IP Law Daily, PATENT—S.D.N.Y.: Preliminary injunction granted in foam roller dispute, (Jun 17, 2024)

By Kevin M. Finson

There was a likelihood of success on the merits because challenges to patent validity and enforceability did not appear to be supported and were largely rebutted by the patentee.

A seller of foam rollers used in physical therapy was entitled to a preliminary injunction against a competitor, the U.S. District Court in New York has held. The patent owner established a likelihood of success on its infringement claims and a likelihood ofrebutting the competitor’s invalidity defense. The competitor’s lower prices had caused it to quickly take over a large portion of the market, causing price erosion (PowX Inc. v. Performance Solutions, LLC, No. 1:24-cv-01389-MMG (S.D.N.Y. June 10, 2024)).

PowX, Inc. brought suit for a declaratory judgment of non-infringement and invalidity of U.S. Patent No. 9,656,112 (the ’112 patent), owned by Performance Solutions, LLC (Performance). Performance counterclaimed for infringement of the ’112 patent as well as U.S. Patents Nos. 9,345,921 (the ’921 patent); 9,539,167 (the ’167 patent); 10,278,890 (the ’890 patent); and 10,695,260 (the ’260 patent), and sought a preliminary injunction against PowX. All of the asserted patents were related to foam rollers with projections used in physical therapy, and PowX sold foam rollers via Amazon.com. The court considered the traditional injunction factors.

Likelihood of success on the merits. PowX raised issues of infringement and validity, but the court found that it only mentioned these issues and did not present evidence from which a “substantial question” of validity or enforceability could be found. Considering the expert testimony presented at the injunction hearing, the court found it likely that Performance would rebut any issues actually raised by PowX, so this factor weighed in favor of an injunction.

Irreparable harm. The court held that a presumption of irreparable harm followed from the finding of likelihood of success on the merits on infringement, and additionally, even without the presumption, PowX’s large and growing market share on Amazon.com was causing price erosion and harm to Performance’s existing business and business relationships.

Balance of hardships. PowX argued that an injunction would be devastating to its business and that the accused products made up the vast majority of its sales, such that an injunction would bankrupt the company. However, the court noted that even after it enquired about those facts at a hearing, PowX failed to present any evidence in support of this attorney argument. Absent any evidence in the record the court could not find any hardship on the part of PowX.

Public interest. The court found that the public interest would be served by the protection of patent rights.

Balancing the factors, the court granted the preliminary injunction.

The Case is No. 1:24-cv-01389-MMG.

Judge: Garnett, M.

Attorneys: Chandler Elizabeth Sturm (Tarter Krinsky and Drogin LLP) for PowX Inc. Jacqueline Relatores (Maynard Nexsen PC) for Performance Solutions, LLC.

Companies: PowX Inc.; Performance Solutions, LLC

Cases: Patent NewYorkNews