DCT
2:18-cv-00993
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: 2:18-cv-00993, S.D. Cal., 02/08/2017
- Venue Allegations: Venue is alleged to be proper in the Southern District of California because the Defendants conduct business and have allegedly committed acts of infringement in the District, and because the Plaintiff resides and has suffered harm there.
- Core Dispute: Plaintiff alleges that Defendants’ exercise equipment, which features an "Active Status Light," infringes a patent related to monitoring the condition of electrical apparatuses by sensing current draw and providing a corresponding visual indication.
- Technical Context: The technology concerns diagnostic systems for motorized exercise equipment, such as treadmills, designed to provide an early warning of maintenance needs by monitoring electrical consumption, thereby aiming to prevent costly failures and improve safety.
- Key Procedural History: The complaint alleges a history of business dealings, including that Defendant Precor evaluated Plaintiff's "Treadmill Saver" product, which was marked "patent pending," before launching its own accused products. The complaint also includes a claim for correction of inventorship on a patent owned by Precor. Notably, while not mentioned in the complaint, an Inter Partes Review (IPR) proceeding (IPR2018-00085) was later instituted against the patent-in-suit, resulting in the cancellation of all claims (1-17) as of November 12, 2019. This post-filing event is dispositive of the infringement claim.
Case Timeline
| Date | Event |
|---|---|
| 2011-10-19 | Priority Date for U.S. Patent 8,884,553 |
| 2012-03-XX | Plaintiff introduces "Treadmill Saver" at IHRSA trade show |
| 2012-10-XX | Plaintiff meets with Precor to discuss the Treadmill Saver |
| 2013-04-11 | Precor allegedly installs and evaluates the Treadmill Saver |
| 2014-01-XX | Plaintiff installs Treadmill Savers at a 24 Hour Fitness gym |
| 2014-03-12 | Precor files provisional application leading to its '920 patent |
| 2014-05-15 | Precor issues press release for accused Experience Series treadmills |
| 2014-06-XX | Precor demonstrates accused treadmills to 24 Hour Fitness |
| 2014-07-29 | 24 Hour Fitness informs Plaintiff of its decision to purchase Precor treadmills |
| 2014-11-11 | U.S. Patent 8884553 Issues |
| 2014-11-19 | Plaintiff sends notice letter to Precor alleging infringement |
| 2016-08-30 | Precor's U.S. Patent 9,430,920 issues |
| 2017-02-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,884,553, “Current Monitor for Indicating Condition of Attached Electrical Apparatus,” issued November 11, 2014.
- The Invention Explained:
- Problem Addressed: The patent's background explains that as lubrication in electrical equipment like treadmills wears out, friction increases, causing the motor to draw more power (current) and generate excessive heat, which can lead to component failure, expensive repairs, and potential user injury (’553 Patent, col. 1:15-46).
- The Patented Solution: The invention is an external current monitoring device placed between the equipment's power cord and the wall outlet. This device measures the current being drawn and activates different colored light-emitting diodes (LEDs) to signal the machine's condition. For example, green indicates normal operation, amber suggests that lubrication will be needed soon, and red indicates a critical condition requiring immediate attention ('553 Patent, Abstract; col. 2:51-col. 3:2). The device also features a "latching mechanism" to retain and display the most critical status even after the machine is turned off, until the monitor is reset ('553 Patent, col. 2:25-34).
- Technical Importance: This approach provides a simple, at-a-glance visual diagnostic tool for non-technical staff in settings like health clubs, aiming to shift maintenance from a reactive to a preventative model ('553 Patent, col. 1:47-52).
- Key Claims at a Glance:
- The complaint asserts infringement of at least independent claim 1 ('553 Patent, col. 12:21-44; Compl. ¶38).
- The essential elements of independent claim 1 (as originally issued) include:
- An electrical circuit obtaining current from a power source for an electrical equipment.
- Comparing the obtained current with a first threshold and a second threshold.
- Activating a light emitting diode of a first color if the current is below the first threshold.
- Activating a light emitting diode of a second color if the current is between the first and second thresholds.
- Activating a light emitting diode of a third color if the current is above the second threshold.
- A latching mechanism that enables the color of the activated diode to be retained after the equipment stops being used.
- The complaint reserves the right to assert other claims ('553 Patent, col. 12:45-col. 14:29; Compl. ¶39).
III. The Accused Instrumentality
- Product Identification: Precor’s "Experience Series of treadmills" and "EFC Elliptical Cross-trainers" that incorporate "Active Status Light" and/or "Accurate Belt Wear Detection" technology (collectively, the "Accused Products") (Compl. ¶38).
- Functionality and Market Context:
- The complaint alleges the Accused Products include an integrated light system intended to indicate the operating status of the machine (Compl. ¶¶31, 32). An email quoted in the complaint describes this feature as a "blue light on the shroud that blinks to communicate issues similar to the green, yellow, and red of your unit" (Compl. ¶33). The complaint provides a product rendering of the 'Treadmill Saver,' showing three puck-shaped devices with glowing centers of different colors (orange, yellow, green) connected in a series (Compl. p. 5).
- The complaint alleges these products were part of a "redesign" marketed as a "breakthrough" and were sold in large numbers to major health club chains like 24 Hour Fitness, displacing potential sales of Plaintiff's product (Compl. ¶¶31, 33, 35).
IV. Analysis of Infringement Allegations
The complaint references a claim chart exhibit (Exhibit H) that was not attached to the publicly filed document. The following summary is based on the narrative allegations.
’553 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| comparing, using the electrical circuit, the obtained current with at least one of a first threshold and a second threshold | The Accused Products' "Active Status Light" technology necessarily monitors the machine's condition, which the patent teaches is correlated with current draw. | ¶¶25, 38 | col. 2:5-7 |
| activating one or more light emitting diodes of a first color... a second color... a third color | The Accused Products feature an "Active Status Light" described as a "blue light on the shroud that blinks to communicate issues similar to the green, yellow, and red of your unit." | ¶¶31, 33 | col. 2:14-19 |
| 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. | col. 2:25-30 |
- Identified Points of Contention:
- Scope Questions: A primary dispute may concern the "first color," "second color," and "third color" limitations. The court would have to determine if a single "blue light that blinks" in different ways, as alleged in the complaint (Compl. ¶33), can meet claim limitations that the patent specification consistently describes using distinct hues (green, amber/yellow, red) ('553 Patent, Abstract).
- Technical Questions: The complaint does not specify how the accused "Active Status Light" functions after the treadmill is powered down. A key evidentiary question will be whether the accused system includes a "latching mechanism" that "retains" the status color after use, as required by claim 1.
V. Key Claim Terms for Construction
- The Term: "a first color," "a second color," "a third color"
- Context and Importance: The interpretation of "color" is central to the infringement analysis. If "color" is construed to mean distinct hues (e.g., green, blue, red), then an allegation that the accused product uses only a single "blue light that blinks" (Compl. ¶33) may not support a finding of literal infringement. Practitioners may focus on this term because the patent's support appears to be for distinct hues, while the accused product allegedly uses a single hue.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves use the general term "color" without expressly limiting it to different hues. A party could argue that different visual states (e.g., solid blue vs. slow-blinking blue vs. fast-blinking blue) constitute different "colors" in the context of a visual indicator system.
- Evidence for a Narrower Interpretation: The patent specification, including the abstract and detailed description, consistently uses "green LEDs," "amber/yellow LEDs," and "red LEDs" as the exemplary embodiment, strongly suggesting that "color" refers to different spectral hues ('553 Patent, Abstract; col. 2:63-col. 3:2). This repeated and consistent description of specific, different hues may be used to argue for a narrower construction limited to distinct hues.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating Precor instructs and promotes the use of the Accused Products (Compl. ¶40). It also pleads contributory infringement, alleging the "Active Status Light" technology is "especially made or adapted" for infringement and has no "substantially non-infringing uses" (Compl. ¶41).
- Willful Infringement: The complaint alleges that Precor had pre-suit knowledge of the technology and the pending patent application through meetings with the Plaintiff and by evaluating Plaintiff's "Treadmill Saver" product in 2012 and 2013 (Compl. ¶¶23-24). It further alleges Precor received a specific notice letter of infringement on November 19, 2014, shortly after the '553 patent issued, and continued to sell the accused products without change (Compl. ¶¶44-45).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Post-Filing IPR: The most significant issue, arising after the complaint was filed, is the cancellation of all claims of the '553 patent in a 2019 IPR proceeding. This event, external to the complaint's allegations, is dispositive and would terminate the infringement claim.
- Definitional Scope: Assuming the claims were still valid, a core issue would be one of claim construction: can the term "color," as used in claim 1, be construed to cover different blinking patterns of a single-hued light, as allegedly used in the accused system, or is it limited to the distinct hues (green, yellow, red) described throughout the patent specification?
- Evidentiary Sufficiency: A key factual question would be one of operative functionality: does the accused "Active Status Light" possess the "latching mechanism" required by claim 1, which retains the machine's status indicator even after the equipment is powered down? The complaint does not allege specific facts to support this element.