PTAB

IPR2023-00836

LifeCore Fitness Inc v. Woodway USA Inc

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1. Case Identification

2. Patent Overview

  • Title: Manually Operated Treadmill with Motion Control
  • Brief Description: The ’580 patent relates to manually operated, self-propelled treadmills. The core technology involves a running belt on a curved running surface, supported by bearing rails, and including a safety device to control the belt's motion to a single direction.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 10-11, 14, 18, and 25 are obvious over Chickering in view of Magid.

  • Prior Art Relied Upon: Chickering (Patent 3,637,206) and Magid (Patent 5,538,489).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chickering taught a manually powered treadmill with a frame, front and rear shafts, and a running belt following a curved running surface defined by rollers mounted on support arms (the claimed "bearing rails having a plurality of bearings"). To meet the "safety device" limitation, Petitioner cited Magid, which disclosed a unidirectional control means, specifically a one-way ratchet-and-pawl clutch, coupled to a shaft to permit belt movement in only one direction and prevent it in the other.
    • Motivation to Combine: Petitioner asserted that both references are from the same field of manual exercise treadmills. A person of ordinary skill in the art (POSITA) would have recognized the known safety hazard of a free-moving treadmill belt, where a user mounting the device could cause unexpected belt motion and lose their balance. A POSITA would combine Magid's well-known one-way clutch safety feature with Chickering's curved treadmill design to solve this known problem and improve user safety.
    • Expectation of Success: The combination was presented as a simple application of a known safety device (a one-way clutch) to a known apparatus (a manual treadmill), yielding the predictable result of unidirectional belt movement.

Ground 2: Claims 6-9 and 12 are obvious over Chickering and Magid in view of Sclater.

  • Prior Art Relied Upon: Chickering (Patent 3,637,206), Magid (Patent 5,538,489), and Sclater (Mechanisms & Mechanical Devices Sourcebook, 3rd Ed., 2001).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1, adding Sclater to teach the specific limitations of the dependent claims related to a "one-way bearing." Sclater, a technical sourcebook, disclosed sprag-type one-way bearings as an alternative to ratchet-and-pawl clutches. Petitioner mapped Sclater’s disclosure of sprags disposed between an inner and outer ring to the limitations of claim 7. Sclater also taught the asymmetric shape of sprags that allows freewheeling in one direction and locking in the other, and the use of key/keyway interfaces to connect such bearings to a shaft, mapping to claims 8 and 9.
    • Motivation to Combine: Petitioner argued that a POSITA, having decided to implement a safety clutch as motivated in Ground 1, would have been motivated to substitute the sprag-type bearing taught by Sclater for the ratchet-and-pawl clutch of Magid. The motivation was to achieve the known advantages of sprag clutches, which Sclater taught are quieter, more suitable for high-speed freewheeling, and offer more reliable engagement than ratchet mechanisms.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in substituting one known type of one-way clutch for another to gain its well-documented benefits in a standard mechanical application like a treadmill.

Ground 3: Claims 1-5, 10-11, 14, 15, 18, and 25 are obvious over Socwell in view of Magid.

  • Prior Art Relied Upon: Socwell (Patent 5,897,461) and Magid (Patent 5,538,489).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative to Ground 1, substituting Socwell as the primary reference. Petitioner argued Socwell disclosed all elements of the independent claims except the safety device. Socwell taught a manual treadmill with a curved running surface, but one formed by a curved deck supported by side rollers, which Petitioner asserted constituted the claimed "bearing rails having a plurality of bearings." As in Ground 1, Magid was relied upon for its disclosure of a one-way clutch safety device.
    • Motivation to Combine: The rationale was identical to that of Ground 1. A POSA would have been motivated to enhance the safety of Socwell's curved treadmill by incorporating the known one-way clutch from Magid to prevent dangerous, unexpected forward belt motion when a user steps on the rear of the curved surface.
    • Expectation of Success: As with the Chickering combination, adding Magid's clutch to Socwell's treadmill was argued to be a straightforward combination of known elements to achieve a predictable safety improvement.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Chickering, Magid, and Sclater against a broader set of claims (Ground 3) and combinations of Socwell, Magid, and Sclater (Grounds 5 and 6), but relied on the same core mapping and motivational arguments.

4. Key Claim Construction Positions

  • "safety device": Petitioner argued this term in claims 1, 11, and 25 should be construed as a means-plus-function term under §112(f). The function is "substantially preventing rotation" in one direction while permitting it in another. The corresponding structure disclosed in the ’580 patent was identified as a one-way bearing assembly with an inner ring, outer ring, and sprags, or the other disclosed alternatives (e.g., cam locking systems, taper locks). This construction is central to the grounds relying on Sclater.
  • "substantially prevent[]": Petitioner argued this term should be construed to mean "prevent any movement after allowing no or minimal movement." This construction was based on arguments made by the Patent Owner during prosecution of a related patent to distinguish prior art that merely resisted, but did not stop, movement.
  • "shaft": Petitioner proposed construing "shaft" as "a rotating element used to transmit power from one part to another," arguing this is more precise than the Patent Owner's proposed broader construction and is consistent with the function of the front and rear rollers in the prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigation was in its early stages with no trial date set, and the median time to trial in that district was over a year beyond the projected FWD date. Petitioner also stipulated that it would not pursue in the litigation any ground on which IPR is instituted.
  • Petitioner also argued against denial under §325(d) and Advanced Bionics, contending that the Examiner made material errors during prosecution. Specifically, Petitioner asserted that (1) Sclater was new prior art that had not been considered; (2) the Examiner did not apply other cited references (Chickering, Socwell) that were highly material; and (3) the Examiner inconsistently allowed claims with "bearing rails" after having required a more specific "rotatably coupled" limitation to overcome prior art in the prosecution of the parent ’169 patent.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-12, 14, 15, 18, and 25 of Patent 9,039,580 as unpatentable.