LifeCore Fitness Inc v. Woodway USA Inc

1. Case Identification

• Case #: IPR2023-00849
• Patent #: Patent 10,799,745
• Filed: April 13, 2023
• Petitioner(s): Lifecore Fitness, Inc. d/b/a Assault Fitness
• Patent Owner(s): Woodway USA, Inc.
• Challenged Claims: 1, 4, 7-12, 14, 17-18, and 20-27

2. Patent Overview

• Title: Treadmills and Mechanisms for Controlling Belt Motion
• Brief Description: The ’745 patent relates to manual, non-motorized treadmills. The disclosed technology features a running belt with a curved running surface supported by bearings and pulleys, and incorporates a "safety device," described as a one-way sprag-type bearing assembly, to permit belt rotation in only one direction.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 7-12, 14, 17-18, and 20-27 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 (a 2001 mechanical devices sourcebook).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Schonenberger taught a conventional flat-surface manual treadmill with basic components like a frame, rollers, and bearings. To create a safer and more ergonomic device, a person of ordinary skill in the art (POSA) would have modified Schonenberger's flat design with the curved running surface taught by Socwell. The combination of these two references allegedly disclosed the majority of the elements in the independent claims, including the frame, pulleys, bearings, and a running belt with a curved portion. However, this combination would still be susceptible to unexpected forward belt movement, creating a safety risk. To address this, a POSA would incorporate the one-way clutch mechanism taught by Magid, which prevents such bidirectional movement. Finally, a POSA would substitute the ratchet-and-pawl clutch of Magid with the superior sprag-type one-way bearing assembly described in Sclater. Petitioner argued Sclater’s sprag-type bearing, with its inner and outer races, directly read on the ’745 patent's "safety device" limitations, including a "first safety race element" and a "second safety race element" where one substantially surrounds the other.
  • Motivation to Combine: The motivation to combine Schonenberger and Socwell was to achieve the known benefits of a curved running surface, such as improved user safety (preventing users from falling off the back) and reduced joint impact. A POSA would then be motivated to add Magid's one-way clutch to the Schonenberger/Socwell treadmill to solve the known stability problem of unexpected forward belt motion. The final motivation was to replace Magid’s noisy and less durable ratchet-and-pawl clutch with the quieter, more robust, and commercially known sprag-type bearing from Sclater to obtain predictable improvements in performance and durability.
  • Expectation of Success: Petitioner contended that a POSA would have a reasonable expectation of success because the combination involved applying known solutions (curved surfaces, one-way clutches) to address known problems in the field of treadmills, resulting in a device with predictable characteristics.
  • Key Aspects: A central point was that the "safety device" limitations, which were added during prosecution to overcome prior art, were merely a verbose description of a standard, off-the-shelf sprag-type bearing assembly like that shown in Sclater. The Petitioner also presented an alternative version of this ground (Ground 2) asserting the same combination of references would render the claims obvious under its proposed claim constructions.

Ground 2: Claims 1, 4, 7-12, 14, 17-18, and 20-25 are obvious over Socwell, Magid, and Sclater

• Prior Art Relied Upon: Socwell (Patent 5,897,461), Magid (Patent 5,538,489), and Sclater (a 2001 mechanical devices sourcebook).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground began with Socwell as the primary reference, which already disclosed a manual treadmill with a curved running surface. Petitioner argued that while Socwell's design addressed the problem of users falling off the back, it did not solve the issue of the belt moving unexpectedly forward when a user steps onto the rear of the curved surface. The argument then mirrored the latter half of Ground 1: a POSA would incorporate Magid’s one-way ratchet clutch to add stability and prevent forward motion. Subsequently, a POSA would replace Magid’s inferior clutch with Sclater's superior sprag-type one-way bearing to achieve better performance. As in Ground 1, Sclater's bearing assembly was alleged to teach the specific "safety device" limitations of the challenged claims.
  • Motivation to Combine: The motivation was to improve the existing curved-deck treadmill design of Socwell by addressing a known, unsolved safety issue (unexpected forward belt movement). A POSA would have been motivated to implement a known solution (a one-way clutch from Magid) and then optimize that solution using a well-known, superior component (a sprag-type bearing from Sclater) for predictable benefits of reduced noise and increased durability.
  • Expectation of Success: Success would be expected, as it involved integrating a standard, commercially available safety component into an existing treadmill design to solve a recognized problem.

4. Key Claim Construction Positions

• "substantially prevent[]": Petitioner argued this term should be construed as "prevent any movement after allowing no or minimal movement." This narrower construction was based on alleged disavowal during the prosecution of a related patent, where the Patent Owner distinguished prior art by arguing for a more restrictive meaning than "generally though not necessarily entirely."
• "safety device": Petitioner proposed construing this term as a "device having two ring-shaped components." This construction was intended to align with the specific structure of the sprag-type bearing shown in Sclater and recited in the claims (i.e., first and second safety race elements).
• "shaft": Petitioner proposed construing "shaft" as "a rotating element used to transmit power from one part to another," arguing this reflects its functional role in the treadmill assembly.

5. Arguments Regarding Discretionary Denial

• Discretionary Denial under Fintiv: Petitioner argued strongly against discretionary denial, asserting that the parallel district court litigation was in its very early stages, with no trial date set and a median time-to-trial of over 45 months. Petitioner also stipulated that, if IPR is instituted, it would not pursue the same invalidity grounds in the district court, mitigating concerns of duplicative efforts.
• Discretionary Denial under §325(d): Petitioner argued that denial is not warranted because the prior art combination presented in the petition is not the same as, nor cumulative to, what the Examiner considered during prosecution. Specifically, the Examiner did not have the Sclater reference, which Petitioner contended is key to understanding the "safety device" limitations. Petitioner asserted the Examiner erred by failing to recognize that the claim language added to secure allowance was a verbose description of a conventional sprag-type bearing assembly.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 4, 7-12, 14, 17-18, and 20-27 of the ’745 patent as unpatentable.