NOSSK, Inc. v. Fitness Anywhere LLC

Background

NOSSK brought a declaratory-judgment action seeking rulings that its Home Product and Twin Pro Product did not infringe Fitness Anywhere LLC’s U.S. Patent No. 8,083,653 (the “’653 Patent”) and that the patent was invalid. Fitness Anywhere does business as TRX. NOSSK also asserted California-law claims based on TRX’s complaint to Amazon alleging that the products infringed the ’653 Patent. Amazon removed the product listings after receiving the complaint and denied NOSSK’s appeals, stating that reinstatement required authorization from TRX or withdrawal of the complaint.

NOSSK moved for a preliminary injunction requiring TRX to withdraw its complaint to Amazon. Because the requested injunction would require TRX to take action rather than merely preserve the existing situation, the court treated it as a mandatory preliminary injunction. The court explained that NOSSK had to make a clear showing that it was likely to succeed on the merits, likely to suffer irreparable harm without relief, that the balance of equities favored an injunction, and that an injunction would serve the public interest.

Likelihood of success on noninfringement

The court rejected NOSSK’s argument that TRX carried the initial burden of proving infringement. Because NOSSK was the party seeking the injunction, NOSSK had to show that it was likely to succeed in proving either noninfringement or invalidity. If NOSSK made that showing, TRX would then have to raise a substantial question about noninfringement or invalidity.

For the Home Product, NOSSK argued that prosecution history estoppel barred TRX from treating a single-strap device as within claim 1. Prosecution history estoppel can prevent a patent owner from relying on claim scope that it clearly and unmistakably gave up during the patent-approval process. The court found that the prosecution history was at least ambiguous. Although TRX had distinguished prior art by discussing a single elongated member and more than one elongated member with grips, other statements and the patent examiner’s comments indicated that TRX distinguished the prior art based on whether the strap was fixed to the anchor. The court therefore found that NOSSK had not shown a clear and unmistakable disclaimer of a single-strap embodiment.

For the Twin Pro Product, NOSSK argued that the product used two separate straps with separate anchors and therefore did not satisfy claim 1’s requirement for portions fixed to the first portion of “an anchor.” The court applied the general patent-claim rule that “a” or “an” in an open-ended claim using “comprising” ordinarily means one or more, unless the claim language, specification, or prosecution history requires a narrower meaning. NOSSK had not provided evidence or argument showing that the ’653 Patent required “an anchor” to mean only one anchor. The court therefore found that NOSSK had not shown a likelihood of success on its Twin Pro noninfringement argument.

Likelihood of success on invalidity

NOSSK argued that claim 1 was invalid as anticipated by U.S. Patent Nos. 5,556,369 and 6,921,354, or was obvious when considered with another patent reference. The court found that NOSSK’s evidence was insufficient. NOSSK provided brief descriptions and conclusory arguments but did not provide claim charts, annotated diagrams, or other evidence showing that the cited prior-art references disclosed every limitation of claim 1. NOSSK also did not provide details supporting the proposed obviousness combinations.

The court separately held that NOSSK had not addressed claims 2 through 8, the dependent claims. Because each patent claim is presumed valid independently, NOSSK had to show a likelihood of invalidating each claim potentially supporting TRX’s infringement complaint. Its failure to provide evidence concerning claims 2 through 8 was an additional reason that it had not shown likely success on invalidity. The court also rejected NOSSK’s argument that the dependent claims were irrelevant if claim 1 were invalid, explaining that a dependent claim can remain valid even when the claim from which it depends is invalid.

Disposition

The court found that NOSSK had not met its burden of showing a likelihood of success on the merits. Because that required showing was absent, the court declined to evaluate irreparable harm, the balance of equities, or the public interest. The court ordered that NOSSK’s motion for a preliminary injunction was DENIED.

Classification note

This is classified as a procedural order because it resolves an interim request for extraordinary relief rather than finally deciding infringement or patent validity.