United States District Court, S.D. New York
Steven B. Pokotilow, Laura Goldbard George, Irah H. Donner, Binni N. Shah, Stroock & Stroock & Lavan LLP, New York, NY, for plaintiff.
Kathleen E. McCarthy, King & Spalding LLP, New York, NY, Natasha H. Moffitt, King & Spalding LLP, Atlanta, GA, for defendant.
OPINION & ORDER
DENISE COTE, District Judge.
Defendant Spanx, Inc. ("Spanx") moves to strike plaintiff Times Three Clothier, LLC's ("Times Three") amended disclosure of asserted claims and infringement contentions relating to U.S. Patent No. 8, 568, 195 (the "'195 Patent"). For the reasons that follow, Spanx's motion is granted and proceedings concerning the '195 Patent are stayed.
On October 29, 2013, the Patent and Trademark Office issued to Times Three the '195 Patent, a utility patent concerning women's shapeware. The same day, Times Three brought this action against Spanx, alleging that two of Spanx's products, "The Top This Tank Style 1847" and "The Top This Cami Style 1846" (the "Accused Products"), infringed the '195 Patent.
In brief, Times Three asserts that its three-section garment slenderizes a woman's figure through the use of compressive material in the middle section of the garment. The '195 Patent comprises 77 claims, four of which are independent of the others. Its first claim is as follows:
A multi-fabric women's garment for slenderizing the midsection of a user, shaping the waistline of the user, and minimizing the roll up of the garment over the abdomen area of the user, the garment comprising:
an upper section including a first substantially non-compressive shaper material;
a slenderizing middle section configured to be substantially horizontally [sic] around an abdomen of the user when worn and including a compressive material, where the compressive material is configured to slenderize the abdomen of the user and shape the waistline of the user;
a lower section including a second substantially non-compressive shaper material, where the lower section is configured to be used at least to position the garment over the abdomen area of the user; and
a third material covering at least a portion of the slenderizing middle section, and concealing the at least [sic] a portion of the slenderizing middle section from the exterior of the multi-fabric garment.
Similarly, the second and third independent claims, Claims 21 and 26, are also limited to garments comprised of upper and lower sections including "substantially non-compressive" material and a "slenderizing middle section" including "compressive" material. The fourth independent claim, by contrast, is for a garment with upper and lower sections "comprising a first [and second] shaping characteristic, " but it too includes a "slenderizing middle section" that produces "a compressive inward force greater than the first and second shaping characteristics." Thus, in each of the four independent claims, the middle section includes a more compressive material than the upper and lower sections do.
Times Three served its initial infringement contentions on January 31, 2014 (the "Initial Contentions"), in which it set out the 66 claims it contends are infringed by the Accused Products and offered support for its contention that each limitation in a claim was met. Yet Times Three misunderstood the Accused Products' labels, confusing the "Body" (middle) section with the upper section and the "Waist Lining" (lower) section with the middle. Accordingly, Times Three cited, as "support" for its infringement contention, the fact that the "Waist Lining" (lower) section has a greater spandex/elastane ("spandex") content than the "Body" (middle) section. This citation, to the lowest section of the Spanx garment as the section with the most ...