Judge Roman Hits “Stop” on State Law Claims in Treadmill Patent Infringement Case | Patterson Belknap Webb & Tyler LLP
On January 17, 2023, Judge Nelson Romàn (S.D.N.Y) granted a motion by defendants LifeCore Fitness (“LifeCore”) and Assault Fitness (“Assault”) to dismiss state law claims as pre-empted or time-barred in a patent infringement case involving treadmill designs. See Speedfit LLC v. LifeCore Fitness Inc., No. 22-CV-3140 (S.D.N.Y. January 23, 2023).
Plaintiff Speedfit LLC manufactures a treadmill known as the Speedboard 2 that features a curved running space powered by, and adaptive to, each user’s body weight. Speedfit holds two patents for its leg-powered design each of which is alleged to be infringed by LifeCore. Speedfit’s complaint also alleges that LifeCore and Assault committed unjust enrichment under New York law by replicating the Speedboard 2’s design, and that the defendants violated New York General Business Law section 349 by (1) replicating the Speedboard 2’s design and (2) deceptively advertising the Assault Treadmill as safe, despite the fact that it was missing a safety feature found in the Speedboard 2.
The defendants moved to dismiss Speedfit’s unjust enrichment and GBL § 349 claims, arguing that all of Speedfit’s state law claims were preempted by federal law and that the GBL § 349 claims were also time-barred. Judge Romàn granted the motion. He dismissed Speedfit’s unjust enrichment claim applying the doctrine of conflict preemption, by which state law tort claims addressing the same tortious conduct as federal patent claims are pre-empted by federal law. See Op. at 4 (citing Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1335 (Fed. Cir. 1998). Judge Romàn found that Speedfit’s unjust enrichment claim and its patent infringement claim both related to the defendants’ alleged replication of Speedboard 2’s design, and thus Speedfit’s unjust enrichment claim conflicted with federal law. Op. at 4-5. The court dismissed Speedfit’s GBL § 349 claim based on the defendants’ use of Speedfit’s design for the same reason.
Judge Romàn did not find that Speedfit’s “deceptive acts” GBL § 349 claim, which alleged that the Assault Treadmill was wrongly advertised as safe despite missing an injury prevention feature in the Speedboard 2, was preempted. He did, however, find the claim was time-barred under the three-year statute of limitations for GBL § 349 claims. Judge Romàn disagreed with Speedfit’s argument that the deceptive acts claim was a “continuing wrong” not subject to the statute of limitations. See, e.g., Henry v. Bank of Am., 147 A.D.3d 599, 601 (2017). He noted that Speedfit did not identify any specific advertisement by the defendants indicating that the Assault Treadmill was unsafe, but that “even the most favorable inference for Plaintiffs cannot justify a conclusion that Defendants committed ‘a series of independent, distinct wrongs’ that render applicable the continuing wrong doctrine.” See Op. at 5 (citing Henry, 147 A.D.3d at 601). Judge Ramon dismissed each of Speedfit’s state law claims without prejudice.
