Throwdown Industries Holdings v. Fitbench - Complaint

Case 1:21-cv-00661-UNA Document 1 Filed 05/06/21 Page 1 of 15 PageID #: 1
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
THROWDOWN INDUSTRIES HOLDINGS,

LLC,
Civil Action No.
Plaintiff,
The Honorable ________________________
v.
JURY TRIAL DEMANDED
FITBENCH, LLC and FITBENCH
HOLDINGS LTD LLC,
Defendants.
COMPLAINT FOR DECLARATORY JUDGMENT
Plaintiff Throwdown Industries Holdings, LLC (hereinafter “Throwdown” or “Plaintiff”)
files this Original Complaint for Declaratory Judgment of Patent Non-Infringement and Invalidity
against FITBENCH, LLC and FITBENCH HOLDINGS LTD LLC (hereinafter “Defendants” or
“FITBENCH”), and would respectfully show the Court as follows:
NATURE OF THE ACTION
1. This is an action for declaratory judgment arising under the Federal Declaratory
Judgement Act, 28 U.S.C. §§ 2201, 2202, and the Patent Laws of the United States, 35 U.S.C.
§ 100 et seq. Plaintiff Throwdown requests this relief because FITBENCH has threatened
Throwdown, erroneously claiming that Throwdown’s FXD Bench infringes FITBENCH’s design
and utility patents directed to workout benches.
2. Plaintiff seeks a declaration that U.S. Patent No. 10,092,791 (“the ’791 patent”),
U.S. Patent No. 10,960,256 (“the ’256 patent”) and U.S. Design Patent No. D831,762 (“the ’762
patent”) (collectively, “the patents-in-suit”) are invalid and/or not infringed by the manufacture,
use, sale, offer for sale, or importation of Throwdown’s FXD Bench, and for such other relief as
1
the Court deems just and proper. Plaintiff has not before and does not now directly infringe, either
individually or jointly, or indirectly infringe any claims of the patents-in-suit.
THE PARTIES
3. Plaintiff Throwdown Industries Holdings, LLC, is organized and existing under the
laws of the State of Delaware, and has a principal place of business at 20372 Hermana Circle, Lake
Forest, CA 92630. Throwdown designs, develops and sells fitness and training products, including
the FXD Bench, alleged by FITBENCH as infringing the patents-in-suit.
4. On information and belief, Defendant FITBENCH, LLC is a limited liability
company organized and existing under the laws of the State of Wisconsin with its principal place
of business at 400 Lake Bluff Dr, Oconomowoc, WI 53066-6414. On information and belief,
FITBENCH LLC is in the business of designing, developing and selling fitness and training
products.
5. On information and belief, Defendant FITBENCH HOLDINGS LTD LLC is a
limited liability company organized and existing under the laws of the State of Wisconsin with its
principal place of business at 400 Lake Bluff Dr, Oconomowoc, WI 53066-6414. On information
and belief, FITBENCH HOLDINGS LTD LLC is in the business of designing, developing and
selling fitness and training products.
NATURE OF THE CONTROVERSY
6. FITBENCH and Throwdown are competitors in the fitness equipment market, and
on information and belief, both companies market to the same customers, either via a direct-to-
consumer model, or through sales to commercial fitness centers.
7. On March 19 and March 22 of 2021, Tyler Danen, Chief Executive Officer of
FITBENCH and a named inventor of the patents-in-suit, personally contacted Gregory Nigro, who
2
works for Throwdown as an independent contractor, and accused the Throwdown FXD Bench of
infringing the patents owned by FITBENCH. Mr. Danen was responding to a Facebook post from
Mr. Nigro, who had posted a picture of the Throwdown FXD Bench. In his text to Mr. Nigro, Mr.
Danen stated that the Throwdown bench infringed on FITBENCH’s design and utility patents, and
stated that he would leave it up to his legal team. The text of the conversation is below:
You of all people should know how it feels to have your ideas and hard work taken
from you. Please also understand that we have multiple design and utility patents
on our benches. What you have with this Throwdown bench in my eyes is infringing
on our patents. I am leaving that up to our legal team to take a look.
The communications between FITBENCH’s Mr. Danen and Throwdown’s Mr. Nigro
(“Danen-Nigro communications”) are attached as Exhibit 1. Mr. Nigro immediately contacted
Mr. J. Gregory Barrow (“Mr. Barrow”), CEO of Throwdown, and Mr. Charles E. Joiner (“Mr.
Joiner”), President of Throwdown, and shared the Danen-Nigro communications with Mr. Barrow
and Mr. Joiner.
JURISDICTION AND VENUE
8. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§
1331 and 1338(a) because this action involves claims arising under the patent laws of the United
States, 35. U.S.C. § 100, et. seq., and under the Federal Declaratory Judgment Act, 28 U.S.C. §§
2201 and 2202.
9. This Court has personal jurisdiction because FITBENCH has minimum contacts
with this forum as a result of business regularly conducted within the State of Delaware and within
this judicial district. Personal jurisdiction exists because, on information and belief, FITBENCH,
inter alia:
a. engages in substantial and not isolated interstate activity in this judicial district;
b. has substantial, continuous, and systematic business contacts in this judicial district;
3
c. actively advertises to residents within this judicial district, and makes available
FITBENCH’s products within this judicial district. For example, FITBENCH
advertises on the Facebook web-based platform
<https://www.facebook.com/FITBENCHUSA/videos/weve-got-your-home-gym-
solutionbetween-our-three-fitbenchs-we-have-a-feeling-you/300849454225023/>
which reaches and can be viewed by residents within this judicial district;
d. operates Internet websites, e.g., <https://fitbench.com/>, that are available to and
are accessed by customers and potential customers of FITBENCH within this
judicial district;
e. allows residents of Delaware to contact FITBENCH for assistance with
FITBENCH’s products, e.g., <https://fitbench.com/contact-copy/>
f. has purposefully and voluntarily availed itself of the privilege of conducting
business in the United States and the State of Delaware by continuously and
systematically placing goods into the stream of commerce through an established
distribution channel with the expectation that such goods will be purchased within
the United States and the State of Delaware; and
4
g. sells and/or offers to sell FITBENCH’s products through retailers and distributers
(e.g., Best Buy) located within this judicial district, for example:
10. This Court has subject matter jurisdiction over this action based on a real and
immediate controversy between FITBENCH and Throwdown regarding whether the Throwdown
FXD Bench infringes the patents-in-suit, and further whether the patents-in-suit are invalid.
FITBENCH has engaged in acts constituting enforcement of the patents-in-suit that represent a
clear threat that it will sue Throwdown for patent infringement based on Throwdown’s
manufacture, use, sale, offer for sale, or importation of the Throwdown FXD Bench.
11. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 for at least the reasons,
inter alia, discussed above in ¶ 8-10, which are incorporated by reference herein.
THE PATENTS-IN-SUIT
12. On October 9, 2018, U.S. Patent No. 10,092,791 (“the ’791 patent”) entitled
“Workout Bench” was issued by the United States Patent and Trademark Office (“USPTO”) to
John Robert Donnelly, Tyler Steven William Danen, and David Thomas Rutledge with
5
FITBENCH as the assignee. The ’791 Patent claims priority to October 26, 2016. A copy of
the ’791 Patent is attached as Exhibit 2.
13. On March 30, 2021, U.S. Patent No. 10,960,256 (“the ’256 patent”) entitled
“Multipurpose Workout and Storage Bench” was issued by the United States Patent and Trademark
Office (“USPTO”) to John Robert Donnelly, Tyler Steven William Danen, and David Thomas
Rutledge with FITBENCH as the applicant. The ’256 Patent claims priority to October 26, 2016.
A copy of the ’256 Patent is attached as Exhibit 3.
14. On October 23, 2018, U.S. Design Patent No. D831,762 (“the ’762 patent”) entitled
“Combined Workout and Storage Bench” was issued by the United States Patent and Trademark
Office (“USPTO”) to John Robert Donnelly, Tyler Steven William Danen, and David Thomas
Rutledge with FITBENCH as the assignee. The ’762 Patent claims priority to October 21, 2016.
A copy of the ’762 Patent is attached as Exhibit 4.
COUNT I
DECLARATION OF NONINFRINGEMENT OF U.S. PATENT NO. 10,092,791
15. Plaintiff repeats and realleges the allegations in paragraphs 1-14, which are
incorporated by reference as if fully restated herein.
16. Throwdown has not infringed and does not infringe, directly or indirectly, any valid
and enforceable claim of the ’791 Patent, either literally or under the doctrine of equivalents, at
least because the Throwdown FXD Bench does not include or practice multiple claim limitations
of the ‘791 Patent, including but not limited to the following limitations of Independent Claim 1,
as italicized below:
1. A workout bench for use by a person on a support surface and for holding
a plurality of exercise items, comprising:
a rectanguloid front container and a rectanguloid rear container each
connected with two opposing rectanguloid side containers therebetween, the
6
front container at least partially open at a front side thereof, the rear
container at least partially open at a rear side thereof, each side container
open at an outward, lateral side thereof, the containers each flush at top
sides thereof, bottom sides thereof, and lateral sides thereof, each container
defining an internal storage volume therein; and
a benchtop pivotally fixed with the front container and including a selectively
movable brace for holding the benchtop at one of a plurality of predefined
angular positions with respect to the top sides of the containers;
whereby the exercise items are placed into the containers and the person is
supported by the benchtop while performing exercises;
wherein each side container further includes a plurality of dumbbell supports
fixed with a back wall thereof, whereby dumbbell-type exercise items may be
supported on any of the dumbbell supports and removed from or returned to
the side container through the open lateral side thereof.
17. For the reasons set forth in the foregoing paragraphs of this Complaint, an actual
and substantial controversy with sufficient immediacy exists between FITBENCH and
Throwdown, based on the ’791 Patent and the Throwdown FXD Bench, to warrant the issuance of
a declaratory judgment regarding whether the Throwdown FXD Bench has infringed the ’791
Patent.
18. Throwdown seeks a judgment declaring that Throwdown does not directly or
indirectly infringe any asserted claims of the ’791 Patent, either literally or under the doctrine of
equivalents, and is not liable for any infringement.
COUNT II
DECLARATION OF INVALIDITY OF U.S. PATENT NO. 10,092,791
20. The ’791 Patent is invalid for failure to meet the conditions of patentability and/or
otherwise comply with one or more of 35 U.S.C. § 102 and 103, to the extent the claims of the
’791 Patent would have been anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. §
7
103, because the claimed inventions were known and/or obvious in view of the prior art, which
includes, but is not limited to, U.S. Patent No. 10,576,352 to Vester (Exhibit 5), Bespoke Gym
webpage from Escape Fitness
(<https://web.archive.org/web/20160114021828/http://www.escapefitness.com/>) (Exhibit 6),
US20170136278A1 to Gilchrist (Exhibit 7), CA2354216C to Siaperas (Exhibit 8), and U.S.
design patents D362776 (Exhibit 9), D455,310 (Exhibit 10), and D256253 (Exhibit 11).
21. For the reasons outlined in the foregoing paragraphs of this Complaint, an actual
Throwdown, and Throwdown seeks a judgment declaring that all claims of the ’791 Patent are
invalid.
COUNT III
DECLARATION OF NONINFRINGEMENT OF U.S. PATENT NO. 10,960,256
a plurality of exercise items including at least exercise weights, the workout
bench comprising:
a front container and a rear container each connected with two opposing
side containers therebetween, the side containers each comprising at least a
back wall extending along an inward, lateral side of the side container, the
front container at least partially open at a front side thereof, the rear
container at least partially open at a rear side thereof, each side container
8
open at an outward, lateral side thereof, the containers each flush at top
sides thereof, bottom sides thereof, and lateral sides thereof, each container
defining an internal storage volume therein, each side container separated
from the other side container, by way of at least the back wall, such that the
internal storage volume of each side container is inaccessible from within the
internal storage volume of the other side container; and
a benchtop fixed with the front container;
wherein each side container further includes a plurality of weight supports
fixed with the back wall thereof, whereby the weight supports are configured
to support one or more of the exercise weights and the side containers are
each configured for removing of or returning of the exercise weights through
the open lateral side thereof.
14. A workout bench for use by a person on a support surface and for
holding a plurality of exercise items including at least kettle-bell type
weights, the workout bench comprising:
a front container and a rear container each connected with two opposing
back walls to define a pair of opposing side containers between the front
container and the rear container, the front container at least partially open at
a front side thereof, each side container open at both lateral sides thereof, the
containers each flush at top sides thereof, bottom sides thereof, and lateral
sides thereof, each container defining an internal storage volume therein;
and
a benchtop fixed with the front container;
wherein each side container further includes a kettle-bell tray pivotally fixed
with the front container and rear container, whereby each kettle-bell tray is
configured to support one or more of the kettle-bell type weights and the side
9
containers are each configured for removing of or returning of the kettle-bell

type weights through the open lateral side thereof.
at least exercise weights, the workout bench comprising:
a front portion including at least a front container defining an internal storage

volume therein, the front container being at least partially open at a front side
thereof;
a rear portion disposed opposite the front portion;
two opposing side containers disposed between the front and rear portions, the
side containers each including at least a back wall extending along an inward,
lateral side of the side container, each side container further being open along
an outward, lateral side thereof, each side container defining an internal
storage volume therein, each side container being separated from the other
side container, by way of at least the back wall, such that the internal storage
volume of each side container is inaccessible from within the internal storage
volume of the other side container; and
a benchtop fixed with at least the front portion;
whereby the person is supported by the benchtop while performing exercises;
wherein at least one of the side containers further includes a plurality of

weight supports fixed with the back wall thereof, whereby the weight supports
are configured to support one or more of the exercise weights and the side
containers are each configured for removing of or returning of the exercise
weights through the open lateral side thereof.
10
Patent.
indirectly infringe any asserted claims of the ’256 Patent, either literally or under the doctrine of
equivalents, and is not liable for any infringement.
COUNT IV
DECLARATION OF INVALIDITY OF U.S. PATENT NO. 10,960,256
otherwise comply with one or more of 35 U.S.C. § 102 and 103, to the extent the claims of the
’256 Patent would have been anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. §
103, because the claimed inventions were known and/or obvious in view of the prior art, which
includes, but is not limited to, U.S. Patent No. 10,576,352 to Vester (Exhibit 5), Bespoke Gym
webpage from Escape Fitness
Throwdown, and Throwdown seeks a judgment declaring that all claims of the ’256 Patent are
invalid.
11
COUNT V
DECLARATION OF NONINFRINGEMENT OF U.S. DESIGN PATENT NO. D831,762
32. Throwdown has not infringed and does not infringe, directly or indirectly, a valid
and enforceable claim of the ’762 Patent, because the Throwdown FXD Bench is not substantially
similar to the claim of the ’762 Patent, at least because the Throwdown FXD Bench (Exhibit 12)
has multiple visual features that distinguish the Throwdown FXD Bench from the ’762 Patent,
including but not limited to the following visual features of the FXD Bench: (i) prominent open
framework appearance as opposed to a box-like appearance; (ii) central cushion element has a
narrower lateral dimension than the end segments of the cushion assembly, providing the cushion
assembly a distinctive barbell shaped appearance, when viewed from the top; and (iii) the lack of
interconnected rectanguloid containers defining a box-like appearance.
Patent.
indirectly infringe the claim of the ’762 Patent, and is not liable for any infringement.
12
COUNT VI
DECLARATION OF INVALIDITY OF U.S. PATENT NO. D831,762
otherwise comply with one or more of 35 U.S.C. § 102 and 103, to the extent the claim of the ’762
Patent would have been anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. § 103,
because the claimed inventions were known and/or obvious in view of the prior art, which includes,
but is not limited to, U.S. Patent No. 10,576,352 to Vester (Exhibit 5), Bespoke Gym webpage
from Escape Fitness
Throwdown, and Throwdown seeks a judgment declaring that the claim of the ’762 Patent is
invalid.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Throwdown respectfully requests that this Court enter:
A. A declaration that Plaintiff Throwdown has not infringed, either directly or
indirectly, any valid and enforceable claim of the utility patents-in-suit (’791 patent and ’256
Patent), either literally or under the doctrine of equivalents;
13
B. A declaration that Plaintiff Throwdown has not infringed any valid and enforceable
claim of the design patent-in-suit, as not being substantially similar to the claim of the design
patent-in-suit (’762 Patent);
C. A declaration that the patents-in-suit are invalid;
D. An order enjoining Defendants FITBENCH, LLC and FITBENCH HOLDINGS
LTD LLC, and its officers, agents, servants, employees, attorneys, and those in active concert or
participation with them from asserting infringement or instituting or continuing any action for
infringement of the patents-in-suit against Plaintiff Throwdown or the suppliers, manufacturers,
distributors, resellers, customers, or end-users of their products; and
E. Such other and further relief as this Court may deem just and proper.
JURY TRIAL DEMANDED
Pursuant to FED. R. CIV. P. 38, Plaintiff Throwdown hereby demands a trial by jury on all
issues so triable.
Dated: May 6, 2021 Respectfully submitted,
THROWDOWN INDUSTRIES
HOLDINGS, LLC
/s/ Tracy L. Pearson

Tracy L. Pearson (DE Bar #5652)
Rolando Diaz (DE Bar #5845)
DUNLAP BENNETT & LUDWIG PLLC
1509 Gilpin Avenue, Ste.2
Wilmington, DE 19806
Tel: (302) 273-4249
Fax: (855) 223-8791
tpearson@dbllawyers.com
rdiaz@dbllawyers.com
14
Thomas M. Dunlap, pro hac vice forthcoming

Raymond Jones, pro hac vice forthcoming
Brendan Squire, pro hac vice forthcoming
Cortland Putbrese, pro hac vice forthcoming
DUNLAP BENNETT & LUDWIG PLLC
8300 Boone Blvd., Suite 550
Vienna, Virginia 22182
(703) 777-7319 (t)
(703) 777-3656 (f)
tdunlap@dbllawyers.com
rjones@dbllawyers.com
bsquire@dbllawyers.com
cputbrese@dbllawyers.com
ecf@dbllawyers.com
Attorneys for Plaintiff Throwdown Industries

Holdings, LLC
15
Case 1:21-cv-00661-UNA Document 1-1 Filed 05/06/21 Page 1 of 3 PageID #: 16
Exhibit 1
b
Exhibit 2
Exhibit 3
Exhibit 4
Exhibit 5
Exhibit 6
Exhibit 7
Exhibit 8
Exhibit 9
Exhibit 10
Exhibit 11
Exhibit 12
Case 1:21-cv-00661-UNA Document 1-12 Filed 05/06/21 Page 2 of 2 PageID #: 1685/6/21, 12(28 PM
FXD BENCH – Throwdown Industries
https://throwdown.com/pages/fxd-bench Page 2 of 8

Throwdown Industries Holdings v. Fitbench - Complaint

Uploaded by

Document Information

Original Description:

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Throwdown Industries Holdings v. Fitbench - Complaint

Uploaded by

Copyright:

Available Formats

Case 1:21-cv-00661-UNA Document 1 Filed 05/06/21 Page 1 of 15 PageID #: 1

IN THE UNITED STATES DISTRICT COURT

THROWDOWN INDUSTRIES HOLDINGS,

COMPLAINT FOR DECLARATORY JUDGMENT

Plaintiff Throwdown Industries Holdings, LLC (hereinafter “Throwdown” or “Plaintiff”)

“FITBENCH”), and would respectfully show the Court as follows:

NATURE OF THE ACTION

and utility patents directed to workout benches.

individually or jointly, or indirectly infringe any claims of the patents-in-suit.

the FXD Bench, alleged by FITBENCH as infringing the patents-in-suit.

4. On information and belief, Defendant FITBENCH, LLC is a limited liability

5. On information and belief, Defendant FITBENCH HOLDINGS LTD LLC is a

selling fitness and training products.

NATURE OF THE CONTROVERSY

consumer model, or through sales to commercial fitness centers.

7. On March 19 and March 22 of 2021, Tyler Danen, Chief Executive Officer of

(“Danen-Nigro communications”) are attached as Exhibit 1. Mr. Nigro immediately contacted

and Mr. Joiner.

JURISDICTION AND VENUE

2201 and 2202.

FITBENCH’s products within this judicial district. For example, FITBENCH

advertises on the Facebook web-based platform

d. operates Internet websites, e.g., <https://fitbench.com/>, that are available to and

are accessed by customers and potential customers of FITBENCH within this

e. allows residents of Delaware to contact FITBENCH for assistance with

FITBENCH’s products, e.g., <https://fitbench.com/contact-copy/>

f. has purposefully and voluntarily availed itself of the privilege of conducting

systematically placing goods into the stream of commerce through an established

the United States and the State of Delaware; and

the ’791 Patent is attached as Exhibit 2.

A copy of the ’256 Patent is attached as Exhibit 3.

A copy of the ’762 Patent is attached as Exhibit 4.

incorporated by reference as if fully restated herein.

equivalents, and is not liable for any infringement.

incorporated by reference as if fully restated herein.

webpage from Escape Fitness

(<https://web.archive.org/web/20160114021828/http://www.escapefitness.com/>) (Exhibit 6),

incorporated by reference as if fully restated herein.

containers are each configured for removing of or returning of the kettle-bell

a front portion including at least a front container defining an internal storage

a rear portion disposed opposite the front portion;

a benchtop fixed with at least the front portion;

whereby the person is supported by the benchtop while performing exercises;

wherein at least one of the side containers further includes a plurality of

equivalents, and is not liable for any infringement.

incorporated by reference as if fully restated herein.

webpage from Escape Fitness

(<https://web.archive.org/web/20160114021828/http://www.escapefitness.com/>) (Exhibit 6),

incorporated by reference as if fully restated herein.

interconnected rectanguloid containers defining a box-like appearance.

incorporated by reference as if fully restated herein.

from Escape Fitness

(<https://web.archive.org/web/20160114021828/http://www.escapefitness.com/>) (Exhibit 6),

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Throwdown respectfully requests that this Court enter:

A. A declaration that Plaintiff Throwdown has not infringed, either directly or

Patent), either literally or under the doctrine of equivalents;

patent-in-suit (’762 Patent);

C. A declaration that the patents-in-suit are invalid;

D. An order enjoining Defendants FITBENCH, LLC and FITBENCH HOLDINGS

infringement of the patents-in-suit against Plaintiff Throwdown or the suppliers, manufacturers,

distributors, resellers, customers, or end-users of their products; and

JURY TRIAL DEMANDED