Peloton Interactive Inc v. ICON Health & Fitness Inc

1. Case Identification

• Case #: IPR2021-01597
• Patent #: 10,293,211
• Filed: October 1, 2021
• Petitioner(s): Peloton Interactive, Inc.
• Patent Owner(s): ICON Health & Fitness, Inc. (d/b/a iFIT Inc.)
• Challenged Claims: 1, 4-9, 11-14, and 16-20

2. Patent Overview

• Title: Coordinated Weight Selection
• Brief Description: The ’211 patent discloses an exercise system, such as a treadmill, that incorporates a free weight assembly. The system includes a processor and a display screen to guide a user through a programmed workout that combines aerobic exercise with anaerobic free weight lifting portions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rocker in view of Shea - Claims 1, 4-9, 11-14, and 16-20 are obvious over Rocker, alone or in view of Shea.

• Prior Art Relied Upon: Rocker (Application # 2006/0135322) and Shea (Patent 7,056,265).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rocker disclosed the core physical combination claimed in the ’211 patent: an aerobic exercise machine (treadmill) with an integrated free weight cradle, a display, and speakers for a "coaching appliance." Rocker taught programmed workouts with both aerobic and anaerobic (strength) portions. However, Petitioner contended Rocker lacked the more sophisticated processor logic for dynamically determining exercise timing. Shea allegedly supplied this missing element by disclosing a computer-based exercise system with a processor that determines when to perform specific exercises (including free weights) based on a programmed workout, which could be timed or triggered by physiological data like heart rate. The combination of Rocker's hardware setup with Shea's intelligent workout programming allegedly rendered the claims obvious.
  • Motivation to Combine (for §103 grounds): Petitioner asserted a person of ordinary skill in the art (POSITA) would combine these references to improve upon Rocker's more basic system. A POSITA would have been motivated to implement Rocker's integrated machine with Shea's advanced features—such as dynamically altering exercise parameters based on user performance or physiological feedback—to create a more effective, safer, and commercially desirable product. Both references are in the same field of computer-guided exercise systems.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because combining known software control features (from Shea) with a known hardware configuration (from Rocker) was a predictable integration of existing technologies.

Ground 2: Obviousness over Shea in view of Rocker - Claims 1, 4-9, 11-14, and 16-20 are obvious over Shea in view of Rocker.

• Prior Art Relied Upon: Shea (Patent 7,056,265) and Rocker (Application # 2006/0135322).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented the inverse combination of Ground 1. Petitioner argued Shea taught the core intelligent system: a stationary bicycle with a display, processor, and programmed workouts that guided a user through various exercises, including aerobic and free weight portions. However, Shea's system contemplated using different exercise terminals and did not disclose an integrated free weight cradle on the bicycle. Rocker allegedly supplied this missing physical element, as it explicitly taught incorporating a free weight cradle onto an aerobic exercise machine to allow for seamless transitions between workout types.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Rocker's cradle with Shea's system to create a single, integrated apparatus. This would improve upon Shea by eliminating the inconvenience of switching between different exercise terminals, allowing for a more efficient workout where the user could quickly transition between cycling and weightlifting. Such modifications were allegedly commonplace in the industry by the patent's priority date.
  • Expectation of Success (for §103 grounds): Petitioner argued success was expected, as the modification involved the simple and predictable mechanical addition of a known component (a weight cradle, per Rocker) to an existing exercise machine (Shea's bicycle).

• Additional Grounds: Petitioner asserted two additional obviousness grounds (Grounds II and IV) that were variations of the primary combinations. These grounds challenged claim 10, which requires the display to indicate a next type of lift. To the Rocker/Shea combination, Petitioner added Piggins (Application # 2009/0017997), which disclosed a user interface that displayed both the current and next exercise in a workout sequence. Petitioner argued it was obvious to add this user-friendly feature from Piggins to provide the user with advance notice of the next lift.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the Patent Office had not previously conducted a meaningful evaluation of the asserted prior art. Petitioner alleged that the Patent Owner "buried the Examiner" with nearly 5,000 references in voluminous Information Disclosure Statements (IDSs) during prosecution, leading the Examiner to overlook the specific teachings of Rocker and Shea.
• Petitioner also contended that denial under Fintiv was unwarranted. It argued that the parallel district court litigation was at an early stage, with no substantive rulings made, and that the Board’s Final Written Decision (FWD) in the IPR would issue before the scheduled trial date, thus weighing against denial.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 4-9, 11-14, and 16-20 of the ’211 patent as unpatentable.