NY Patent Decisions Blog

Speedfit’s Treadmill Patent “Runs Into” On-Sale Bar Invalidity Due to Collateral Estoppel Stemming from a Prior Litigation on a Different Patent

On September 21, 2020, District Judge Chen (E.D.N.Y.) entered an order granting Defendants Chapco Inc. and Samsara Fitness LLC’s motion for summary judgment of invalidity of Plaintiffs Speedfit LLC and Aurel Astilean’s U.S. Patent No. 8,690,738 (“the ’738 Patent”), which is directed to a motor-less, leg-powered treadmill. The Court also denied Defendants’ motion to strike Plaintiff Astilean’s affidavit (“the Astilean Affidavit”) in support of Plaintiffs’ response to the summary judgment motion.

On the invalidity summary judgment motion, the Court analyzed whether collateral estoppel stemming from a prior litigation on a different patent prevents Plaintiffs from arguing that the ’738 Patent claims are valid. The Court found that the sole independent claim of the ’738 Patent is substantially similar to an independent claim of U.S. Patent No. 8,343,016 (“the ’016 Patent”), of which the ’738 Patent is a continuation. In a prior litigation against a different defendant, the claims of the ’016 Patent were found invalid as anticipated by a product known as “Speedboard” under the “on-sale” bar of 35 U.S.C. 102(b). Plaintiffs argued that collateral estoppel does not apply because one of the four requisite factors was not satisfied: “the identical issue was [not] raised in [the] previous proceeding.” Purdy v. Zeldes, 337 F.3d 253, 258 (2d. Cir. 2003). In arguing that the patents are patentably distinct, Plaintiffs relied largely on differences between the product accused of infringing the ’016 Patent in the prior litigation and the product accused of infringing the ’738 Patent in the current litigation. The Court, however, determined that none of the differences identified by Plaintiffs resulted from differences between the two patents themselves. The Court went on to find that the claims of the ’738 Patent were not materially different from those of the ’016 Patent and thus held that the ’738 Patent is also invalid based on collateral estoppel.

The Court also denied Defendants’ motion to strike the Astilean Affidavit, explaining that such a motion is not an appropriate vehicle for contesting an affidavit. Nevertheless the Court went on to analyze the propriety of the Astilean Affidavit in connection with the summary judgment motion. Plaintiffs had not disclosed Astilean as an expert; yet the Affidavit offered expert testimony and conclusions such as whether Speedboard anticipates the ’738 Patent and whether the ’738 Patent and the ’016 Patent are different. Thus, the Court declined to consider those portions of the Astilean Affidavit.

Case: Speedfit LLC v. Chapco Inc., No. 15-cv-1323, Dkt. No. 94 (E.D.N.Y. Sept. 21, 2020).