Green Fitness Equipment Co LLC v. Precor Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Green Fitness Equipment Company, LLC (California)
  • Defendant: Precor Inc. (Delaware); 24 Hour Fitness USA, Inc. (California)
  • Plaintiff’s Counsel: San Diego IP Law Group LLP
• Case Identification: 3:17-cv-00245, S.D. Cal., 02/08/2017
• Venue Allegations: Venue is alleged to be proper based on Defendants conducting business and committing acts of infringement within the district, and Plaintiff residing and suffering harm there.
• Core Dispute: Plaintiff alleges that Defendant Precor’s exercise equipment, which features an "Active Status Light," infringes a patent related to monitoring the condition of electrical apparatus based on current draw, and further seeks to correct the inventorship of a related patent owned by Precor.
• Technical Context: The technology concerns diagnostic systems for motorized exercise equipment that visually indicate the machine's maintenance status to prevent failures and reduce operating costs.
• Key Procedural History: The complaint includes a count to correct the inventorship of U.S. Patent No. 9,430,920, owned by Defendant Precor, alleging Plaintiff’s founder is the true inventor. Plaintiff also alleges providing pre-suit notice of infringement to Precor. Notably, an Inter Partes Review (IPR) certificate provided with the case materials indicates that all claims (1-17) of the asserted U.S. Patent No. 8,884,553 were cancelled on November 12, 2019, subsequent to the filing of this complaint.

Case Timeline

Date	Event
2011-10-19	U.S. Patent No. 8,884,553 Priority Date
2012-03-XX	Plaintiff introduces its "Treadmill Saver" product at trade show
2012-10-XX	Plaintiff meets with Defendant Precor to discuss its product
2013-04-11	Defendant Precor allegedly installs Plaintiff's product for evaluation
2014-03-12	Defendant Precor files provisional application for its own related patent
2014-05-15	Defendant Precor issues press release for redesigned treadmills with "Active Status Light"
2014-11-11	U.S. Patent No. 8,884,553 Issued
2014-11-19	Plaintiff sends notice letter to Defendant Precor regarding infringement
2017-02-08	Complaint Filed
2019-11-12	All claims of U.S. Patent No. 8,884,553 cancelled in Inter Partes Review

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,884,553: Current Monitor for Indicating Condition of Attached Electrical Apparatus (Issued Nov. 11, 2014)

The Invention Explained

• Problem Addressed: The patent's background section describes how electrical equipment, such as treadmills, suffers from increased friction as lubrication wears out. This causes the motor to draw more current, generating excessive heat that can damage electronic and mechanical parts, lead to costly repairs, and create safety hazards for users (Compl. ¶9; ’553 Patent, col. 1:15-49).
• The Patented Solution: The invention is an in-line current monitoring device that solves this problem by visually indicating the equipment's condition. The monitor measures the electrical current drawn by the attached apparatus and, based on whether the current falls within certain pre-set thresholds, activates different colored Light Emitting Diodes (LEDs) to signal the machine's health status (e.g., green for normal, amber for needing maintenance, red for a critical condition) ('553 Patent, Abstract; col. 5:8-34). This provides a clear, at-a-glance diagnostic tool for maintenance personnel ('553 Patent, col. 1:55-2:5).
• Technical Importance: This approach aimed to remove the "guesswork out of preventative maintenance" by creating an "early warning system" to help operators proactively address mechanical issues, thereby reducing operational costs and improving safety (Compl. ¶11).

Key Claims at a Glance

• The complaint asserts infringement of at least independent Claim 1 (Compl. ¶38).
• The essential elements of independent Claim 1 include:
  • Obtaining current from a power source at an electrical circuit.
  • Comparing the current to a first and a second threshold.
  • Activating a first color of light emitting diodes (LEDs) if the current is below the first threshold.
  • Activating a second color of LEDs if the current is between the first and second thresholds.
  • Activating a third color of LEDs if the current is above the second threshold.
  • A "latching mechanism" that enables the color of the activated LEDs to be retained after the equipment stops being used.
• The complaint reserves the right to assert other claims from the patent (Compl. ¶39).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Precor's "Experience Series of treadmills," "EFC Elliptical Cross-trainers," and any other Precor exercise equipment that uses "Active Status Light" or "Accurate Belt Wear Detection" technology (Compl. ¶38).

Functionality and Market Context

The complaint alleges that Precor incorporated the patented technology into its products after evaluating Plaintiff's "Treadmill Saver" device (Compl. ¶¶ 24-25). The complaint includes a product image of the "Treadmill Saver," which illustrates a device with a traffic-light-style color indicator (Compl. p. 5). The accused Precor products are alleged to include an "Active Status Light," which Precor advertised as a "first-of-its-kind" feature allowing staff to "quickly assess the operating status of a machine with a glance" (Compl. ¶31, Ex. E). The complaint further cites correspondence stating the new Precor treadmills "have a blue light on the shroud that blinks to communicate issues similar to the green, yellow, and red of your unit" (Compl. ¶33, Ex. F).

IV. Analysis of Infringement Allegations

The complaint references an infringement claim chart (Exhibit H) that was not provided in the submitted documents. The infringement theory is constructed from the narrative allegations in the complaint.

'553 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
obtaining, at an electrical circuit... current from a power source;	Precor's treadmills and cross-trainers are electrical apparatuses that draw current from a power source to operate.	¶38	col. 7:1-8
comparing, using the electrical circuit, the obtained current with at least one of a first threshold and a second threshold;	The "Active Status Light" functionality, which assesses "operating status," is alleged to necessarily involve comparing the machine's current draw against operational thresholds.	¶31, ¶35	col. 8:50-54
activating one or more light emitting diodes of a first color; ... a second color; ... and a third color...	The accused "Active Status Light" is alleged to communicate different operating states "similar to the green, yellow, and red" of Plaintiff's device, allegedly using a blinking "blue light" to do so.	¶33, ¶35	col. 5:17-34
wherein the electrical circuit includes a latching mechanism that enables the color of the activated one or more light emitting diodes to be retained after the electrical equipment stops being used.	The complaint does not provide sufficient detail for analysis of this element.	N/A	col. 8:60-65

Identified Points of Contention

• Scope Questions: A primary question for the court will be whether the accused products, described as using a blinking "blue light" (Compl. ¶33), can meet the claim limitation requiring the activation of LEDs of a "first color," a "second color," and a "third color." This raises a question of whether a single color exhibiting different behaviors (e.g., blinking) can literally infringe a claim reciting three distinct colors.
• Technical Questions: A key evidentiary hurdle may be proving the existence of the claimed "latching mechanism." The complaint does not appear to allege any facts suggesting the accused products retain and display their status indicator after the equipment is no longer in use, which is an express limitation of the asserted claim.

V. Key Claim Terms for Construction

"latching mechanism that enables the color ... to be retained"

• Context and Importance: This limitation is a potentially dispositive feature of the claim. Infringement will depend on whether Precor's products have a component that stores and displays the last-known status after the treadmill has stopped. Practitioners may focus on this term because the complaint's allegations appear silent on this functionality, suggesting a potential non-infringement defense.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states that "latches 1810 can store data" and can "enable the color of the activated one or more LEDs to be retained even after a user of the electrical equipment stops using the electrical equipment" ('553 Patent, col. 8:60-65). A party might argue this requires only that the state is stored, without specifying for how long or how it is reset.
  • Evidence for a Narrower Interpretation: The patent describes resetting the latch via a "power on reset" or by "disconnecting the current monitoring apparatus" from the power source ('553 Patent, col. 9:1-2). This could support a narrower construction requiring a persistent state that survives a normal operational power cycle and requires a specific reset action, rather than a volatile memory state cleared upon shutdown.

"activating one or more light emitting diodes of a first color ... a second color ... and a third color"

• Context and Importance: The claim explicitly recites three distinct colors. This term is critical because the primary evidence of infringement cited in the complaint is a "blue light that blinks" (Compl. ¶33). The case may therefore turn on whether a single color can meet this multi-color limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A plaintiff might argue that the term's purpose is to communicate three distinct states, and a blinking blue light (or different blink patterns) could achieve the same function, potentially raising an issue under the doctrine of equivalents.
  • Evidence for a Narrower Interpretation: The claim language is plain. The patent specification consistently provides the explicit example of "green," "amber/yellow," and "red" LEDs to indicate three distinct conditions, which strongly supports a construction requiring three visually different colors ('553 Patent, Abstract; col. 5:17-34).

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement based on Precor's alleged actual knowledge of the '553 patent and its actions in "instructing and promoting the use of the Accused Products" (Compl. ¶40, ¶42). It alleges contributory infringement on the basis that the accused products are "especially made or adapted" for infringement and have "no substantially non-infringing uses" (Compl. ¶41).

Willful Infringement

The willfulness claim is based on alleged pre-suit knowledge of Plaintiff's "patent pending" technology from meetings in 2012 and 2013 (Compl. ¶¶ 23-24), and on post-issuance actual knowledge from a notice letter sent on November 19, 2014 (Compl. ¶44). The complaint alleges Precor continued to sell the accused products despite an "objectively high likelihood" of infringement (Compl. ¶45).

VII. Analyst’s Conclusion: Key Questions for the Case

• Case Viability: A threshold question for the litigation is the impact of claim cancellation. Given the post-filing cancellation of all asserted patent claims in an Inter Partes Review, what legal and financial remedies, if any, remain for the patent infringement cause of action covering the period between patent issuance and cancellation?
• Infringement Mismatch: A central factual dispute will be one of functional and literal correspondence. Does the accused "Active Status Light," described as a single blinking blue light, satisfy the claim requirement for three distinct colors? Further, can Plaintiff provide evidence of the claimed "latching mechanism" functionality, which is not described in the complaint's allegations?
• Inventorship: Separate from the infringement claim, a core issue will be one of inventorship. The case presents a parallel dispute over whether Plaintiff’s founder is the rightful inventor of the technology claimed in Defendant Precor’s own '920 patent, based on alleged prior conception and disclosure.