the continued holding of the property,” and “the

remedy is essential to prevent unjust enrichment.” Counihan,

194 F.3d at 362. “New York courts have clarified that ‘[a]s an

equitable remedy, a constructive trust should not be imposed

unless it is demonstrated that a legal remedy is

inadequate.’” N. Shipping Funds I, LLC v. Icon Capital Corp.,

921 F. Supp. 2d 94, 107 (S.D.N.Y. 2013) (quoting In re First

Cent. Fin. Corp., 377 F.3d 209, 215 (2d Cir. 2004)).

Here, defendant asserts that plaintiffs cannot

establish that a confidential or fiduciary relationship existed

between Astilean and Speedfit, on the one hand, and Woodway, on

the other. (Def.’s Mot. 29-30.) Plaintiffs respond that “[t]he

Implied Contract” establishes a sufficient relationship between

the parties, and in the alternative, New York does not require

all elements of a constructive trust claim to be met, so the

lack of a confidential or fiduciary relationship would not doom

plaintiffs’ constructive trust claim. (Pls.’ Opp. 8-9.)

Defendant’s motion for summary judgment is GRANTED

with respect to plaintiffs’ constructive trust claim for the

following reasons. “A confidential or fiduciary relationship

exists between two persons or entities when one of them is under

a duty to act for or to give advice for the benefit of the other

upon matters within the scope of the relation.” Gargano v.

Morey, 165 A.D.3d 889, 890, 86 N.Y.S.3d 595, 598 (N.Y. App. Div.

2018) (citing AG Capital Funding Partners, L.P. v. State St.

Bank & Trust Co., 11 N.Y.3d 146, 158, 866 N.Y.S.2d 578, 896

N.E.2d 61 (N.Y. 2008)). “Such a relationship exists where

confidence is reposed on one side, and there is resulting

superiority and influence on the other.” Id. (citation

omitted).

First, plaintiffs cannot premise a confidential or

fiduciary relationship on an implied-in-fact contract alleged

for the first time in their memorandum in opposition to summary

judgment. See Superior Site Work, Inc. v. NASDI, LLC, No.

214CV01061ADSSIL, 2018 WL 3716891, at *22 (E.D.N.Y. Aug. 3,

2018) (“Even if the Court were to read the Plaintiffs'

memorandum of law broadly to include a request to amend their

complaint to include a breach of an oral contract, . . . [i]t is

well settled that a party may not amend its pleadings in its

briefing papers, including in a memorandum in opposition

to summary judgment.”); see also Avillan v. Donahoe, 483 F.

App’x 637, 639 (2d Cir. 2012) (summary order) (“The district

court did not err in disregarding allegations Avillan raised for

the first time in response to Potter’s summary judgment motion.”

(internal citation omitted)); Shah v. Helen Hayes Hosp., 252 F.

App’x 364, 366 (2d Cir. 2007) (summary order) (holding that “[a]

party may not use his or her opposition to a dispositive motion

as a means to amend the complaint” (internal citation omitted)).

And even if the court allowed plaintiffs to allege an implied-

in-fact contract for the first time in plaintiffs’ opposition,

the court has already determined that no contract exists for the

reasons stated above.

Finally, though New York courts have warned against

applying the elements of a constructive trust too rigidly, they

have not jettisoned the requirements altogether. Plaintiffs do

not establish a confidential or fiduciary relationship, and cite

no cases where a constructive trust claim survived a dispositive

motion despite a failure to demonstrate such relationship. On

the contrary, a number of cases have dismissed constructive

claims for precisely that deficiency. McKenzie v. Fishko, No.

12CV7297-LTS-KNF, 2015 WL 685927, at *10 (S.D.N.Y. Feb. 13,

2015) (granting defendants’ motion for summary judgment and

dismissing constructive trust claim where there was “no evidence

that a fiduciary relationship existed between the parties.”);

FLB, LLC v. 5Linx, 821 F. Supp. 2d 548, 560 (W.D.N.Y.

2011), aff'd sub nom. FLB, LLC v. Cellco P'ship, 536 F. App'x

132 (2d Cir. 2013) (granting summary judgment in favor of

defendant on constructive trust claim where plaintiffs failed to

raise triable issue of fact that fiduciary relationship existed

between plaintiffs and defendant); see also Gargano v. Morey,

165 A.D.3d 889, 891 (N.Y. App. Div. 2d Dep’t 2018) (“There were

no allegations of a fiduciary relationship between the

plaintiffs and Monroe. Therefore, we agree with the Supreme

Court's determination to grant dismissal of the second cause of

action, seeking the imposition of a constructive trust.”)

(motion to dismiss); Lantau Holdings Ltd. v. Gen. Pac. Grp.

Ltd., 163 A.D.3d 407, 410 (N.Y. App. Div. 1st Dep’t 2018)

(“Lantau’s allegations in the complaint were insufficient to

show that it had a confidential or fiduciary relationship with

GPG, and therefore, the constructive trust claim was properly

dismissed.”) (motion to dismiss) (citations omitted).

As a result, plaintiffs’ failure to establish that the

requisite relationship existed with Woodway dooms their

constructive trust claim and warrants summary judgment in

defendant’s favor. Though Astilean was clearly collaborating

with Woodway throughout 2008 and 2009, nothing in the record

indicates that either party was acting pursuant to any duty, see

Gargano, 165 A.D.3d at 890, or that Astilean had anything more

than an arms-length, commercial relationship with Woodway. The

defendant’s motion for summary judgment is GRANTED and the

constructive trust claim in the Supplemental Complaint is

therefore dismissed.

CONCLUSION

For the reasons discussed above, defendant’s motion is

GRANTED with respect to plaintiffs’ claims for patent

infringement, breach of contract, and constructive trust. Counts

One, Two, and Four of the Supplemental Complaint are hereby

DISMISSED WITH PREJUDICE. Defendant’s motion for summary

judgment is DENIED with respect to unjust enrichment. (Count

Three). Plaintiffs’ motion is DENIED in its entirety.

The parties are ordered to jointly confer and advise

the court within five business days as to how they intend to

proceed. If they intend to try this case rather than settle,

the parties shall confer with respect to the Proposed Joint

Pretrial Order, in light of the instant Memorandum & Order and

the court’s Memorandum & Order concerning defendant’s motions in

limine, which will follow shortly. The parties shall appear for

a telephone status conference in three weeks.

SO ORDERED.

Dated: Brooklyn, New York

January 9, 2020

/s/

KIYO A. MATSUMOTO

United States District Judge

Eastern District of New York