LifeCore Fitness Inc v. Woodway USA Inc

1. Case Identification

• Case #: IPR2023-00849
• 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: Treadmill with Curved Running Surface
• Brief Description: The ’745 patent discloses manual treadmills with mechanisms to control the motion of the running belt. The core technology involves a treadmill with a curved running surface and a "safety device," described as a one-way sprag-type bearing assembly, which permits the running belt to rotate in only one direction for user safety.

3. Grounds for Unpatentability

Ground 1: Obviousness over Schonenberger, Socwell, Magid, and Sclater - Claims 1, 4, 7-12, 14, 17-18, and 20-27 are obvious over Schonenberger in view of 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, Third Ed. (McGraw-Hill 2001)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the challenged claims are an obvious combination of known elements. Schonenberger was used as a base reference disclosing a manual treadmill with a flat running surface supported by rollers (bearings) and front/rear pulleys. Socwell was cited for its teaching of a manual treadmill with a curved running surface, which improves user safety by preventing falls off the back and reduces joint impact. Magid was cited for disclosing a one-way ratchet-and-pawl clutch on a treadmill shaft to prevent unexpected forward belt movement, another known safety risk. Finally, Sclater, a mechanical engineering sourcebook, was cited for teaching a sprag-type one-way bearing as a well-known, superior alternative to a ratchet-and-pawl clutch, offering quieter operation and improved durability. Petitioner argued this combination teaches all limitations of the independent claims, including the "safety device" with two "race elements" (the inner and outer races of the sprag bearing).
  • Motivation to Combine: A POSITA would combine Schonenberger and Socwell to create a safer, more comfortable treadmill, using the known technique of a curved running surface to address the known problems of users falling off flat treadmills and experiencing high joint impact. A POSITA would then be motivated to add Magid's one-way clutch to address the separate, known safety issue of unexpected forward belt movement on manual treadmills. Finally, a POSITA would substitute Sclater's superior sprag-type bearing for Magid's ratchet clutch as a simple design choice to achieve predictable improvements in noise and durability.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as the combination involved applying known solutions (curved surfaces, one-way clutches) to solve their respective, well-understood problems in the predictable field of mechanical exercise equipment.

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

• Prior Art Relied Upon: Socwell (Patent 5,897,461), Magid (Patent 5,538,489), and Sclater (Mechanisms & Mechanical Devices Sourcebook, Third Ed. (McGraw-Hill 2001)).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented a similar argument to Ground 1 but used Socwell as the primary reference. Socwell already disclosed the base manual treadmill with a curved running surface. Petitioner argued that Socwell's design, while preventing users from falling off the back, did not address the risk of unexpected forward belt rotation, such as when a user steps on the rear of the curved surface. Magid was cited for its teaching of a one-way clutch to solve this exact problem. Sclater was again cited to teach the substitution of Magid's ratchet clutch with a superior, commercially available sprag-type bearing assembly, which meets the "safety device" limitations of the claims.
  • Motivation to Combine: A POSITA starting with Socwell's curved treadmill would recognize the remaining safety hazard of forward belt movement and would be motivated to incorporate Magid's known solution—a one-way clutch—to prevent it. The motivation to then substitute Sclater's sprag-type bearing for Magid's ratchet clutch was again presented as a predictable design improvement to reduce noise and increase reliability, which are desirable characteristics for consumer exercise equipment.
  • Expectation of Success: The combination was asserted to be predictable, as it involved adding a known safety feature (a one-way clutch) to an existing treadmill design to solve a known problem, with predictable results.

4. Key Claim Construction Positions

• “substantially prevent[]”: For Ground 2, Petitioner proposed construing this term as "prevent any movement after allowing no or minimal movement." This narrower construction was based on the Patent Owner's arguments during prosecution of a related patent to distinguish prior art. Petitioner argued the cited art's sprag-type bearing meets this construction, as it allows only minimal movement before locking.
• “safety device”: Petitioner proposed construing this term as a "device having two ring-shaped components," arguing this is consistent with the claim language requiring first and second "race elements."
• “shaft”: Petitioner proposed construing "shaft" as "a rotating element used to transmit power from one part to another," arguing the shafts in the prior art perform this function.

5. Arguments Regarding Discretionary Denial

• 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 of over 45 months, placing any potential trial well after the Board’s Final Written Decision (FWD). Petitioner also stipulated that it would not pursue in district court any invalidity ground raised or that could have been reasonably raised in the IPR.
• Petitioner further argued that denial under §325(d) was not warranted because the petition presented prior art and arguments substantially different from those considered during prosecution. Specifically, Sclater was not cited by the examiner, and the asserted combinations of Schonenberger, Socwell, and Magid were never applied. Petitioner contended the examiner erred by not recognizing that the patent's "safety device" limitations described a conventional sprag-type one-way bearing, as taught by Sclater.

6. Relief Requested

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