PTAB

IPR2023-00836

LifeCore Fitness Inc v. Woodway USA Inc

Title: Manually Operated Treadmills
Brief Description: The ’580 patent relates to manually operated treadmills featuring a running belt that follows a curved running surface. The invention includes a safety device, such as a one-way bearing assembly, configured to permit the running belt to move in only one direction for user safety and stability.

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 discloses the core elements of a manually powered treadmill with a curved running surface formed by a plurality of rollers supported by bearing rails (support arms). This combination satisfies the limitations of independent claims 1, 11, and 25 related to the frame, shafts, bearing rails, and curved running belt. Magid, in turn, discloses a "safety device" in the form of a one-way ratchet-and-pawl clutch that permits only unidirectional belt movement, directly corresponding to the safety device limitations.
- Motivation to Combine: A POSITA would combine Magid's safety clutch with Chickering's treadmill to solve the well-known safety issue of unexpected forward belt movement when a user steps onto a manual treadmill, particularly one with a curved surface. This modification would improve user stability and reduce the risk of falling, a recognized danger in the field.
- Expectation of Success: The combination involved applying a known solution (a one-way clutch) to a known problem (treadmill belt instability) in a predictable manner, yielding no unexpected results.

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 builds on the combination of Chickering and Magid. Petitioner contended that Sclater teaches the specific structural limitations of the dependent claims, which recite a "one-way bearing" comprising an inner ring, an outer ring, and a plurality of asymmetric sprags. Sclater is a technical sourcebook that explicitly illustrates and describes such sprag-type one-way bearing assemblies.
- Motivation to Combine: A POSITA would be motivated to substitute the ratchet-and-pawl clutch of Magid with the sprag-type one-way bearing taught by Sclater. Sclater explains that friction-type clutches like sprag bearings are quieter, better suited for higher-speed freewheeling, and offer more reliable engagement than ratchet mechanisms. This substitution represents a simple replacement of one known mechanical component with a known, superior alternative to improve performance and durability.
- Expectation of Success: Substituting one type of one-way clutch for another was a routine design choice for a POSITA seeking to improve noise and performance characteristics, with a high expectation of success.

Prior Art Relied Upon: Socwell (Patent 5,897,461) and Magid (Patent 5,538,489).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner presented this as an alternative to Ground 1, asserting that Socwell discloses a different embodiment of a manually powered treadmill with a curved running surface. Socwell teaches a curved deck supported by a frame and belt-securing assemblies with rollers that function as the claimed "bearing rails" having a "plurality of bearings." As in Ground 1, Magid provides the necessary disclosure for the "safety device" limitation with its one-way clutch.
- Motivation to Combine: The motivation is identical to that in Ground 1. A POSITA would add Magid's safety clutch to Socwell’s treadmill to prevent unexpected forward belt motion and enhance user safety, addressing a known industry problem with a known solution.
- Expectation of Success: Combining Magid's clutch with Socwell's treadmill was argued to be a straightforward and predictable modification that would have been obvious to a POSITA.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Chickering/Magid/Sclater (Ground 3) and Socwell/Magid/Sclater (Grounds 5-6), which relied on the same core teachings but incorporated arguments based on Petitioner’s proposed claim constructions.

"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 the patent owner's arguments during prosecution of a related patent, where a distinction was made between devices that merely resist motion and those that stop it.
"safety device": Petitioner proposed this term in claims 1, 11, and 25 should be construed as a means-plus-function term. The corresponding structure in the specification would be a one-way bearing assembly with inner/outer rings and sprags, or other disclosed alternatives like cam locking systems, thereby limiting the claim's scope to specific embodiments.
"shaft": Petitioner proposed construing "shaft" as "a rotating element used to transmit power from one part to another," arguing this functional definition is more appropriate in the context of the invention than a purely structural one.

Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation is in its early stages, with no trial date set and a median time-to-trial of over 45 months. Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the IPR is instituted, mitigating concerns of duplicative efforts.
Advanced Bionics Factors (§325(d)): Petitioner contended that denial is unwarranted because the Examiner did not properly consider the asserted prior art. Sclater was never before the Examiner, and other key references like Chickering, Socwell, and Magid, while cited on the patent's face, were never substantively applied against the claims. Petitioner further alleged the Examiner erred by allowing the claims after previously rejecting similar claims in a parent application that lacked a "rotatably coupled" bearing limitation.

Petitioner requests institution of inter partes review and cancellation of claims 1-12, 14, 15, 18, and 25 of the ’580 patent as unpatentable.