Peloton Interactive Inc v. ICON Health & Fitness Inc

1. Case Identification

• Case #: IPR2021-00342
• Patent #: 7,166,062
• Filed: December 18, 2020
• Petitioner(s): Peloton Interactive, Inc.
• Patent Owner(s): ICON Health & Fitness, Inc.
• Challenged Claims: 29 and 47

2. Patent Overview

• Title: Remotely Controlled Exercise Equipment
• Brief Description: The ’062 patent discloses systems and methods for an exercise device, such as a treadmill, that can be controlled both locally by a user and remotely via a communications network. The invention allows a third party, like a trainer, to send control signals to adjust the device's operating parameters during a workout.

3. Grounds for Unpatentability

Ground 1: Obviousness over Brewer and Baran - Claims 29 and 47 are obvious over Brewer in view of Baran.

• Prior Art Relied Upon: Brewer (Patent 5,645,509) and Baran (WO 85/03180).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Brewer disclosed all elements of the challenged claims except for the explicit packetization of control signals. Brewer taught an exercise system with a movable element (t treadmill belt), a user interface, and a "communicating mechanism" (a modem) to receive external control signals from a remote source. Brewer also disclosed a "fitness level select switch" that functions as a scaling control, allowing a user to proportionally adjust the difficulty of a received exercise program, thus meeting the limitation of claim 47. Baran was cited to supply the missing element, as it taught that modems of the era inherently operated in "packet modes" and handled data on a "packetized basis."
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to apply Baran's teaching of packetization to Brewer's modem. Packetization was a known technique for improving data transmission flexibility and speed, which would have been desirable for receiving real-time control signals for an exercise device. A POSITA would combine the references to apply a known technique (packetization) to a similar device (Brewer’s modem) to achieve a predictable result.
  • Expectation of Success: A POSITA would have had a high expectation of success because Brewer already included a modem for remote communication. Applying Baran's teaching that modems transmit packetized data was a straightforward implementation of a known technology for its intended purpose.

Ground 2: Obviousness over Studor - Claims 29 and 47 are obvious over Studor.

• Prior Art Relied Upon: Studor (Patent 6,152,856).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Studor, by itself, rendered the challenged claims obvious. Studor disclosed an interactive exercise system that connects to the Internet to allow users to participate in "communal" exercise sessions or download exercise courses from a remote server. Petitioner argued this system met all limitations of claim 29: an exercise mechanism with operating parameters (an exercise bike with adjustable resistance), a user interface (a computer system), and a controller (the computer processes course data to control resistance). The "communicating mechanism" was the computer's network interface, which receives terrain data (control signals) from a remote server over the Internet. Because the Internet is a packet-switched network, these control signals would inherently be packetized. For claim 47, Studor taught a "scaling control" by allowing the user to select a difficulty level (e.g., easy, realistic, hard) that applies a multiplier to the received terrain data, thereby proportionally changing the workout intensity.

4. Key Claim Construction Positions

• Petitioner argued that no terms required express construction but noted that the term "communicating mechanism" might be interpreted as a means-plus-function term under 35 U.S.C. §112.
• If construed as such, Petitioner identified the corresponding structure in the ’062 patent’s specification as a "network interface or modem" and the function as "receiving a packetized second signal from a remote source over a network." This construction aligns with the modem disclosed in Brewer and the network interface in Studor.

5. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial under both §325(d) and §314(a) (Fintiv) would be inappropriate.
• §325(d) (Prior Art Considered by Examiner): Petitioner contended that although Brewer and Studor were listed in an Information Disclosure Statement (IDS) during prosecution, they were never evaluated or used as the basis for a rejection. The asserted art was argued to be materially different from the art the examiner relied upon (Hickman), as Brewer and Studor explicitly teach receiving packetized remote control signals—the very feature the patent owner added to the claims to overcome the rejection over Hickman.
• §314(a) (Fintiv Factors): Petitioner asserted that the parallel district court litigation was in its earliest stages, with the complaint having been filed only two months prior to the petition and no trial date or significant deadlines set. Petitioner argued that these facts, combined with the strong merits of the petition, weighed heavily against exercising discretion to deny institution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 29 and 47 of the ’062 patent as unpatentable under 35 U.S.C. §103.