DCT

1:17-cv-00285

adidas AG v. ASICS America Corp

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: adidas AG (Federal Republic of Germany) and adidas America, Inc. (Delaware)
- Defendant: ASICS America Corporation (California) and FitnessKeeper, Inc. (Delaware)
- Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP; Kilpatrick Townsend & Stockton LLP
Case Identification: adidas AG et al v. ASICS America Corporation et al, 1:17-cv-00285, D. Del., 03/17/2017
Venue Allegations: Venue is alleged in the District of Delaware based on Defendant FitnessKeeper's incorporation in the state and Defendant Asics America's regular transaction of business and maintenance of a registered agent in the state.
Core Dispute: Plaintiff alleges that Defendant’s mobile fitness tracking applications, including "My Asics" and "RunKeeper," infringe ten patents related to location-aware fitness monitoring, real-time performance tracking, interactive coaching, and workout planning.
Technical Context: The technology at issue involves the use of mobile devices equipped with GPS and other sensors to collect, analyze, and share data from athletic activities, a key feature in the modern digital fitness and wearables market.
Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of at least some of the patents-in-suit due to a widely reported 2014 lawsuit filed by adidas AGainst a competitor, Under Armour/MapMyFitness, in the same district, which asserted several of the same or related patents.

Case Timeline

Date	Event
2003-03-25	Priority Date for ’267, ’276, and ’767 Patents
2004-01-16	Priority Date for ’149 and ’858 Patents
2004-06-30	Priority Date for ’150 and ’512 Patents
2009-01-20	U.S. Patent No. 7,480,512 Issues
2009-10-29	Priority Date for ’156, ’399, and ’755 Patents
2010-09-28	U.S. Patent No. 7,805,149 Issues
2010-09-28	U.S. Patent No. 7,805,150 Issues
2011-11-29	U.S. Patent No. 8,068,858 Issues
2013-11-12	U.S. Patent No. 8,579,767 Issues
2014-02-04	Adidas files suit against Under Armour/MapMyFitness
2014-05-13	U.S. Patent No. 8,725,276 Issues
2014-08-26	U.S. Patent No. 8,814,755 Issues
2014-10-14	U.S. Patent No. 8,858,399 Issues
2015-03-03	U.S. Patent No. 8,968,156 Issues
2016-02-12	Asics announces acquisition of FitnessKeeper
2016-08-16	U.S. Patent No. 9,415,267 Issues
2017-03-17	Complaint Filed

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

U.S. Patent No. 8,068,858 - “Methods and computer program products for providing information about a user during a physical activity”

Issued November 29, 2011.

The Invention Explained

Problem Addressed: The patent’s background describes the maturation of Global Positioning System (GPS) technology and its integration into mobile devices, enabling a variety of location-based services for commercial, personal, or leisure activities (’858 Patent, col. 1:15-33). The implied technical challenge is leveraging this capability to allow for remote, real-time observation of an athlete's performance.
The Patented Solution: The invention provides a system where a portable fitness device captures a user's location and performance data during a physical activity. This information is transmitted via a wireless network to a server, allowing a remote party (such as a coach or spectator) to access a visual display showing the user's real-time location and performance data relative to a route (’858 Patent, Abstract; Fig. 1).
Technical Importance: This technology enabled remote coaching and spectating for training and competitive events, transforming a typically solitary athletic activity into a shareable, real-time experience (Compl. ¶37).

Key Claims at a Glance

The complaint asserts independent claims 1 and 11 (Compl. ¶35).
Claim 1 (method) requires:
- receiving a first user's location from a first portable fitness device during a physical activity;
- receiving performance data from the device during the activity;
- determining the user's location with respect to a route path; and
- visually displaying the user's location and performance data on a remote system.

U.S. Patent No. 7,805,150 - “Wireless device, program products and methods of using a wireless device to deliver services”

Issued September 28, 2010.

The Invention Explained

Problem Addressed: The patent background discusses the integration of location-aware electronics into mobile platforms to support various services (’150 Patent, col. 1:19-37). The implied problem is how to use a user's location to create a more interactive and dynamic audio experience during a fitness activity.
The Patented Solution: The invention describes a method where a mobile device's proximity to a specific point on a route path triggers the presentation of an audio track. A playlist is used to associate various audio tracks with specific locations along the route, and the system presents the appropriate track when the user reaches the corresponding location (’150 Patent, Abstract; Fig. 10C).
Technical Importance: This approach allows for the delivery of location-specific audio, such as coaching instructions or motivational music, precisely when a user reaches a certain landmark, hill, or segment of a workout route (Compl. ¶46).

Key Claims at a Glance

The complaint asserts independent claims 1, 17, 24, and 26 (Compl. ¶44).
Claim 1 (method) requires:
- detecting that a mobile device is proximate to a point on a route path;
- accessing a playlist that associates audio tracks with locations on the route path;
- determining if the playlist indicates an audio track is associated with that point; and
- presenting the associated audio track in response.

U.S. Patent No. 7,805,149 - “Location-aware fitness training device, methods, and program products that support real-time interactive communication and automated route generation”

Patent Identification: Issued September 28, 2010 (Compl. ¶16).
Technology Synopsis: This patent describes a mobile phone with a GPS receiver capable of receiving waypoint data, determining athletic performance associated with those waypoints, and transmitting the data over a wireless network. It also covers receiving communications, such as predetermined routes and training plans, from the network.
Asserted Claims: 1, 5, 9, 10, 14, 18-21, and/or 30-31 (Compl. ¶54).
Accused Features: The complaint alleges that features for collecting and transmitting fitness information, sending predetermined routes to mobile devices, and providing training plans practice one or more claims of the ’149 Patent (Compl. ¶57).

U.S. Patent No. 7,480,512 - “Wireless device, program products and methods of using a wireless device to deliver services”

Patent Identification: Issued January 20, 2009 (Compl. ¶17).
Technology Synopsis: This patent covers a data processing method for managing fitness training plans. The system involves storing a training plan, permitting a user to select it, transmitting workout data to a client device, and automatically customizing a prospective workout based on the user's actual measured performance.
Asserted Claims: 1-3 and 11-13 (Compl. ¶66).
Accused Features: The complaint accuses features such as training plans, goals, and prescribed workouts that are automatically customized based on user performance (Compl. ¶67).

U.S. Patent No. 9,415,267 - “Performance monitoring systems and methods”

Patent Identification: Issued August 16, 2016 (Compl. ¶18).
Technology Synopsis: The technology involves a method of providing comparative health coaching. It comprises collecting performance data for multiple fitness activities of a first type (e.g., two different runs) and a second type (e.g., two different bike rides), generating comparison data for each type, and displaying the first comparison data.
Asserted Claims: 12-16 (Compl. ¶76).
Accused Features: Features named "run rank," "fitness reports," "RunKeeper FitnessFeed," and "activity logs," which provide comparisons of user performance, are alleged to infringe (Compl. ¶77).

U.S. Patent No. 8,968,156 - “Methods for determining workout plans and sessions”

Patent Identification: Issued March 3, 2015 (Compl. ¶19).
Technology Synopsis: The patent describes a method for generating a workout plan for an individual based on user input. The method determines different types of workouts (e.g., running and strength training) and a plurality of sessions for each, then stores the resulting workout plan on a server.
Asserted Claims: 1-3, 5-8, and/or 12-21 (Compl. ¶84).
Accused Features: The complaint alleges that the "Runkeeper Training Plans" and features for setting goals and prescribed workouts infringe the ’156 Patent (Compl. ¶¶ 85-86).

U.S. Patent No. 8,858,399 - “Systems and methods for annotating information”

Patent Identification: Issued October 14, 2014 (Compl. ¶20).
Technology Synopsis: This patent relates to a method of annotating information collected about a physical activity. It includes receiving information from a remote device, receiving an annotation associated with that information, and generating visual display data for a second remote device.
Asserted Claims: 12-19 and/or 21-25 (Compl. ¶95).
Accused Features: The "RunKeeper FitnessFeed," activity logs, and "friends sharing" features are accused of infringing by allowing users to annotate and share their fitness activities with others (Compl. ¶96).

U.S. Patent No. 8,814,755 - “Performance information sharing systems and methods”

Patent Identification: Issued August 26, 2014 (Compl. ¶21).
Technology Synopsis: The patent describes a method for sharing performance information by determining the information on a first portable device carried by an individual, wirelessly transmitting it, and receiving it on a second computing device not carried by the individual to generate a visual display.
Asserted Claims: 1, 2, 4-5, and 13-14 (Compl. ¶103).
Accused Features: The complaint alleges that features that collect and transmit fitness activity information, provide activity charts, "FitnessFeed," "Activity Logs," "Friends Sharing," and workout comparisons infringe the ’755 Patent (Compl. ¶104).

U.S. Patent No. 8,725,276 - “Performance Monitoring Methods”

Patent Identification: Issued May 13, 2014 (Compl. ¶22).
Technology Synopsis: This patent covers a method of displaying athletic performance information. The method involves receiving data for a route, position data of an individual traversing the route, and performance data during the traversal, then correlating and simultaneously displaying the position and performance data over a graphical representation of the route.
Asserted Claims: 10 and 16 (Compl. ¶113).
Accused Features: Route and fitness data collection, correlation, and display features, particularly when used with heart rate monitors, are alleged to infringe (Compl. ¶114).

U.S. Patent No. 8,579,767 - “Performance Monitoring Apparatuses, Methods, and Computer Program Products”

Patent Identification: Issued November 12, 2013 (Compl. ¶23).
Technology Synopsis: The patent claims a method of monitoring performance with a portable device. The method includes obtaining position points via a satellite positioning system, determining performance information (e.g., speed or pace) based on those points, conveying the information to the individual, and transmitting it to a remote device.
Asserted Claims: 2, 8, and/or 11 (Compl. ¶123).
Accused Features: The complaint accuses features related to the collection, display, and transmission of fitness data, as well as "Audio Cues & Coaching," "FitnessFeed," and activity logs (Compl. ¶124).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "My Asics" and "RunKeeper" mobile applications, along with their associated desktop, website, and server software and interfaces (collectively, the "Accused Products") (Compl. ¶¶ 25, 27). The complaint also includes associated hardware such as heart rate monitors and smart watches sold by RunKeeper (Compl. ¶27).

Functionality and Market Context

The Accused Products are fitness tracking applications that use a mobile device's GPS receiver to track and record activities like running, walking, and cycling (Compl. ¶26, ¶28). Key functionalities alleged in the complaint include providing real-time audio feedback on performance metrics such as distance and pace, transmitting this data to servers for storage and analysis, and allowing users to follow training plans (Compl. ¶¶ 26, 30). The complaint highlights Runkeeper's "Live Track" feature, which allows real-time remote viewing of a user's activity, and its "audio coaching" features (Compl. ¶¶ 37, 46). RunKeeper is positioned as a "world-class leader in the fitness tracking app category" with over 33 million registered users (Compl. ¶26). Asics acquired FitnessKeeper, the operator of RunKeeper, in or around 2016 (Compl. ¶26).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

U.S. Patent No. 8,068,858 - Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a method of providing information about a first user engaged in a physical activity that includes receiving a first user's location from a first portable fitness device	The accused Runkeeper app uses GPS technology in a user's phone to track their fitness activity.	¶28	col. 4:51-53
receiving performance data from the first portable fitness device while the first user is engaged in the physical activity	The accused products provide users with notifications of running distance and pace during exercise and can integrate with heart rate monitors.	¶¶26, 28, 30	col. 4:54-57
determining the first user's location with respect to a route path	The "Live Track" feature streams a user's GPS-tracked activity on Runkeeper.com, which requires determining the user's location along the path of their activity.	¶37	col. 4:58-60
visually displaying on a remote system the first user's location and performance data	The "Live Track" feature allows others to watch the user's activity in real-time on the Runkeeper.com website, a remote system.	¶37	col. 4:60-63

Identified Points of Contention

Scope Questions: A central issue for the ’858 Patent may be the construction of the term "route path". The infringement allegation centers on a "Live Track" feature where a user's path is created and streamed in real time. The court may need to decide whether "route path" as used in the patent requires a pre-defined course, which is described in related patents for route generation, or if it can be construed to cover a path that is defined contemporaneously with the user's movement.
Technical Questions: What evidence does the complaint provide that the accused products "determine" the user's location "with respect to a route path"? The complaint's reliance on a marketing description of the "Live Track" feature raises the evidentiary question of whether the system performs this specific claimed step, or if it simply displays a series of independent GPS coordinates on a map.

U.S. Patent No. 7,805,150 - Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a method of providing audio content on a mobile device, the method comprising: detecting that the mobile device is proximate to a point on a route path	The Accused Products use GPS to track user activity and provide audio coaching, which requires detecting the user's location.	¶¶28, 46	col. 33:1-3
accessing a playlist that associates a plurality of audio tracks with a plurality of locations on the route path	The "audio coaching feature" is alleged to practice the claim, which implies the use of a playlist or an equivalent data structure linking audio cues to locations.	¶46	col. 33:4-7
determining whether the playlist indicates that one of the plurality of audio tracks is associated with the point	The complaint alleges the audio coaching feature performs this step by linking audio cues to specific points on a route.	¶46	col. 33:8-11
in response to detecting that the mobile device is proximate to the point and a determination that the audio track is associated with the point, presenting the audio track	The Accused Products provide audio cues to the user during their workout, as described in materials like "The-Audio-Cue-Guide."	¶46	col. 33:12-16

Identified Points of Contention

Scope Questions: The interpretation of "associates... with locations on the route path" will be critical. The question for the court will be whether this requires a direct link to specific geographic coordinates, or if it could be broad enough to cover associations based on achieving a certain distance (e.g., a "1-mile" mark) or a performance-based event that happens to occur at a location.
Technical Questions: The complaint's allegations are conclusory and quote the claim language. A key factual question will be whether the accused "audio coaching feature" actually functions by associating audio with geographic locations or if it operates based on other triggers, such as elapsed time (e.g., cue every five minutes) or performance data (e.g., cue when pace drops below a target), which may not meet the claim limitation.

V. Key Claim Terms for Construction

Term from U.S. Patent 8,068,858: "route path"
- Context and Importance: The infringement theory for the '858 patent hinges on whether live-streaming a user's ad-hoc run constitutes determining a location "with respect to a route path." If this term is construed to mean a pre-defined or pre-loaded course, the infringement argument may be weakened. Practitioners may focus on this term because it distinguishes between planned navigation and simple real-time tracking.
- Intrinsic Evidence for Interpretation:
  - Evidence for a Broader Interpretation: The term is not explicitly defined in the ’858 Patent specification. An argument could be made that the "route path" is the path being created by the user in real time, and the system determines the user's location with respect to that contemporaneously created path.
  - Evidence for a Narrower Interpretation: The specification of the incorporated '149 Patent, from which the '858 patent is a continuation, heavily discusses automated "route generation" and the use of a "route database" (e.g., ’149 Patent, Abstract; col. 9:1-11). This suggests a "route path" is a discrete data object that exists prior to the user's traversal.
Term from U.S. Patent 7,805,150: "playlist that associates... audio tracks with... locations on the route path"
- Context and Importance: This term is central to whether audio cues triggered by time, distance intervals, or performance metrics infringe. The claim explicitly requires the association to be with "locations." If the accused audio coaching is triggered by non-location-based events (e.g., every five minutes), it may fall outside the scope of the claim.
- Intrinsic Evidence for Interpretation:
  - Evidence for a Broader Interpretation: The patent does not explicitly define "locations." A party could argue that a "location" can be defined by distance (e.g., the "one-mile marker"), which is a type of location, even if triggered by cumulative performance data rather than a specific geographic coordinate.
  - Evidence for a Narrower Interpretation: The specification describes building a playlist by "associating track(s) from music library with route segment[s]" (’150 Patent, Fig. 10B). The corresponding method describes playback in response to being "within range of point on route" (’150 Patent, Fig. 10C). This language suggests a direct mapping between an audio file and a specific geographic point or segment of a route, not just a distance interval.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is primarily based on allegations that Defendants provide instructions on their public websites explaining how to use the accused features and promote these infringing uses in advertisements (Compl. ¶¶ 39, 48, 49). Contributory infringement is alleged on the basis that the accused products are "especially made for use in a manner infringing" and have "no substantial non-infringing uses" (Compl. ¶¶ 40, 50).

Willful Infringement

The complaint does not contain a separate count for willful infringement, but it lays a foundation for such a claim. It alleges Defendants had knowledge of the patents-in-suit at least as of the filing of the lawsuit (Compl. ¶33). Crucially, it also alleges pre-suit knowledge based on a "widely reported" 2014 lawsuit Adidas filed against Under Armour and MapMyFitness, which asserted several of the same patents ('149, '858, '767) (Compl. ¶33). The prayer for relief seeks enhanced damages under 35 U.S.C. § 285 (Compl. p. 38).

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

A core issue will be one of definitional scope: can terms like "route path," which appear to originate in a context of pre-planned navigation and route generation, be construed to cover the live, ad-hoc tracking and streaming of a user's fitness activity, a central feature of the accused products?
A key evidentiary question will be one of technical implementation: do the accused products' "audio coaching" and feedback features function by associating cues with specific geographic "locations" as required by the claims, or are they triggered by other metrics such as time, distance intervals, or performance thresholds that may not align with the patented methods?
A third major question will concern pre-suit knowledge: did the widely publicized 2014 lawsuit against a direct competitor, asserting several of the same patents, put Defendants on notice of their potential infringement, thereby exposing them to the possibility of enhanced damages?