Heading for a restraining order? – Above the lawAbove the law – 71Bait

Back in February, I wrote on these pages about my search for a new rowing machine for my basement gym, as well as my excitement when I saw another IP complaint in the hyper-competitive premium home exercise equipment space. I have since settled on one of the NordicTrack mid-level rowers and enjoy the instructive videos and challenging rowing programs (thanks also to the readers who have written to me with recommendations). More importantly, the Hydrow-iFit lawsuit I’ve described already lives up to my prediction that the case was a “promising major IP dispute.” Specifically, on April 5, 2022, Hydrow filed a request for an injunction against iFit’s “new RW900 rowing machine,” as well as a newer rowing machine available at a lower price. Luckily, an edited copy of Hydrow’s motion recently became available.

It’s not hard to see why Hydrow invested in an injunction in this competitor IP case. First, as mentioned in my original profile of the case, iFit has a history as an aggressive IP defendant, which gives Hydrow a high profile by ramping up its own aggressiveness at every opportunity. As a plaintiff, it can be important to demonstrate your commitment to a case, both in relation to the defendant and in enhancing the deterrent effect of your action against other competitors.

Second, requests for injunctive relief are a great way for a smaller plaintiff to test the strength of their claims before deciding whether they really should pursue their case to the bitter end. Yes, processing a PI application can add significantly to the short-term costs of a case. But it can also result in savings in the long run, regardless of whether the movement is successful. In the first case, the pressure on the accused to settle is greatly increased. And when the latter is the case, the idea of ​​funding a case that has already been identified as problematic may become less appealing to the IP holder. (In a related vein, I would assume that to the extent that litigation funders participate in funding competitor IP cases, PI filing funding would be seriously considered. For one, it allows funders to investing more capital to report the case sooner, thereby increasing their return on success. Second, it allows for early verification of the merits of the claim, which could allow the funder to decide to pull out of the investment early if things aren’t going well.)

Third, since Hydrow’s case concerns design and trade dress claims, it is of paramount importance for the plaintiff to understand the judicial assessment of merit as early as possible. Both design patent and trade dress claims have an element of subjectivity, at least in the real world, due to the comparative visual nature of the infringement tests that the court must apply. In practice, many district judges in such cases like to see samples of the accused product at an initial hearing, or at least pictures if the product in question is too bulky to easily display in the courtroom. It is therefore not surprising that Hydrow’s PI movement is heavily represented in the images, with numerous views from different perspectives offered along with comparisons of the accused rower to the patented designs and the state of the art.

In addition to the visual cues, Hydrow’s PI Motion seeks to determine how the Hydrow’s design is driving sales for the company in the competitive indoor rowing market. Likewise, Hydrow points out that while iFit had a full line of indoor rowing machines that it had sold for some time, it had never really differentiated itself in terms of design from what Hydrow thought of the “look and feel” of the iFit keeps… a distinct flywheel and a non-distinct, rectangular base structure.” It was only after the Hydrow was launched that “iFIT recently launched a redesigned rowing machine it’s calling the ‘new’ RW900, and oddly enough after an existing one model (see above), to which it bears no resemblance.” This redesign by iFit prompted Hydrow to come forward, with iFit’s rejection leading to Hydrow’s legal action. Additionally, consistent with iFit’s reputation as an aggressive defendant, iFit released a second redesigned model even after Hydrow filed its injury lawsuit.

As Hydrow says, the impetus for his own design came after an extensive collaboration between Hydrow’s founder, a former competitive rowing coach, and a Boston-based design firm. Hydrow specifically argues that the boomerang shape of his rowing machine was what set his patented design apart from the prior art. And it’s the boomerang shape of the redesigned iFit rower that Hydrow claims is the basis — or in design patent lingo, the dominant feature — of iFit’s design patent infringement. Similarly, Hydrow points to what it calls insubstantial differences between the accused rower and Hydrow’s offer as the basis for its trade dress claim, while also noting how much Hydrow has invested in marketing its rower – which after Hydrow’s statement until iFits was unique in the market began breaching. In an interesting tidbit, Hydrow’s application notes that the iFit model undercuts the price of Hydrow’s product by almost $800, which has an outsized impact on market share since most shoppers compare these products online.

Ultimately, it’s difficult to affect a PI request’s likelihood of success without seeing the respondent’s response. In this case, a fairly aggressive briefing timeline was set for the application, with the briefing scheduled to be completed by June 7th. We can imagine Hydrow hoping for a decision on his PI application as soon as possible, but definitely before the holiday season. As a smaller player, Hydrow has a lot at stake when it comes to protecting its reputation as an innovator and premium player. In contrast, iFit appears to be fairly well-positioned to either take this case to the end or, if things look bleak, either push for a settlement or return to selling rowing machines with its older design. I’ll be watching from shore to see who can come out on top in this fascinating court regatta.

Please don’t hesitate to send me any comments or questions at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLCan intellectual property litigation boutique and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related advice, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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