DCT
1:22-cv-00082
Nike Inc v. Lululemon USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NIKE, Inc. (Oregon)
- Defendant: Lululemon Athletica Inc. (Delaware) and Curiouser Products Inc. d/b/a Mirror (Delaware)
- Plaintiff’s Counsel: Arnold & Porter Kaye Scholer LLP
- Case Identification: 1:22-cv-00082, S.D.N.Y., 01/05/2022
- Venue Allegations: Venue is alleged to be proper based on Lululemon Athletica maintaining a regular and established place of business and committing acts of infringement in the district, and on MIRROR maintaining its headquarters and a regular and established place of business and committing acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Mirror Home Gym and its accompanying mobile applications infringe six patents related to interactive and personalized digital fitness technology.
- Technical Context: The dispute is in the field of connected fitness, a market segment that combines physical exercise equipment with digital tracking, social networking, and real-time performance feedback.
- Key Procedural History: The complaint alleges that Nike provided Lululemon with notice of the asserted patents on November 3, 2021, and that Lululemon refused to cease its allegedly infringing activities. The complaint also alleges that U.S. Patent No. 10,188,930 was cited during the prosecution of patents owned by MIRROR, which may be relevant to the allegation of willful infringement. Subsequent to the complaint's filing, inter partes review (IPR) proceedings were initiated against at least four of the asserted patents, resulting in the cancellation of the specific exemplary claims asserted in the complaint for those patents (U.S. Patent Nos. 9,278,256; 9,259,615; 10,188,930; and 10,923,225). These cancellations raise significant questions about the viability of the infringement counts associated with those patents.
Case Timeline
| Date | Event |
|---|---|
| 2006-09-07 | ’225 Patent Priority Date |
| 2010-08-09 | ’220 Patent Priority Date |
| 2011-01-14 | ’413 Patent Priority Date |
| 2011-11-01 | ’615 Patent Priority Date |
| 2011-12-21 | ’256 Patent Priority Date |
| 2012-06-04 | ’930 Patent Priority Date |
| 2013-12-31 | ’413 Patent Issued |
| 2016-02-16 | ’615 Patent Issued |
| 2016-03-08 | ’256 Patent Issued |
| 2019-01-29 | ’930 Patent Issued |
| 2019-03-19 | ’220 Patent Issued |
| 2021-02-16 | ’225 Patent Issued |
| 2021-11-03 | Nike notice letter sent to Lululemon |
| 2022-01-05 | Complaint Filing Date |
| 2022-11-09 | IPR filed against ’256 Patent |
| 2023-01-03 | IPR filed against ’615 Patent |
| 2023-01-03 | IPR filed against ’225 Patent |
| 2023-01-04 | IPR filed against ’930 Patent |
| 2024-08-19 | IPR Certificate Issued for ’256 Patent |
| 2024-09-11 | IPR Certificate Issued for ’225 Patent |
| 2024-10-10 | IPR Certificate Issued for ’615 Patent |
| 2024-10-10 | IPR Certificate Issued for ’930 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,620,413 - "Adaptive Watch"
- Patent Identification: U.S. Patent No. 8,620,413, titled "Adaptive Watch", issued on December 31, 2013.
The Invention Explained
- Problem Addressed: The patent describes the difficulty for athletes in using conventional fitness monitors, which often require them to manually calculate their own heart rate zones and use fixed, non-configurable displays for information (’413 Patent, col. 1:45-2:44).
- The Patented Solution: The invention is an apparatus (like a watch) that guides a user through a multi-stage exercise test with varying levels of exertion. Based on heart rate measurements taken during this test, the apparatus automatically determines and establishes personalized heart rate zones for the user. It then prompts the user to exercise within a specific, determined zone (’413 Patent, col. 15:1-16:48, FIG. 8).
- Technical Importance: The technology provides a method for creating adaptive, personalized workout parameters based on an individual's real-time physiological response, rather than relying on generic, age-based formulas (’413 Patent, col. 15:1-16:48).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶46).
- The essential elements of independent claim 1 are:
- An apparatus comprising a processor and a memory storing instructions that cause the apparatus to:
- prompt a user to exercise at a plurality of successive exertion levels, wherein an exertion level is based on a level of physical fitness of a user;
- determine a plurality of heart rate zones based on first heart rate measurements received from a sensor while the user exercises at the plurality of successive exertion levels;
- generate a prompt instructing a user to exercise while maintaining heart rate within a particular one of the plurality of heart rate zones;
- process second heart rate measurements received from the sensor subsequent to generating the prompt; and
- determine whether the second heart rate measurements are within the particular heart rate zone.
- The complaint reserves the right to assert other claims (Compl. ¶45).
U.S. Patent No. 9,278,256 - "Interactive Athletic Equipment System"
- Patent Identification: U.S. Patent No. 9,278,256, titled "Interactive Athletic Equipment System", issued on March 8, 2016.
The Invention Explained
- Problem Addressed: The invention addresses the need for systems that allow users to engage in direct, real-time athletic competition with other users who are in different physical locations (’256 Patent, col. 42:12-42).
- The Patented Solution: The patent describes a method for facilitating a remote athletic challenge. The system receives a prompt inviting a user to a competition, uses sensors to determine the athletic activity of both the first user and a remote second user, compares their activity levels, and provides a real-time interface to both users that indicates the status of the challenge (’256 Patent, Abstract; col. 42:12-42).
- Technical Importance: This technology enables the integration of social and competitive gameplay into fitness applications, fostering user engagement by connecting athletes remotely (’256 Patent, col. 4:5-14).
Key Claims at a Glance
- The complaint asserts independent claim 11 (Compl. ¶57). (Note: This claim was subsequently cancelled in an IPR proceeding).
- The essential elements of independent claim 11 are:
- A method comprising:
- receiving a prompt inviting a first user to participate in a challenge between the first user at a first location and a second user at a remote second location;
- determining an amount of athletic activity performed by the first user based on sensor data from a sensor worn on an appendage of the first user;
- receiving data from a second sensor indicative of an amount of athletic activity performed by the second user;
- determining whether the challenge has been met by the first user based on a comparison of the athletic activity between the users; and
- continuously generating and simultaneously communicating in real-time to both users an interface indicating whether the challenge has been met.
- The complaint reserves the right to assert other claims (Compl. ¶56).
U.S. Patent No. 9,259,615 - "Wearable Device Assembly Having Athletic Functionality and Streak Tracking"
- Patent Identification: U.S. Patent No. 9,259,615, titled "Wearable Device Assembly Having Athletic Functionality and Streak Tracking", issued February 16, 2016.
- Technology Synopsis: The patent discloses a method for motivating users by monitoring their activity, determining whether they have exceeded a predefined activity goal for a consecutive number of time periods (a "streak"), and presenting a "streak reward" to the user upon achieving this streak (’615 Patent, Abstract).
- Asserted Claims: The complaint asserts claim 1, which was subsequently cancelled in an IPR proceeding (Compl. ¶68).
- Accused Features: The complaint alleges the Mirror System practices this method by receiving athletic data from a user, setting activity goals, determining if those goals are met over consecutive periods, and presenting rewards (Compl. ¶69).
U.S. Patent No. 10,188,930 - "Combinatory Score Having a Fitness Sub-Score and an Athleticism Sub-Score"
- Patent Identification: U.S. Patent No. 10,188,930, titled "Combinatory Score Having a Fitness Sub-Score and an Athleticism Sub-Score", issued January 29, 2019.
- Technology Synopsis: The patent describes a computer-implemented method for generating a composite score to quantify a user's athletic performance. The score is calculated from sensor data and comprises a "fitness sub-score" (based on endurance, flexibility, strength) and a separate "athleticism sub-score" (based on speed, agility, power, balance, etc.) (’930 Patent, Abstract).
- Asserted Claims: The complaint asserts claim 1, which was subsequently cancelled in an IPR proceeding (Compl. ¶79).
- Accused Features: The complaint alleges the Mirror System performs the claimed method by providing instructions, receiving sensor data, and calculating a combinatory fitness-athleticism score composed of the specified sub-scores (Compl. ¶80).
U.S. Patent No. 10,232,220 - "Monitoring Fitness Using a Mobile Device"
- Patent Identification: U.S. Patent No. 10,232,220, titled "Monitoring Fitness Using a Mobile Device", issued March 19, 2019.
- Technology Synopsis: The patent discloses an apparatus that records a user's athletic activity and allows the user to select a sharing option. In response to the selection, the apparatus transmits workout information associated with the activity to a "network page of a social networking site" where it is viewable by other users (’220 Patent, Abstract).
- Asserted Claims: The complaint asserts claim 11 (Compl. ¶90).
- Accused Features: The complaint alleges the Mirror System infringes by providing an apparatus that records athletic activity and allows users to share workout information on social networks (Compl. ¶91).
U.S. Patent No. 10,923,225 - "Athletic Performance Sensing and/or Tracking Systems and Methods"
- Patent Identification: U.S. Patent No. 10,923,225, titled "Athletic Performance Sensing and/or Tracking Systems and Methods", issued February 16, 2021.
- Technology Synopsis: The patent describes a method where a sensor device establishes communication with a piece of workout equipment. The sensor then transmits both operational data (to control a function of the equipment) and activity data (corresponding to a user's performance) to the workout equipment, which is configured to display the activity data (’225 Patent, Abstract).
- Asserted Claims: The complaint asserts claim 1, which was subsequently cancelled in an IPR proceeding (Compl. ¶101).
- Accused Features: The complaint alleges the Mirror System performs this method by using a sensor device to communicate with and transmit data to workout equipment for control and display purposes (Compl. ¶102).
III. The Accused Instrumentality
Product Identification
- The accused products are "The Mirror Home Gym and accompanying mobile applications," collectively referred to as the "Mirror System" (Compl. ¶14, ¶37).
Functionality and Market Context
- The Mirror System is an interactive home fitness product consisting of a wall-mounted reflective display (the "Mirror") and a mobile application (Compl. ¶14). The complaint includes an image showing the physical Mirror displaying a workout class and the accompanying mobile application interface for selecting classes (Compl. p. 6). The system allows users to stream live and on-demand fitness classes, receive personalized instruction, and track performance metrics. Lululemon sells the Mirror System through its e-commerce websites and retail stores (Compl. ¶38). The complaint alleges the Mirror System incorporates features for setting personalized workout zones, competing with other users, tracking activity streaks, calculating performance scores, and sharing results on social networks, thereby implicating the technologies of the asserted patents (Compl. ¶¶47, 58, 69, 80, 91, 102).
IV. Analysis of Infringement Allegations
’413 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus comprising: a processor; and a memory storing instructions that, when executed by the processor, cause the apparatus at least to: | The Mirror System includes a processor and memory storing instructions. | ¶47 | col. 2:20-24 |
| prompt a user to exercise at a plurality of successive exertion levels, wherein an exertion level is based on a level of physical fitness of a user; | The Mirror System prompts a user to exercise at various exertion levels based on their fitness. | ¶47 | col. 16:1-5 |
| determine a plurality of heart rate zones based on first heart rate measurements received from a sensor while the user exercises at the plurality of successive exertion levels; | The Mirror System determines heart rate zones from sensor measurements taken during exercise. | ¶47 | col. 16:6-10 |
| generate a prompt instructing a user to exercise while maintaining heart rate within a particular one of the plurality of heart rate zones; | The Mirror System prompts the user to exercise while maintaining a heart rate within a specific zone. | ¶47 | col. 16:11-14 |
| process second heart rate measurements received from the sensor subsequent to generating the prompt; | The Mirror System processes subsequent heart rate measurements from the sensor. | ¶47 | col. 16:15-17 |
| and determine whether the second heart rate measurements are within the particular heart rate zone. | The Mirror System determines if the user's heart rate is within the particular zone. | ¶47 | col. 16:18-20 |
Identified Points of Contention
- Technical Questions: A primary question may be how the Mirror System "determine[s] a plurality of heart rate zones." The complaint alleges this is based on measurements taken "while the user exercises at the plurality of successive exertion levels," as required by the claim (Compl. ¶47). The analysis will turn on whether the accused system performs this specific, dynamic calibration process, or if it instead uses pre-set, generic zones based on user-inputted age or a fixed percentage of maximum heart rate, which may not meet the claim limitation.
- Scope Questions: The construction of "exertion level...based on a level of physical fitness of a user" may be a point of dispute. The question for the court could be whether selecting a workout class of a certain difficulty level in the Mirror app constitutes establishing an exertion level in the manner required by the patent.
’256 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method comprising: receiving a prompt inviting a first user to participate in a challenge, wherein the challenge includes a competition between the first user performing athletic activities at a first location and a second user performing athletic activities at a second location different to, and remote from, the first location; | The Mirror System provides prompts for users to participate in competitive challenges against other remote users. | ¶58 | col. 42:13-19 |
| determining an amount of athletic activity performed by the first user based on sensor data received from a sensor worn on an appendage of the first user; | The Mirror System determines a user's athletic activity amount based on data from a sensor worn on an appendage. | ¶58 | col. 42:20-23 |
| and receiving data from a second sensor indicative of an amount of athletic activity performed by the second user; | The Mirror System receives data from the remote user's sensor. | ¶58 | col. 42:24-26 |
| determining whether the challenge has been met by the first user based on a comparison of the amount of athletic activity performed using the first user to the amount of athletic activity performed by the second user; | The Mirror System determines if a challenge has been met by comparing the athletic activity of the two users. | ¶58 | col. 42:27-31 |
| and continuously generating and simultaneously communicating in real-time to the first user at the first location and the second user at the second location, an interface indicating whether the challenge has been met. | The Mirror System generates and communicates a real-time interface to both users indicating the challenge status. | ¶58 | col. 42:32-37 |
Identified Points of Contention
- Validity: The most significant point of contention is that the asserted exemplary claim, claim 11, was cancelled during an inter partes review proceeding subsequent to the filing of the complaint. This raises the question of whether the infringement count based on this patent can proceed.
- Scope Questions: Should the claim survive, a potential dispute may arise over the term "sensor worn on an appendage." The infringement analysis would need to determine if the sensors used with the Mirror System (e.g., chest-strap heart rate monitors) qualify as being worn on an "appendage," a term that may be construed to mean only limbs.
V. Key Claim Terms for Construction
For the ’413 Patent
- The Term: "determine a plurality of heart rate zones based on first heart rate measurements received from a sensor while the user exercises at the plurality of successive exertion levels"
- Context and Importance: This term is central to the invention, as it describes the method of personalized calibration. The infringement analysis will likely depend on whether the Mirror System’s method of assigning heart rate zones is equivalent to the patented method of dynamically determining them based on a multi-stage test. Practitioners may focus on this term because it distinguishes a dynamic, feedback-based system from one using static, formulaic zones.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not explicitly recite a specific multi-step "test" but rather a process of determining zones based on measurements from successive exertion levels.
- Evidence for a Narrower Interpretation: The specification describes a detailed "zone test" process where the system guides the user through easy, medium, and hard exercise periods to establish specific zone limits (’413 Patent, col. 15:1-16:48, FIG. 8). A party may argue the claim should be construed as being limited to this disclosed embodiment.
For the ’220 Patent
- The Term: "a network page of a social networking site"
- Context and Importance: This term defines the destination for the shared workout data. The scope of "social networking site" will be critical. Practitioners may focus on this term to determine if sharing to proprietary platforms or within the Mirror ecosystem itself, rather than to third-party sites like Facebook or X (formerly Twitter), falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly limited in the claim itself, potentially allowing it to cover a wide range of online platforms where users can interact and view each other's content.
- Evidence for a Narrower Interpretation: The specification discusses sharing through "a social networking or other community site" and provides examples of users interacting with "friends and family," which might suggest a platform with broad, user-defined social connections rather than a closed, product-specific community (’220 Patent, col. 2:63-3:2).
VI. Other Allegations
Indirect Infringement
- For each asserted patent, the complaint alleges both induced and contributory infringement. The allegations are based on Lululemon’s marketing materials, user manuals, and websites, which allegedly instruct and encourage end-users to use the Mirror System in an infringing manner (e.g., Compl. ¶¶48-49, 59-60). The complaint further alleges the Mirror System is a material part of the inventions, is not a staple article of commerce, and is sold by Lululemon knowing it is especially adapted for infringement (e.g., Compl. ¶49, ¶60).
Willful Infringement
- The complaint alleges willful infringement for all asserted patents, based primarily on Lululemon's alleged knowledge of the patents since at least the date of Nike's notice letter on November 3, 2021 (e.g., Compl. ¶51, ¶62). For the ’930 Patent, willfulness is further supported by the allegation that the patent was cited during the prosecution of MIRROR’s own patents, suggesting earlier knowledge (Compl. ¶84).
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of Post-Filing IPRs: The central issue for at least four of the six asserted patents is the cancellation of the specific exemplary claims asserted in the complaint. A primary question will be how the parties and the court will proceed on these counts, which now appear to rely on invalid claims. This may lead to motions to dismiss or amend the complaint to assert any surviving claims.
- Technical Equivalence: For the patents with surviving asserted claims (e.g., the ’413 and ’220 Patents), a key question will be one of functional and technical equivalence. Does the Mirror System’s method of assigning workout parameters perform the specific, dynamic calibration process required by the ’413 Patent, or does it use a technically distinct, non-infringing method? Similarly, does its social sharing functionality operate in the specific manner claimed by the ’220 Patent?
- Willfulness and Damages: Should infringement be found on any claim, a key question will concern willfulness, particularly for the ’930 Patent. The allegation that Lululemon had pre-suit knowledge from its own patent prosecution activities could significantly influence a potential damages award.