# Speedfit LLC v. Woodway USA, Inc.

> District Court, E.D. New York · January 9, 2020

URL: https://www.frixlaw.com/law-library/cases/10303613

## Case

- **Court:** District Court, E.D. New York
- **Decided:** January 9, 2020
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
----------------------------------X
SPEEDFIT LLC and AUREL A.
ASTILEAN,

Plaintiffs,
MEMORANDUM & ORDER

13-CV-1276 (KAM)(AKT)
-against-

WOODWAY USA, INC.,

Defendant.
----------------------------------X
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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(Td.) And Figure 4 of the ‘016 Patent discloses the following
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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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10303613. Public record. Not legal advice.