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Pacific Bioscience Laboratories, Inc. v. Home Skinovations Inc

United States District Court, W.D. Washington, Seattle

March 30, 2017

PACIFIC BIOSCIENCE LABORATORIES, INC., Plaintiff,
v.
HOME SKINOVATIONS, INC., et al., Defendants.

          ORDER

          JAMES L. ROBART United States District Judge.

         I. INTRODUCTION

         On 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.)

         Two 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.[1] Being fully advised, [2] the court DENIES Home Skinovations's motion and DENIES PBL's motion as moot.

         II. BACKGROUND

         On May 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.)

         On 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. (See PI.)

         The 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).)

         Following 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.)

         Home 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).[3]

         PBL 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.

         III. ...


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