United States District Court, W.D. Washington, Seattle
L. ROBART United States District Judge.
November 2, 2015, the court granted the parties'
stipulated motion for the entry of a permanent injunction and
order of dismissal. (PI (Dkt. # 18).) The permanent
injunction restrained and enjoined Defendants Home
Skinovations, Inc., and Home Skinovations, Ltd.
(collectively, “Home Skinovations”) from
infringing any of the claims of United States Patent No. 7,
320, 691 (“the '691 Patent”) with certain
products in the United States. (Id. at 2.) The court
retained jurisdiction over the action. (Id.)
motions are before the court: (1) Home Skinovations's
motion for clarification of the court's permanent
injunction (MFC (Dkt. # 21)); and (2) Plaintiff Pacific
Bioscience Laboratories, Inc.'s (“PBL”)
motion for leave to provide new information in support of its
opposition and surreply to Home Skinovations's motion for
clarification (MFL (Dkt. # 35)). The court has considered the
motions, the parties' submissions filed in support of and
opposition to the motions, the relevant portions of the
record, and the applicable law. Being fully advised,
court DENIES Home Skinovations's motion and DENIES
PBL's motion as moot.
1, 2015, PBL filed suit alleging that Home Skinovations
directly infringed the '691 Patent. (Compl. (Dkt. # 1).)
On June 19, 2015, the International Trade Commission
(“ITC”) instituted Investigation No. 337-TA-959,
In the Matter of Certain Electric Skin Care Devices,
Brushes and Chargers Therefore, and Kits Containing
Same. (Stay Ord. (Dkt. # 15) at 1.) On June 29, 2015,
the court stayed PBL's lawsuit pursuant to 28 U.S.C.
§ 1659(a) pending the ITC's final determination in
Investigation No. 337-TA-959. (See Id. at 2-3.)
October 29, 2015, the parties filed a joint motion asking the
court to enter a permanent injunction and order of dismissal
with prejudice. (Joint Mot. for PI (Dkt. # 17).) The parties
stipulated that the entry of the permanent injunction was
without admission by Home Skinovations of infringement,
liability, or violation of the law, and was solely to settle
the dispute between the parties. (Id. at 2.) On
November 2, 2015, the court granted the joint motion and
entered a permanent injunction and order of dismissal.
permanent injunction restrained and enjoined Home
Skinovations from “infringing, contributing to the
infringement, or inducing the infringement, of any claims of
the '691 Patent, including by making, using, offering to
sell and/or selling in the United States and/or importing
into the United States an Accused Product or any other
product containing elements that are colorable imitations of
an Accused Product.” (Id. at 2.) The permanent
injunction defined “Accused Products” to mean:
[T]he Silk'n Sonic, the BellaSonicCleanPlus, replacement
brush heads for each, and substantially similar products sold
or offered for sale in, or imported into, the United States
by Home Skinovations that infringe any claims of . . . the
'691 Patent . . . .
(Id. at 1.) On June 8, 2016, Home Skinovations filed
a sworn statement certifying compliance with the permanent
injunction. (Statement (Dkt. # 19).)
entry of the permanent injunction, Home Skinovations
redesigned its brush product, which it now calls the
Silk'n Pure. (See MFC at 7-10.) The Silk'n
Pure is a unidirectional rotating cosmetics brush. (See
id.) In its motion, Home Skinovations seeks a
determination from this court that (1) the Silk'n
Pure's unidirectional operation does not satisfy the
“bi-directional about a neutral position” claim
limitation of the '691 Patent, and (2) therefore, the
redesigned Silk'n Pure brush is outside the scope of the
permanent injunction. (See Id. at 12; MFC Reply
(Dkt. # 32) at 2, 6.) Home Skinovations states that it has
repeatedly asked PBL to confirm that the Silk'n Pure is
not covered by the claims of the '691 Patent, but PBL has
declined to respond. (MFC at 10.)
Skinovations has made conflicting representations to the
court concerning the commercial availability of the
Silk'n Pure brush in the United States. In its motion,
Home Skinovations states that it has already introduced the
Silk'n Pure into the Canadian and European markets
without objection by PBL and “is planning to imminently
introduce the product commercially into the U.S.
market.” (Id.) Home Skinovations maintains,
however, that it has only “imported a handful of
samples of its redesigned Silk'n Pure product to the U.S.
for analysis by its counsel.” (Id.) Despite
the foregoing representations, Home Skinovations submitted
evidence with its reply memorandum that the redesigned
Silk'n Pure brush was already commercially available in
the United States at the time Home Skinovations filed its
September 15, 2016, motion. (See MFC Reply at 3
(citing Bank Decl. (Dkt. # 32-1).) In its September 30, 2016,
reply memorandum, Home Skinovations states that Kohl's
Corporation “issued a U.S. purchase order for the
Silk'n Pure product in August, 2016.” (Id.
(citing Bank Decl. ¶ 4).) Further, to fulfill the order,
“Home Skinovations ordered approximately 10, 000 units
of the Silk'n Pure brush product from its overseas
supplier on August 25, 2016.” (Id. (citing
Bank Decl. ¶ 6).) Indeed, Home Skinovations declares in
its reply memorandum that its “redesigned brush product
has already been imported into and is commercially available
in the U.S. market.” (Id.) The court cannot
reconcile Home Skinovations's representations in its
motion that it had imported “a handful of samples . . .
for analysis by its counsel” and was “planning to
imminently introduce the product commercially in the U.S.
market” (MFC at 10), with the representations in its
reply memorandum that the product is already commercially
available here (MFC Reply at 3).
argues that Home Skinovations is seeking an impermissible
advisory opinion that its Silk'n Pure brush does not
violate the '691 Patent and that the issue of
noninfringement is not properly before the court. (See
generally MFC Resp. (Dkt. # 27).) The court now
considers Home Skinovations's motion.