Peloton Interactive Inc v. ICON Health & Fitness Inc

1. Case Identification

• Case #: IPR2022-00029
• Patent #: 7,166,062
• Filed: October 13, 2021
• Petitioner(s): Peloton Interactive, Inc.
• Patent Owner(s): iFIT Inc. (f/k/a ICON Health & Fitness, Inc.)
• Challenged Claims: 1, 3-5, 8-11, 15-16, 21-23, 26-28, 30, 36, 38, 40, 45-46, and 48

2. Patent Overview

• Title: System For Interaction With Exercise Device
• Brief Description: The ’062 patent relates to a network-connected exercise device that can be controlled remotely by a user or a third party, such as a trainer. The system receives packetized signals over a network to synchronize the device's operating parameters with exercise programming and simulate a group workout environment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Studor - Claims 1, 3-5, 8-11, 15-16, 21-23, 26-28, 30, 36, 38, 40, 45-46, and 48 are obvious over Studor alone or in view of POSITA knowledge.

• Prior Art Relied Upon: Studor (Patent 6,152,856).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Studor discloses all limitations of the challenged claims. Studor teaches an interactive exercise system with exercise equipment (e.g., a bicycle) connected to a computer system, which serves as the user interface. The system can connect to the internet to receive media from a remote server for "communal" or "coached" exercise sessions, which implies a network interface as the claimed "communicating mechanism." Studor's microcontroller responds to terrain data from this media to dynamically control the equipment's resistance, satisfying the "controller" limitation. The terrain data delivered over the packet-based internet constitutes the claimed "packetized control signal."
  • Motivation to Combine (for §103 grounds): As an obviousness challenge based on a single reference, Petitioner's motivation argument focused on a Person of Ordinary Skill in the Art (POSITA) applying common knowledge to Studor's teachings. A POSITA would have been motivated to implement Studor’s disclosed internet-based "coached exercise regimes" using standard, packetized network protocols (like TCP/IP), as this was the conventional method for internet data transmission at the time.
  • Expectation of Success: A POSITA would have had a high expectation of success in using well-known internet protocols to transmit the control data disclosed by Studor to enable its remote functionality.
  • Key Aspects: Petitioner contended that the key claim limitation added during prosecution—receiving a "packetized control signal from a remote source"—is expressly suggested by Studor’s disclosure of receiving control data from a remote server over the internet.

Ground 2: Obviousness over Clem in view of Hickman - Claims 1, 3-5, 8-11, 15-16, 21-23, 26-28, 30, 36, 38, 40, 45-46, and 48 are obvious over Clem in view of Hickman or POSITA knowledge.

• Prior Art Relied Upon: Clem (Patent 6,053,844) and Hickman (Patent 6,059,692).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Clem discloses the core system of a network-connected treadmill that receives control signals from a remote website to adjust its operating parameters (speed, incline). Clem also teaches real-time, two-way audio and video communication with a live fitness expert at the remote website. This base system meets most limitations of the independent claims. Hickman was introduced primarily to teach the "diagnostic control" limitations of dependent claims 45 and 46. Hickman discloses an exercise system that performs diagnostic checks and downloads software updates from a remote computer to the local exercise apparatus.
  • Motivation to Combine: A POSITA would combine the teachings of Clem and Hickman because both references are in the same field of remotely controlled exercise systems and address the shared goal of creating a convenient and effective remote workout experience. A POSITA would have been motivated to integrate Hickman’s diagnostic and software update capabilities into Clem’s interactive live-training system to improve its performance, reliability, and functionality, as keeping software updated was a known benefit for any network-connected device.
  • Expectation of Success: A POSITA would have reasonably expected success in combining these systems, as adding software maintenance and diagnostic features (from Hickman) to a network-connected application (like Clem's) was a predictable and routine design choice.

4. Key Claim Construction Positions

• Petitioner argued that four claim terms should be construed as means-plus-function limitations under 35 U.S.C. §112, ¶ 6. These constructions were central to mapping the prior art to the claims.
• "communicating means" (claim 1): Petitioner proposed this term recites the function of receiving a packetized signal from a remote source and identified the corresponding structure in the specification as a "network interface or a modem."
• "means for controlling" (claim 1): Petitioner proposed this term recites the function of controlling the exercise mechanism's operating parameters in response to the packetized signal and identified the corresponding structure as a "controller."
• These constructions allowed Petitioner to argue that conventional components in Studor (e.g., its computer with network connectivity) and Clem (e.g., its system controller) performed the claimed functions and met the claim limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner presented arguments that discretionary denial would be inappropriate.
• §325(d) (Advanced Bionics): Petitioner argued that denial under §325(d) was not warranted because the Examiner did not substantively review the primary prior art references (Studor and Clem) during prosecution. The references were allegedly "buried" in a large Information Disclosure Statement filed after allowance.
• General Plastic Factors: Petitioner contended this was not an improper "follow-on" petition because it was filed in response to the Patent Owner asserting 46 new claims in a co-pending district court litigation, long after an initial, narrower IPR had been filed.
• Fintiv Factors: Petitioner argued that denial under Fintiv was unwarranted because the scheduled trial date in the parallel district court litigation (June 12, 2023) was well after the statutory deadline for the Board to issue a Final Written Decision, mitigating concerns about conflicting decisions or inefficient use of resources.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-5, 8-11, 15-16, 21-23, 26-28, 30, 36, 38, 40, 45-46, and 48 of the ’062 patent as unpatentable.