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Speedfit LLC v. Woodway USA, Inc.

United States District Court, E.D. New York

January 9, 2020

SPEEDFIT LLC and AUREL A. ASTILEAN, Plaintiffs,
v.
WOODWAY USA, INC., Defendant.

          MEMORANDUM & ORDER

          KIYO A. 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]

         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 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.) 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” 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 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.)

         C. 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:

         (Image Omitted)

         (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 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:

         (Image Omitted)

         ("016 Patent (Sheet 4 of 8).) Figure 3 of the "016 Patent discloses the following illustration:

         (Image Omitted)

         (Id.) And Figure 4 of the "016 Patent discloses the following illustration:

         (Image Omitted)

         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; Pis.' 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 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 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 nondisclosure 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- 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 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 Fed.Appx. 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 Fed.Appx. 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. ...


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