DCT

3:15-cv-01665

Chapco Inc v. Woodway USA Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:15-cv-01665, D. Conn., 11/16/2015
  • Venue Allegations: Venue is asserted in the District of Connecticut based on allegations that Defendant sent cease-and-desist letters into the district, threatened Plaintiffs' Connecticut-based customers, and distributes and sells its own products within the state.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their "TrueForm Runner" human-powered treadmill does not infringe U.S. Patent Nos. 8,986,169 and 9,039,580, and/or that the patents are invalid.
  • Technical Context: The technology concerns non-motorized, manually-operated treadmills that utilize a curved running surface to allow a user's motion and gravity to power the belt.
  • Key Procedural History: The action arises from a pre-suit dispute where Defendant allegedly accused Plaintiffs of patent infringement in March 2015, briefly rescinded the threat, and then renewed demands to Plaintiffs and their customers, creating what Plaintiffs assert is a justiciable controversy for declaratory judgment. The complaint notes that the independent claims of the '169 patent were amended and narrowed during prosecution.

Case Timeline

Date Event
2009-03-17 Priority Date for ’169 and ’580 Patents
2014-04-02 Application filed for ’169 Patent
2015-03-13 Application filed for ’580 Patent
2015-03-24 ’169 Patent Issued
~2015-03-XX Defendant allegedly begins threatening infringement action
2015-05-26 ’580 Patent Issued
2015-11-16 Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 8,986,169 - "Manual Treadmill and Methods of Operating the Same"

  • Patent Identification: U.S. Patent No. 8,986,169, issued March 24, 2015.

The Invention Explained

  • Problem Addressed: Conventional treadmills typically use a motor to drive the running belt, which counteracts the force generated by a user to keep them in a static position (’169 Patent, col. 1:40-54). Manual treadmills must also provide a counteracting force but without a motor (’169 Patent, col. 1:59-67).
  • The Patented Solution: The patent describes a manually operated treadmill with a non-planar, curved running surface (’169 Patent, Abstract). As illustrated in the patent's Figure 1, this curvature allows the force of gravity acting on the user's body, particularly on the upward-sloping front portion of the belt, to help rotate the belt, eliminating the need for a motor (’169 Patent, col. 6:46-54; col. 7:16-21). A one-way bearing prevents the belt from rotating backward, ensuring movement in only one direction (’169 Patent, Abstract). The complaint reproduces Figure 1 of the patent to illustrate the technology (Compl. p. 5).
  • Technical Importance: This design enables a non-motorized treadmill where the user controls the speed through their cadence and position on the curved surface, offering a potentially more natural running feel and eliminating the need for electrical power (’169 Patent, col. 7:25-30).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement and invalidity of any valid claim of the '169 Patent (Compl. ¶28). The patent contains two independent claims, 1 and 11.
  • Independent Claim 1:
    • A manually operated treadmill comprising a treadmill frame, a front shaft, and a rear shaft.
    • A running belt with a "curved running surface".
    • A "safety device" coupled to one of the shafts that prevents rotation in one direction and permits it in the opposite direction.
  • Independent Claim 11:
    • A manually operated treadmill comprising a frame, a front shaft assembly, and a rear shaft assembly.
    • A running belt forming a "curved running surface" with front, rear, and central portions, where the front and rear portions are vertically higher than a lowest point in the central portion.
    • A "safety device" cooperating with the rear shaft.
    • At least one "bearing rail" with a plurality of bearings that supports the running surface.

U.S. Patent No. 9,039,580 - "Manual Treadmill and Methods of Operating the Same"

  • Patent Identification: U.S. Patent No. 9,039,580, issued May 26, 2015.

The Invention Explained

  • Problem Addressed: The technical problem is identical to that described in the '169 patent: creating a functional, user-powered manual treadmill without a motor (’580 Patent, col. 1:20-67).
  • The Patented Solution: The solution is also a manually operated treadmill with a curved running surface, where the shape of the surface and gravity provide the force to move the belt in response to a user's stride (’580 Patent, col. 6:46-54). The key components, including the frame, shafts, belt, and one-way bearing, are consistent with the '169 patent (’580 Patent, Abstract).
  • Technical Importance: The technical contribution is the same as the '169 patent, focusing on a motor-less treadmill design responsive to user input (’580 Patent, col. 7:25-30).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement and invalidity of any valid claim of the '580 Patent (Compl. ¶36). The patent contains four independent claims, 1, 11, 19, and 25 (method). The key apparatus claims are 1, 11, and 19.
  • Independent Claim 1:
    • A manually powered treadmill with a frame, front shaft, and rear shaft.
    • A "first bearing rail" and a "second bearing rail", each with a plurality of bearings.
    • A running belt supported by the bearing rails that follows a "curved running surface".
    • A "safety device" to prevent rotation in a first rotational direction.
  • Independent Claim 11:
    • Builds on the elements of claim 1, specifying a "handrail" attached to the frame and defining the running belt as having front, rear, and central portions where the central portion is vertically closer to the ground.
  • Independent Claim 19:
    • Builds on the elements of claim 11, adding "a pair of wheels" for moving the treadmill and at least two "support feet" that are vertically adjustable to change the incline.

III. The Accused Instrumentality

Product Identification

The "TrueForm Runner" human-powered treadmill (Compl. ¶5).

Functionality and Market Context

The complaint describes the accused product only as a "human-powered treadmill" that Plaintiff Samsara sells and Plaintiff Chapco manufactures (Compl. ¶¶1-2). It does not provide sufficient detail for analysis of the product's specific design, construction, or mechanical operation. The central allegation is that Defendant Woodway has accused this product of infringement (Compl. ¶¶5, 7).

IV. Analysis of Infringement Allegations

The complaint is an action for declaratory judgment of non-infringement and does not contain affirmative infringement allegations or claim charts from the patent holder. Instead, Plaintiffs make general denials that their "TrueForm Runner" product meets the limitations of the asserted patents (Compl. ¶¶17, 23). The complaint states, "Upon information and belief, the 'TrueForm Runner' does not infringe the '169 patent because, inter alia, it does not meet the limitations of the claims, as amended" (Compl. ¶17). A similar denial is made for the '580 patent (Compl. ¶23).

  • Identified Points of Contention:
    • Invalidity: A primary point of contention raised by the complaint is the validity of the patents-in-suit. Plaintiffs allege that the limitations of the patents are present in prior art references, rendering the claims invalid under 35 U.S.C. §§ 102 and/or 103 (Compl. ¶¶15, 21). To support this, the complaint provides a figure from U.S. Patent No. 1,211,765, issued in 1917, which it describes as disclosing a human-powered treadmill with a flexible tread and rollers (Compl. ¶11; Figure on p. 4). This figure from a 1917 patent illustrates a human-powered "Health Exerciser" (Compl. p. 4). This suggests that a core dispute will be whether the claimed inventions are novel and non-obvious over earlier treadmill designs.
    • Claim Scope and Prosecution History: The complaint highlights that during the prosecution of the '169 patent, "the independent claims were amended, narrowed and cancelled" (Compl. ¶14). This allegation suggests a potential argument that the scope of the claims is limited by prosecution history estoppel, which may prevent the patentee from asserting a scope of equivalents that was surrendered to the patent office to secure the patent. The interpretation of claim terms in light of this prosecution history will likely be a central issue.

V. Key Claim Terms for Construction

  • The Term: "curved running surface" ('169 Patent, Claim 1; '580 Patent, Claim 1)

    • Context and Importance: This term defines the central novel feature of the claimed treadmill. The definition of "curved" will be critical for both infringement and validity. Practitioners may focus on this term because the specific geometry of the curve (e.g., its radius, whether it is a simple or complex curve) may distinguish the patented invention from the prior art and the accused product.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term itself is general. The specification discloses multiple profiles, including concave, convex, and combinations thereof, as well as the integration of linear portions, suggesting "curved" is not limited to a single shape (’169 Patent, col. 9:8-21; FIGS. 7b-7j).
      • Evidence for a Narrower Interpretation: The specification describes a preferred embodiment where the curve is "substantially a portion of a curve defined by a third-order polynomial" (’169 Patent, col. 9:10-13). An accused infringer may argue that the claims should be limited to the specific complex curves disclosed, particularly in light of the allegation that claims were narrowed during prosecution (Compl. ¶14).

  • The Term: "safety device" ('169 Patent, Claim 1; '580 Patent, Claim 1)

    • Context and Importance: This element is defined functionally to "prevent rotation... in one direction." The structural implementation of this function in the accused product compared to the patent's disclosure will be a key point for infringement analysis.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language "safety device" is broad and not tied to a specific structure.
      • Evidence for a Narrower Interpretation: The abstract and detailed description consistently refer to this element as a "one-way bearing assembly" (’169 Patent, Abstract; col. 27:9-10). A party may argue that the scope of "safety device" is implicitly limited to the one-way bearing structures disclosed in the specification and their equivalents.

VI. Other Allegations

  • Indirect Infringement: The complaint's prayer for relief seeks a declaration that Plaintiffs "neither infringe, induce nor contribute to the infringement" of the patents-in-suit (Compl. p. 10, ¶A; p. 11, ¶D). However, the body of the complaint does not contain specific factual allegations regarding indirect infringement theories.

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

  1. A central issue will be one of validity: are the claims of the '169 and '580 patents, which are directed to manual treadmills with curved running surfaces, anticipated or rendered obvious by prior art, including the early 20th-century treadmill designs referenced in the complaint?
  2. The case will also turn on a question of claim construction and scope: in light of the claim amendments made during prosecution, how narrowly must key terms like "curved running surface" be defined? The outcome of this question may determine whether the patentee can establish that the TrueForm Runner's design falls within the scope of the asserted claims.