PowX Inc. v. Performance Solutions, LLC

Background

PowX Inc. brought this action seeking a declaration that its textured foam rollers did not infringe U.S. Patent No. 9,656,112 and that the patent was invalid. Performance Solutions, LLC owns and is the assignee of five patents involving therapeutic, fitness, and sports-enhancement devices with projections designed to extend into a user’s soft tissue. Performance Solutions filed an answer and counterclaims and moved for a preliminary injunction covering PowX’s products and the five asserted patents: U.S. Patent Nos. 9,656,112; 9,345,921; 9,539,167; 10,278,890; and 10,695,260.

PowX sold its “Textured Foam Rollers for Muscle Massage” products on Amazon. Performance Solutions argued that those products infringed its patents. PowX argued principally that its products lacked the required core or body, did not have solid projections or projections extending from an overlay, were not configured to extend into soft tissue, and could not be both a one-piece and a two-piece device.

Court’s analysis

To obtain a preliminary injunction in a patent case, Performance Solutions had to show a reasonable likelihood of success on the merits, likely irreparable harm without an injunction, a balance of hardships favoring an injunction, and a favorable effect on the public interest.

The court found that Performance Solutions was likely to prove infringement of at least one asserted patent. It rejected PowX’s argument that a cylindrical core or body could not be hollow, explaining that the claims did not require the core or body to be solid or pliable in the way PowX proposed. The court also found that Performance Solutions provided persuasive evidence that the accused product’s projections were solid and extended from the overlay, and that the projections were configured to extend into soft tissue.

The court agreed with PowX that the product could not simultaneously infringe the patents requiring a one-piece device and the patents requiring a two-piece device. But the court concluded that this did not defeat the motion because Performance Solutions needed to show likely infringement of only one or more claims, and the product could potentially infringe the one-piece patent or the two-piece patents, as well as the patents that did not specify the number of pieces.

The court also found that PowX had not raised a substantial question about validity or enforceability. PowX challenged the patents based on obviousness and indefiniteness. The court concluded that the prior-art references did not disclose every element of the claimed inventions and gave significant weight to the Patent Trial and Appeal Board’s treatment of related prior art during reexamination. The court further concluded that the phrase “configured to extend into soft tissue” reasonably informed a skilled person of the claim’s scope.

For irreparable harm, the court relied on evidence that the products competed directly on Amazon, that PowX’s product was substantially cheaper, and that its sales threatened price erosion, market share, business opportunities, and relationships with Performance Solutions’ licensees. The court found that PowX’s unsupported argument that an injunction would seriously harm its business did not outweigh that evidence. The court also concluded that the public interest favored enforcing valid patent rights rather than allowing continued sales of products likely to infringe them.

Order

The court granted Performance Solutions’ motion for a preliminary injunction. It enjoined PowX, pending a final determination of the action or further order, from making, using, importing, offering for sale, or selling the identified “Textured Foam Rollers for Muscle Massage” products or any identical or substantially similar products listed under the specified Amazon identification numbers. The order also prohibited efforts to circumvent the injunction through transfers, new entities, other storefronts or platforms, and prohibited instructing, aiding, or assisting others in conduct covered by the injunction. The order extended to PowX’s officers, agents, employees, attorneys, and persons acting in active concert or participation with them.