LifeCore Fitness Inc v. Woodway USA Inc

1. Case Identification

• Case #: IPR2023-00843
• Patent #: 10,561,884
• Filed: April 12, 2023
• Petitioner(s): Lifecore Fitness, Inc. d/b/a Assault Fitness
• Patent Owner(s): Woodway USA, Inc.
• Challenged Claims: 30-34, 37-54, 57, and 59

2. Patent Overview

• Title: Manually Operated Treadmill with Controlled Belt Motion
• Brief Description: The ’884 patent relates to manually operated treadmills featuring a running belt supported by a plurality of bearings that form a curved running surface. The invention includes a "safety device," disclosed as a one-way bearing assembly, designed to permit the running belt's motion in only one direction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Schonenberger, Socwell, Magid, and Sclater - Claims 30-34, 37-43, 45-50, 52-54, 57, and 59 are obvious over Schonenberger, Socwell, Magid, and Sclater.

• Prior Art Relied Upon: Schonenberger (Patent 4,614,337), Socwell (Patent 5,897,461), Magid (Patent 5,538,489), and Sclater (Mechanisms & Mechanical Devices Sourcebook, 2001).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schonenberger taught the fundamental elements of a manual treadmill, including a frame, front and rear shaft assemblies, and a running belt supported by rollers (bearings). Socwell taught a manual treadmill with a curved running surface, disclosing that this shape improves user safety by preventing falls and reduces impact on joints. Magid disclosed a one-way ratchet-and-pawl clutch as a "safety device" to prevent undesirable bidirectional belt movement. Sclater, a mechanical engineering reference, taught a sprag-type one-way bearing assembly as a known, superior alternative to ratchet-and-pawl clutches, disclosing an inner ring, outer ring, and sprags that create "interference" to prevent rotation in one direction.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the flat treadmill of Schonenberger with the curved running surface of Socwell to gain the known safety and ergonomic benefits. To further enhance safety by preventing unexpected forward belt motion, a POSITA would then incorporate the one-way clutch taught by Magid. Finally, a POSITA would replace Magid's noisy and less durable ratchet-and-pawl clutch with the quieter, more robust sprag-type bearing described in Sclater, as this was a well-known substitution to achieve predictable improvements in performance for applications like exercise equipment.
  • Expectation of Success: The combination involved applying known technical solutions to solve well-understood problems in treadmill design. Each modification would have yielded predictable results, leading to a high expectation of success.

Ground 2: Obviousness over Schonenberger, Socwell, Magid, Sclater, and Skowronski - Claims 44 and 51 are obvious over the combination of Ground 1 in view of Skowronski.

• Prior Art Relied Upon: Schonenberger, Socwell, Magid, Sclater, and Skowronski (Patent 6,923,746).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination asserted in Ground 1 to address claims 44 and 51, which required at least one of the running belt pulleys to be made of an electrically insulating material. Skowronski explicitly taught a treadmill with pulleys made from molded plastic, a known electrically insulating material.
  • Motivation to Combine: A POSITA would be motivated to substitute the metal pulleys of the base combination with the plastic pulleys taught by Skowronski. Skowronski explained this substitution yields predictable advantages, including lower weight, reduced manufacturing cost, and the ability to use larger diameter pulleys, which improves belt grip and allows for thicker, more shock-absorbent belts. This represented a simple substitution of one known material for another to obtain its known benefits.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the benefits of using plastic for treadmill pulleys were well-documented and the outcome was predictable.

Ground 4: Obviousness over Chickering, Magid, and Sclater - Claims 30-34, 37-39, 41, 45-49, 57, and 59 are obvious over Chickering in view of Magid and Sclater.

• Prior Art Relied Upon: Chickering (Patent 3,637,206), Magid (Patent 5,538,489), and Sclater (Mechanisms & Mechanical Devices Sourcebook, 2001).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative combination starting with Chickering, which already disclosed a manual treadmill with a curved running surface formed by a series of rollers. The teachings of Magid (a one-way ratchet clutch) and Sclater (a superior sprag-type bearing) were then applied to Chickering's base design to add the claimed "safety device."
  • Motivation to Combine: A POSITA would modify the curved treadmill in Chickering by adding the one-way clutch from Magid to address the known safety risk of the belt moving forward when a user steps onto the rear of the curved surface. Subsequently, for the same reasons of improved durability and quieter operation outlined in Ground 1, a POSITA would replace Magid’s ratchet mechanism with the sprag-type bearing taught by Sclater.
  • Expectation of Success: Combining a known safety feature with an existing treadmill design to solve a recognized problem was a straightforward modification with a predictable and successful outcome.

• Additional Grounds: Petitioner asserted Ground 3, an obviousness challenge to claims 30-34 and 37-59 over the same combination of Schonenberger, Socwell, Magid, and Sclater from Ground 1, but applied Petitioner’s proposed claim constructions.

4. Key Claim Construction Positions

• "substantially prevent[]": Petitioner proposed construing this term as "prevent any movement after allowing no or minimal movement." This construction was based on arguments made by the Patent Owner during prosecution to distinguish prior art, which Petitioner contended amounted to a disavowal of a broader scope.
• "safety device": Petitioner proposed this term be construed as "a device having two ring-shaped components." This construction was intended to align with the structure of the sprag-type one-way bearing disclosed in Sclater, which features an inner and outer ring.
• "shaft": Petitioner proposed construing "shaft" as "a rotating element used to transmit power from one part to another."

5. Arguments Regarding Discretionary Denial

• Fintiv Factors: Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigation was in its early stages, with no trial date set and a median time to trial in the district of 45.4 months. Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the IPR was instituted, mitigating concerns of inefficiency and conflicting outcomes.
• §325(d) Factors: Petitioner argued that denial under §325(d) was not warranted because the petition raised new arguments and combinations not considered during prosecution. Specifically, the Sclater reference was not before the Examiner, and the Examiner allegedly erred by not recognizing that the patent's lengthy "safety device" limitations merely described a conventional sprag-type bearing assembly, which Sclater taught.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 30-34, 37-54, 57, and 59 of the ’884 patent as unpatentable.