Icon Health & Fitness v. Pednar Products et. al

7/27/2019 Icon Health & Fitness v. Pednar Products et. al.

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Terry E. Welch (5819)Chad S. Pehrson (12622)Parr Brown Gee & Loveless, P.C.185 South State Street, Suite 800Salt Lake City, UT 84111Telephone (801) 532-7840Facsimile (801) [email protected]@parrbrown.comAttorneysfor Plaintiff

IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF UTAH

ICON HEALTH AND FITNESS, a UtahCorporation,

Plaintiff,v.

PEDNAR PRODUCTS, INC, a CaliforniaCorporation, and ARTHUR NAREVSKY, anIndividual

Defendants.

COMPLAINT FOR DECLARATORYJUDGMENT

DEMAND FOR JURY TRIAL

Case No. 1:13-cv-00152-DBPMagistrate Judge Dustin B. Pead

Plaintiff ICON HEALTH & FITNESS, INC. ("ICON") hereby complains againstdefendants, PEDNAR PRODUCTS, INC. and ARTHUR NAREVSKY, and alleges as follows:

PARTIESI. ICON is a Delaware corporation with its principal place of business located at

1500 South 1000 West, Logan, Utah 84321.


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2. ICON is informed and believes that Defendant Pednar Products, Inc. is aCalifornia corporation with its principal place of business located at 13130 Spring StreetBaldwin Park, California 91706.

3. ICON is informed and believes that Defendant Arthur Narevsky is an individualliving in California.

NATURE OF ACTION, JURISDICTION AND VENUE4. This is a civil action for declaratory judgment pursuant to 28 U.S.C. 2201-

2202, and the United States Patent Law, 35 U.S.C. 100 et seq., and for such other relief asthe Court deems just and proper.

5. This Court has jurisdiction over this action pursuant to 28 U.S.C. 1331 and1338.

6. On information and belief, Narevsky is an owner ofPednar. Narevsky hasheld himself out as both an owner ofPednar and the manager of its business and intellectualproperty.

7. Pednar and Narevsky are subject to personal jurisdiction in this District because,on information and belief, Pednar and Narevsky have transacted business, contracted to supplygoods or services, and caused injury within the State ofUtah, and have otherwise purposelyavailed themselves of the privileges and benefits of the laws of the State ofUtah, pursuant toUtah Code Ann. 78B-3-205 (2008).

8. ICON alleges on information and belief that Pednar and Narevsky have sold,contracted to sell, or contracted to supply its goods for sale at retail stores in Utah.

9. On information and belief, Pednar and Narevsky is the owner of the domain

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name http://pednar.com/, through which Pednar and Narevsky provides interactive web sitesthat are available to persons within the State of Utah.

I0. Pednar and Narevsky advertise, market, and sell their goods through theirweb site and through other means, which advertising, marketing, and selling are available tothe purchasing public in the State ofUtah.

11. Sales representatives from Pednar attended the Outdoor Retailer Conferencein Salt Lake City in August 2013, where Pednar, through its representatives, offered goodsand services for sale within the state ofUtah.

12. Pednar's and Narevsky's sale, advertising, and marketing of its goods relateto the claims asserted by ICON, and form the basis, at least in part, for ICON's claims.

13. This Court's exercise of personal jurisdiction over Pednar and Narevsky isconsistent with the Constitutions of the United States and the State ofUtah.

14. Venue is proper in this District pursuant to 28 U.S.C. 1391.FACTUAL BACKGROUND AND GENERAL ALLEGATIONS

15. ICON advertises, markets, and sells exercise equipment consumer products.16. Since in or around August 2013, Narevsky and Pednar have interacted with

various ICON employees regarding potential business relationships.17. Narevsky has previously represented to ICON that Pednar owned certain

intellectual property related to fitness rollers, including Patent No. D670, 817 (the "'817Patent"). A Copy of the'817 Patent is attached hereto as Exhibit A. ICON's own diligenceexamining public records and records available through the PTO has revealed that Narevskyhimself owns the '817 Patent. There is no public record indicating that the '817 Patent has been

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assigned by Narevsky to Pednar. However, given Narevsky's representations that Pednar ownsintellectual propetiy including the '817 Patent, ICON deduces that an assignment may haveoccurred but was not recorded.

18. Narevsky holds himself out as an agent with authority to bind Pednar.19. On multiple occasions, Narevsky and Pednar asserted that ICON's sale of a

branded fitness roller infringed the '817 Patent.20. On multiple occasions, Narevsky and Pednar threatened ICON with legal action

related to the '817 Patent and ICON's products.21. On September 26, 2013, Mike Laban, General Manager ofPednar Products Inc.,

emailed Dave McEvoy ("McEvoy") of ICON as follows: "[W]e also have made you aware ofour patent and our intention to protect it. Perhaps you have decided to drop the product, and nomore action is nee


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23. On October 14, 2013, Narevsky sent an email to McEvoy, stating as follows:"My legal team wants to proceed with a C&D this week but I have convinced them to hold offuntil you and I can discuss further. I can buy a couple ofdays but that's about it."

24. On October 21, 2013, Narevsky emailed Dave McEvoy as follows: "The eggCrete/convoluted design is covered under our patent, regardless of how it's designed into theroller. I need to hear back from you today or our legal team want [sic] to file." Later that sameday, Narevsky emailed McEvoy again, stating: "We feel you design is aesthetically similar toours. The test for infringement is the ordinary observer test. Do you think an ordinary observer ina jury would think yours is aesthetically different? I don't think so. Anyway, we need to get thisresolved. Please get back to me by tomorrow."

25. As a result of Narevsky's and Pednar's actions, ICON has a reasonableapprehension that Narevsky/Pednar will file suit alleging infringement of the '817 Patent.

26. ICON denies that any of its activities or products infringe the '817 Patent.27. ICON further alleges that as construed by Pednar and Narevsky, the '817 Patent is

invalid and/or unenforceable.28. A substantial, continuing, and justiciable controversy exists between ICON, on

the one hand, and Narevsky and Pednar on the other, as to Narevsky's and Pednar's right totlneaten or maintain suit for alleged infringement of the '817 Patent and as to the validity, scope,and enforceability of the '817 Patent.

FIRST CAUSE OF ACTION(For Declaratory Judgment of Non-infringement of the '817 l'atent)

29. ICON realleges and incorporates Paragraphs 1-27 as though fully set fotih herein.

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30. Narevsky and Pednar have claimed that the sale of ICON's fitness rollerconstitutes infi'ingement of the '817 Patent, and has threatened to bring a lawsuit on this basis.

31. None of ICON's products, including its fitness rollers, infringe, directly orindirectly, any valid and enforceable claim ofthe'817 Patent.

32. As a result of the acts described in the foregoing paragraphs, there exists asubstantial controversy of sufficient immediacy and reality to wanant the issuance of adeclaratory judgment.

33. ICON seeks a declaratory judgment from this Court that its fitness roller does notinfringe the '817 Patent.

SECOND CAUSE OF ACTION(For Declaratory Judgment of Invalidity and/or Unenforceability of the '817 Patent)34. ICON realleges and incorporates Paragraphs 1-27 as though fully set forth herein.35. The '817 Patent is invalid for failure to meet the conditions ofpatentability and/or

otherwise comply with one or more of35 U.S.C. 100 et seq., 101, 102, 103, and 112.36. As a result of the acts described in the foregoing paragraphs, there exists a

substantial controversy of sufficient immediacy and reality to wanant the issuance of adeclaratory judgment.

37. Narevsky and Pednar have claimed that the scope of the single claim of the '817Patent is such that any "egg Crete/convoluted design, regardless of how it's [sie] designed"infringes the Patent.

38. The prior art, including but not limited to the figures depicted in United StatesPatent No. 7,918,774, discloses all novel or non-obvious aspects ofthe'817 Patent. Because the

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'817 Patent, as construed by N arevsky/Pednar, does not disclose any novel or non-obviousinvention in light of the prior art, it is not valid and is unenforceable.

39. ICON further alleges that Narevsky made representations to the United StatesPatent Office ("PTO") that he qualified for reduced prosecution and issue fees under the PTO's"small entity" status.

40. On information and belief, Pednar would not qualifY for "small entity" statusunder the PTO 's guidelines.

41. On information and belief, Narevsky therefore, as part of advancing a scheme toavoid paying proper fees owing to the PTO, has refrained from assigning the '817 Patent toPednar, but has nonetheless simultaneously sought to assert the Patent through Pednar. Thisconduct constitutes patent misuse, and therefore the '817 Patent should be held unenforceable.

42. ICON seeks a declaratory judgment from this Court that the '817 Patent is invalidand/or unenforceable.

REQUEST FOR RELIEFWHEREFORE ICON respectfully requests relief against Pednar and Narevsky as

follows:For a declaratory judgment that:43. ICON does not infringe the '817 Patent.

44. The '817 Patent is invalid and/or unenforceable.45. Pednar and Narevsky, and those acting in concert with them or acting with

knowledge of the judgment hearing, are without right or authority to threaten or maintain suit

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against ICON, or users or distributors of!CON's products, for alleged infringement of the '817Patent.

46. For an injunction prohibiting Pednar, including its officers, agents, servants,employees, and attorneys, those persons in active concert or participation with them who receiveactual notice thereof, as well as Narevsky, from initiating infringement litigation against, andfrom threatening, ICON or purchasers or users of!CON's products or services with infringementlitigation or charging any of them verbally or in writing with infringement of the '817 Patent, orrepresenting to any of them that infringement has occurred, because of any activities ofiCON.

47. An order declaring that this is an exceptional case and awarding Plaintiffs theircosts, expenses, disbursements and reasonable attorney fees under 35 U.S.C. 285 and all otherapplicable statutes, rnles and common law;

48. For costs and reasonable attorneys' fees incurred herein.49. For such other and further relief as the Court may deem appropriate.

JURY DEMANDIn accordance with Rule 38 of the Federal Rules of Civil Procedure, ICON respectfully

demands a jury trial on all issues so triable.DATED this 24th day of October 2013.

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Is/ Chad S. PelusonTerry E. WelchChad S. PehrsonParr Brown Gee & Loveless, P.C.185 S. State St., Suite 800Salt Lake City, Utah 84111Attorneysfor ICON

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Icon Health & Fitness v. Pednar Products et. al