Johnson Health Tech Co. Ltd.v.Icon Health & Fitness, Inc.

Patent Trial and Appeal Board

Jan 29, 2015

09561422 (P.T.A.B. Jan. 29, 2015)

Trials@uspto.gov Paper 41
571-272-7822 Entered: January 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JOHNSON HEALTH TECH CO. LTD. and
JOHNSON HEALTH TECH NORTH AMERICA, INC.,
Petitioners,

v.

ICON HEALTH & FITNESS, INC.,
Patent Owner.
____________

Case IPR2013-00463
Patent 6,702,719 B1
____________

Before JOSIAH C. COCKS, BRIAN J. McNAMARA, and
CARL M. DeFRANCO JR., Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Johnson Health Tech Co. Ltd. and Johnson Health Tech North
America, Inc. (collectively “Johnson”) filed a Petition (“Pet.”) challenging
the patentability of claims 1–14 of U.S. Patent No. 6,702,719 B1 (“the ’719
patent”). The Patent Owner, Icon Health & Fitness, Inc. (“Icon”), filed a
Preliminary Response. On January 30, 2014, we instituted an inter partes
review of the ’719 patent after determining that Johnson had demonstrated a
reasonable likelihood of showing that claims 1–14 are unpatentable. Dec. to
Inst. 20.
After a period of discovery, Icon filed a Patent Owner Response (“PO
Resp.”) to the Petition, addressing some but not all of the claims on which
we instituted trial. Icon also filed a contingent Motion to Amend (“Mot.
Amend”), seeking to substitute proposed new claims 15–24 for original
claims 1–4, 6, 7, 9, and 11–13. Johnson, in turn, filed a Reply to Icon’s
Response (“Reply”), as well as an Opposition to Icon’s Motion to Amend
(“Opp. to Mot. Amend”). Icon then filed a Reply in support of its Motion to
Amend (“Reply to Opp. to Mot. Amend”). An oral hearing was held on
October 27, 2014. A transcript of the hearing (“Tr.”) has been entered into
the record.
Pursuant to our jurisdiction under 35 U.S.C. § 6(c), we conclude that
Johnson has proven by a preponderance of the evidence that claims 1–14 of
the ’719 patent are unpatentable. Also, because Icon has not provided
sufficient analysis as to the patentability of proposed substitute claims 15–
24, we deny Icon’s Motion to Amend.
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II. BACKGROUND
A. ’719 Patent1
The ’719 patent relates to a method for controlling an exercise
machine “via control signals received from multiple types of computing
devices that are independent of any one exercise machine.” Ex. 1001, 3:32–
36. According to the ’719 patent, an exerciser utilizes the independent
computing device interactively with the exercise machine. Id. at 36–37. As
“specified by the particular user,” the independent computing device may be
a portable computer system, a personal storage device, or a network system.
Id. at 3:38–43. Exercise-related data for the particular user, such as fitness
goals and personal data, is stored in the memory of the independent
computing device. Id. at 7:33–35, 7:64–8:5. The exercise machine receives
the exercise-related data via a communication interface with the independent
computing device. Id. at 3:36–43. The exercise-related data received from
the independent computing device may be used to control the exercise
machine. Id. at 3:43–48.
B. Claims at Issue
Johnson’s Petition challenges claims 1–14 of the ’719 patent, and we
instituted trial on all fourteen claims. Claim 1 is the only independent claim.
In the patent owner response, however, Icon focuses exclusively on
dependent claims 4, 6, 10, and 12. Because these claims depend ultimately
from claim 1, we must consider the limitations of claim 1 as well as the
dependent limitations. Claim 1 recites:

1 The ’719 patent is the subject of a concurrent district court action, ICON
Health & Fitness, Inc. v. Johnson Health Tech N. Am., Inc., No. 1:13-cv-112
(D. Utah Aug. 7, 2013). Pet. 1.
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1. A method for controlling an exercise machine, said
method comprising the steps of:
receiving exercise-related data for a particular user at an
exercise machine via a communication interface s with an
independent computing device specified by said particular user;
and
specifying control of said exercise machine according to
said exercise-related data for said particular user, such that a
particular level of control of said exercise machine is specified
according to exercise-related data for said particular user from
said independent computing device.

Ex. 1001, 13:29–40.
As for the dependent claims addressed in Icon’s Response, claim 4
adds that the step of “receiving exercise-related data” is performed “via a
network from a universally accessible server system according to a
particular universal identifier associated with said particular user”; claim 6
requires that the exercise-related data received from the computing device
include “fitness goals”; claim 10 recites the limitation of using the fitness
goals to specify “a time duration and intensity for exercise”; and claim 12
adds the step of “controlling output of indicators of fitness activity” from the
exercise machine “according to user output preferences included in said
exercise-related data.” Ex. 1001, 13:60–14:64.
C. Prior Art Relied Upon in the Petition
Johnson relies on the following prior art references in support of its
grounds for unpatentability of claims 1–14 of the ’719 patent:
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D. Instituted Grounds of Unpatentability
We instituted trial of claims 1–14 of the ’719 patent on the following
specific grounds. Dec. to Inst. 20.

References Basis Claims Challenged
Shea § 102(e) 1–4, 6–11, and 14
Shea in view of Dyer § 103(a) 5
Shea in view of Abbondanza § 103(a) 12
Shea in view of Beal § 103(a) 13
Clem § 102(e) 1, 4, 7–11, and 14
Clem in view of Shea § 103(a) 2, 3
Clem in view of Dyer § 103(a) 5, 6
Clem in view of Abbondanza § 103(a) 12
Clem in view of Beal § 103(a) 13

III. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
References Patents/Printed Publications Date Exhibit
Dyer US 4,828,257 May 9, 1989 1002
Shea US 6,050,924 Apr. 18, 2000 1003
Clem US 6,053,844 Apr. 25, 2000 1004
Abbondanza US 5,527,239 Jun. 18, 1996 1005
Beal US 5,782,639 Jul. 21, 1998 1006
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Claim terms also generally are given their ordinary and customary meaning,
as would be understood by one of ordinary skill in the art in the context of
the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). However, a “claim term will not receive its ordinary
meaning if the patentee acted as his own lexicographer and clearly set forth a
definition of the disputed claim term in either the specification or
prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1366 (Fed. Cir. 2002).
Here, neither party asserts that the ’719 patent ascribes a special
meaning to a claim term. Accordingly, all terms have been given their
ordinary and customary meaning in the context of the entire disclosure of the
’719 patent. The parties’ arguments center on the construction of three
claim terms, namely “exercise-related data,” “independent computing
device,” and “specified by the user.” Accordingly, we make explicit the
construction of those claim terms as follows:
1. “exercise-related data”
Claim 1 uses the term “exercise-related data” in several places.
Johnson asserts that the term “exercise-related data” means “information
regarding an exercise program, including personal data, fitness goals, and
control programs.” Pet. 5. In support of its interpretation, Johnson points to
the Specification and its definitions of the various types of exercise-related
data. Id. According to the Specification, “personal data” includes user
weight, height, age, percentage body fat, bone density, metabolism, health
problems, prescriptions, diet, and other health related factors; “fitness goals”
include the number of calories that the user wants to burn or the number of
repetitions at a particular weight that the user needs to perform on a given
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exercise machine; and “control programs” include programs used to control
movement of the various parts of the exercise machine. Ex. 1001, 7:52–8:5.
We also note, as described in the Specification, exercise-related data
does not necessarily require a control program or a control signal.
According to the Specification, the exercise machine “is enabled to receive
personal data, fitness goals and/or control signals for a particular user.” Ex.
1001, 3:10–12 (emphasis added). The Specification’s use of the
conjunctive/disjunctive “and/or” means that any one of the three types of
data alone may be utilized to control the machine. Indeed, the Specification
describes the three types of data—personal data, fitness goals, and control
programs—in terms of “multiple levels of control.” Ex. 1001, 9:41–42.
Specifically, the Specification states (emphases added):
At-machine exercise monitor 40 may receive multiple
levels of control from any of the independent computing
devices. For example, at-machine exercise monitor 40 may
only receive personal data from any of the independent
computing devices for a particular user. Thereby, at machine
exercise monitor 40 could be initialized for use [by] a particular
user, such that [it] . . . may then adjust any selected exercise
programs for the particular user according to the personal data.

Ex. 1001, 9:41–49.

Additionally, at-machine exercise monitor 40 may
receive personal data and fitness goals for the user. At-
machine exercise monitor 40 is advantageously enabled to
determine and specify exercise programs that may be suitable
for the user based on the user's personal data and fitness goals.

Id. at 10:21–25.

In yet another example, at machine-exercise monitor 40
may receive a control program from any of the independent
computing devices, wherein at-machine exercise monitor 40
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transmits a machine control signal to exercise machine 38
based on the control program.

Id. at 10:48–52.

In the first two examples described above, control of the exercise
machine depends on “personal data alone” or “personal data and fitness
goals.” Not until the third example is there any mention of a control
program or a control signal. Thus, a narrower definition of “exercise-related
data” to require a control program and a control signal would be inconsistent
with the Specification. Rather, properly construed, the broadest reasonable
interpretation in light of the Specification of the term “exercise-related data”
is information regarding personal data, fitness goals, and/or control
programs.
2. “independent computing device”
Claim 1 recites that the exercise-related data is received at the
exercise machine from an “independent computing device.” Johnson argues
that “independent computing device” means a processor or storage device
separate from the exercise machine, such as a portable computer system
(e.g., a laptop, a personal digital assistant (PDA), or a mobile telephone), a
personal storage device (e.g., a smart card), or a network system (e.g., a
remote server system). Pet. 5–6. Icon does not dispute this interpretation,
and the Specification supports it. See Ex. 1001, 3:40–43; 7:15–32; 8:56–62.
Thus, we construe the term “independent computing device” to mean a
processor or storage device separate from the exercise machine, such as a
portable computer system, a personal storage device, or a network server
system.
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3. “specified by said particular user”
Claim 1 recites that the independent computing device is “specified by
said particular user.” Johnson argues that this term means “chosen by the
user, including selecting an exercise device that is known to be connected to
an independent computing device.” Pet. 6 (citing Ex. 1001, 3:40–43)
(emphasis added). But Johnson’s attempt to equate an exerciser’s mere
selection of an exercise device with the selection of an independent
computing device is unreasonably broad. That a user chooses to exercise on
a machine equipped with a computerized monitor does not mean that the
user has also specified an independent computing device. The Specification
of the ’719 patent consistently describes the independent computing device
as being different from the monitor on the exercise machine. See Ex. 1001,
8:26–42. Thus, not only is Johnson’s proposed construction inconsistent
with the Specification, but it would also read the term “independent” out of
the claim such that the user need only specify any computing device,
whether or not it was independent of the exercise machine. See Chef Am.,
Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (the Federal
Circuit “repeatedly and consistently has recognized that courts may not
redraft claims”) (citations omitted).
More reasonably, in the context of claim 1, the plain meaning of the
term “specified by said particular user” requires that the user deliberately
choose a computing device other than the computerized monitor on the
machine itself for the purpose of “receiving” exercise-related data. The
written description of the ’719 patent reinforces that interpretation,
describing the computing device in terms of the user’s “personal” exercise
monitor with the ability to “customize” the user’s exercise program.
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Computer system 10 is advantageously utilized as a
personal exercise monitor . . . . It is important to note that the
user is able to customize the features available on computer
system 10. Since the user advantageously supplies computer
system 10, the user may select the type and quality of desired
output. . . . In addition, it is important to note that computer
system 10 may be continuously upgraded without requiring the
upgrade of machine monitor 40.

Ex. 1001, 8:26–42 (emphasis added). Thus, we interpret “specified by said
particular user” to mean that the user deliberately selects, or interacts with, a
computing device that is independent of the computerized monitor on the
exercise machine.
B. Claims 1–3, 5, 7–9, 11, 13, and 14
In the Petition, Johnson challenges the patentability of claims 1–14 of
the ’719 patent under 35 U.S.C. §§ 102 and 103. Pet. 7–50. After
considering the arguments and evidence presented in the Preliminary
Proceeding,2 we instituted trial against claims 1–14, determining that
Johnson was likely to prevail in showing unpatentability of each of the
fourteen claims. Dec. to Inst. 20.
Once trial was instituted, and after a specified period for discovery,
Icon was afforded the opportunity to file a Patent Owner Response to
address “any ground for unpatentability not already denied” by our Decision
to Institute. 37 C.F.R. § 42.120. In its Patent Owner Response, Icon does
not address all of the instituted grounds. Although we instituted trial on no
less than two grounds against each of the patent’s fourteen claims, Icon
addresses only those grounds instituted against claims 4, 6, 10, and 12, but is

2 A “Preliminary Proceeding,” as defined by our rules, “begins with the
filing of a petition for instituting a trial and ends with a written decision as to
whether a trial will be instituted.” 37 C.F.R. § 42.2.
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silent on the grounds instituted against claims 1–3, 5, 7–9, 11, 13, and 14.
PO Resp. 7. That is, Icon appears to defend only the patentability of claims
4, 6, 10, and 12.
The Board’s Scheduling Order put Icon on notice that, as the patent
owner, it must come forward with arguments for patentability, lest they be
waived. Paper 14 at 2–3 (“[t]he patent owner is cautioned that any
arguments for patentability not raised and fully briefed in the response will
be deemed waived”). Here, Icon’s response does not articulate any reasons
for patentability of claims 1–3, 5, 7–9, 11, 13, and 14 over any of the
grounds on which we instituted trial. See PO Resp. 2. Although Icon argues
distinctly in support of patentability for “Claim 4,” “Claims 6 and 10,” and
“Claim 12” (PO Resp. 7, 14, 24, respectively), and requests expressly that
“the Board not adopt the Petitioner’s proposed rejections of claims 4, 6, 10,
or 12” (id. at 27), Icon’s response is conspicuously devoid of any discussion
of the other ten claims challenged in the Petition and on which we instituted
trial.
In the absence of any response addressing patentability of claims 1–3,
5, 7–9, 11, 13, and 14, Icon effectively precluded Johnson from replying any
further to the merits of those ten claims. See 37 C.F.R. § 42.23(b) (“[a]
reply may only respond to arguments raised in the corresponding opposition
or patent owner response”). Yet, at oral argument, Icon backtracked on the
impression left by its Patent Owner Response (or lack of response), stating
that it was neither disclaiming the unaddressed claims nor acknowledging
their unpatentability. Tr. 19. Icon’s belated attempt to argue the viability of
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the unaddressed claims came five-months after complete and utter silence on
the issue, a silence that Johnson relied upon in good-faith.3
Inter partes review, by its very nature, is meant to be an interactive
process between the petitioner and patent owner. The Leahy-Smith America
Invents Act, Pub. L. No. 112-29 (2011), expressly contemplates that the
patent owner respond to the petition once trial is instituted. Notably, the
statute mandates the promulgation of rules “providing for the filing by the
patent owner of a response to the petition” and “requiring that the patent
owner file with such response, through affidavits or declarations, any
additional factual evidence and expert opinions on which the patent owner
relies” in support of patentability. 35 U.S.C. § 316(a)(8). Consistent with
the statute, our rules instruct that the patent owner response “is filed as an
opposition.” 37 C.F.R. § 42.120(a). As such, it “must include a statement
identifying material facts in dispute. Any material fact not specifically
denied may be considered admitted.” Id. at § 42.23(a). Those statutory and
regulatory provisions clearly place some onus on the patent owner, once trial
is instituted, to address the material facts raised by the petition as
jeopardizing patentability of the challenged claims.4
By instituting trial, we determined that Johnson presented credible
evidence pointing towards unpatentability of claims 1–3, 5, 7–9, 11, 13, and

3 Icon’s response was filed May 14, 2014 and the hearing was held October
27, 2014. In its Reply, Johnson expressed its understanding that Icon’s lack
of response “waived any argument that claims 1–3, 5, 7–9, 11, 13, and 14
are patentable.” Reply 1.
4 In addition, our trial practice guide expressly states that “[t]he response
should identify all the involved claims that are believed to be patentable and
state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed.
Reg. 48756, 48766 (Aug. 14, 2012) (emphasis added).
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14. Dec. to Inst. 9–15. But rather than address the credible evidence applied
against those challenged claims, Icon remained silent. That is, Icon chose to
forego the opportunity, provided by statute, to present rebuttal evidence
and/or argument on the issue of patentability of those claims. Absent any
rebuttal, we will not scour the record to locate evidence supporting
patentability. Perfunctory or undeveloped arguments are waived. Thus, we
are left to consider only the evidence of record as presented in the Petition.
See Pet. 7–50. As discussed below, after considering Johnson’s evidence
with respect to claims 1–3, 5, 7–9, 11, 13, and 14, we find that the
preponderance weighs in favor of unpatentability.
1. Claims 1–3, 7–9, 11, and 14 – Anticipation by Shea
Independent claim 1 begins with the step of “receiving exercise-
related data” from “an independent computing device specified by said
particular user.” Shea satisfies that limitation by giving the user the option
of receiving exercise-related data from either “central computer (server)
102” or “portable memory module 212” (such as “smart cards”). Ex. 1003,
4:64–5:15, 6:43–60.
According to Shea, the user of the exercise machine may choose to
receive exercise programs either via “a communications link 106” with
central computer 102 or via “a port 219” for portable memory module 212.
Id. at 6:23–60; see also Fig. 5 (depicting communications link 106 and
portable memory module 212 for receiving exercise-related data).
Furthermore, Shea expressly describes the user’s choice of computing
devices in terms similar to the “specified by” language of claim 1. For
example, Shea discloses that exercise programs and parameters (e.g., total
exercise time, difficulty level) may be “selected from” the memory of
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portable module 212 or “are also selectable from” the memory of central
computer 102. Id. at 6:61–7:4. We find that Shea’s disclosure of using
either computer server 102 or memory module 212 for receiving exercise-
related data satisfies the claim 1 limitation of “an independent computing
device specified by said particular user.”
Claim 1 next recites the step of “specifying control of said exercise
machine according to exercise-related data for said particular user from said
independent computing device.” Shea meets that limitation by disclosing
that the exercise-related data retrieved from central computer server 102 or
portable memory module 212 is used “for controlling the[] one or more
exercise apparatus terminals.” Id. at 3:17–21; see also 3:44–49 (“exercise
data is retrieved and the processor of the exercise apparatus uses the
retrieved exercise data to control the exercise apparatus”). As described in
Shea, the data used to control the exercise machine may include “an exercise
program selection, an exercise time, and/or difficulty level” and is based on
criteria such as “the exerciser’s profile data, the exerciser’s fitness goal data,
and data regarding the exerciser’s previous workouts.” Id. at 3:21–27.
Those disclosures by Shea satisfy the claim 1 limitation of using exercise-
related data for a particular user to control the exercise machine.
Because Shea discloses giving the user the option of selecting
between central computer server 102 or portable memory module 212 for
receiving exercise programs and parameters, and then using the received
programs and parameters to control the user’s exercise machine, we find that
Shea anticipates the “receiving” and “specifying” steps of claim 1. We
further find that Shea’s disclosure of “portable memory module 212” (e.g.,
“smart cards”) for “inputting/outputting data to/from” the exercise apparatus
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terminal anticipates the “portable computer system” and “personal storage
device” features of dependent claims 2 and 3. See Ex. 1003, 6:43–60, 7:36–
40.
With respect to dependent claims 7, 8, and 9, Shea discloses a “system
control program . . . for controlling these one or more exercise apparatus
terminals.” Id. at 3:19–27. According to Shea, “exercise data is retrieved
[from the central computer] and the processor of the exercise apparatus uses
the retrieved exercise data to control the exercise apparatus.” Id. at 3:40-49;
see also id. at 15:60-65 (disclosing that the control program “guide[s] an
exerciser through a workout by providing, for example, aural and/or visual
prompts which inform the exerciser”). Shea’s “processor 201 and “interface
202” control the transmission of data between the central computer and the
exercise apparatus. Id. at 6:29–39. Those disclosures, we find, anticipate
the “control program” limitations of dependent claims 7, 8, and 9.
We further find that Shea’s disclosure of monitoring “certain
physiological parameters such as heart rate and/or blood pressure,” and
using the monitored data to “vary the exercise data . . . in the current
workout,” anticipates the step of “computing current fitness activity” as
recited in claim 11. See Ex. 1003, 3:54–61. Similarly, Shea’s disclosure of
“pulse monitor 210,” which is “attached to the exerciser” and “plugged into
an input jack” on the exercise terminal, anticipates the step of “enabling a
removable monitoring system” as recited in claim 14. Id. at 7:21–36.
In sum, Johnson has shown by preponderant evidence that claims 1–3,
7–9, 11, and 14 are unpatentable as anticipated by Shea under 35 U.S.C.
§ 102.
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2. Claims 5 and 13 – Obvious Over Shea, Dyer, and Beal
Dependent claim 5 recites the step of “receiving personal data” at the
exercise machine from the computing device. Both Shea and Dyer teach the
transmission of personal data between a central computer and an exercise
machine. For example, Shea speaks of transmitting “profile data,” such as
“the exerciser’s height, weight, age, and an indication of current fitness
level,” from central computer 102 to exercise terminal network 100. Ex.
1003, 12:30-13:3. Dyer describes the transfer of an exerciser’s “personal
demographics” from central computer 150. Ex. 1002, 10:32–40. Based on
those teachings, we conclude that the combination of Shea and Dyer present
preponderant evidence that claim 5 would have been obvious to a skilled
artisan seeking to develop personally-designed exercise programs.
Dependent claim 13 adds the step of “enabling a removable output
interface . . . to output indicators of fitness activity.” As discussed above, in
regard to claims 11 and 14, Shea discloses “portable monitor 210” as an
output interface for detecting and processing indicators of fitness activity.
Ex. 1003, 3:54–61, 7:5–50. Similarly, Beal teaches the use of “pulse
monitor 206,” along with a removable, head-mounted display, as a way to
detect and display indicators of fitness activity. Ex. 1006, 14:63–65. A
skilled artisan would have viewed Beal’s removable display as an obvious
substitute for the less-private display in Shea’s pulse monitoring system
because both are output indicators of fitness activity. As such, claim 13
would have been obvious over Shea and Beal.
In sum, we conclude that Johnson has demonstrated by preponderant
evidence that claims 5 and 13 are unpatentable under 35 U.S.C. § 103.
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C. Claims 4, 6, 10, and 12
1. Shea-Based Grounds
a. Claim 4 – Anticipation by Shea
Dependent claim 4 incorporates the limitations of claim 1. As
discussed above, we find that Shea discloses the “receiving” and
“specifying” steps of claim 1 as incorporated in claim 4. Specific to claim 4
is the additional step of “receiving exercise-related data” for the user “via a
network from a universally accessible server system according to a
particular universal identifier.” Johnson argues that Shea anticipates claim 4
by disclosing that a user “enters his/her exerciser identifier” to retrieve
exercise-related data from “central computer (server) 102.” See Ex. 1003,
3:40–47, 4:65–67.
Icon criticizes Shea for disclosing only a single server system. PO
Resp. 9–10. In order to satisfy claim 4, according to Icon, the user “must be
given options from which to choose that include more than just a single
server system.” Id. at 10. Thus, Icon surmises that Shea’s single server
system precludes the user from making a choice of computing devices, i.e.,
selecting something other than the server, thereby failing to meet the
“specified by” limitation of claim 4. Id.
Icon misconstrues claim 4. The “specified by” limitation applies to
the “independent computing device” referenced in the initial step of claim 4,
not the “server system” recited in the step added by claim 4. Thus, as long
as the user has a choice of independent computing devices, where at least
one option for receiving exercise-related data is a “server,” the claim is met.
That claim 4 further defines the type of computing device chosen ultimately
by the user does not detract from the initial step of having a choice of
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independent computing devices. Indeed, claims 2 and 3, which also depend
directly from claim 1, likewise define the type of computing device chosen
by the user, for example, “a portable computing system provided by said
particular user” (claim 2) and “a personal storage device proffered by said
particular user” (claim 3). None of those dependent limitations requires that
the user make any further selection. In other words, the act of selecting or
specifying something is only performed in conjunction with the broader
limitation of “independent computing devices,” not the specific limitations
that identify the particular type of computing device chosen, i.e., specified,
by the user. Shea satisfies claim 4 by specifying central computer server
102 as one of the options for the user to receive exercise-related data. Ex.
1003, 4:64–5:15.
Icon also faults Shea’s computer server 102 for not being “universally
accessible,” as required by claim 4. PO Resp. 10. “To be ‘universally
accessible,’” Icon argues, “a server system must be generally available to the
public.” Id. at 11. “Server systems that are only available to a limited
number of individuals are not universally accessible,” according to Icon’s
definition of the term. Id. at 12. But Icon ignores that claim 4 includes
subsequent language that further defines the term “universally accessible.”
As claimed, the “server” is not accessible by the general public, as Icon
contends, but rather is accessible only to those users possessing “a particular
universal identifier associated with said particular user.” Ex. 1001, 14:1–2.
Thus, “universally accessible” as used in the context of claim 4 speaks to a
limited universe of users. The Specification bears this out, describing
“remote server system 48” in terms of transmitting “exercise-related data
associated with the user of the universal identifier” and as being “connected
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to multiple exercise machines [that receive] user identifier for the user and
transmit verification requests to health club server 80.” Id. at 8:63–9:4,
11:64–12:1. As such, we are not persuaded by Icon’s attempt to read out of
claim 4 the very language that defines the accessibility of the server.
In satisfaction of the claimed “universally accessible server,” Shea
discloses that server 102 is connected to an array of exercise machines over
a local area network (LAN) or wide-area network (WAN) by means of
network connection 106 that includes any “conventional communications
link,” including a “wireless communications link” or an “e-mail link.” Ex.
1003, 4:64–5:14, 28:36–29:4. The ’719 patent similarly describes that the
computer system “may be a stand-alone system or part of a network such as
a local-area network (LAN) or a wide-area network (WAN).” Ex. 1001,
4:29–34. Thus, we find that a skilled artisan would have understood Shea’s
disclosure of a computer “server” and a “wide area network connection” to
be the same as the “universally accessible server” and “network” interface
for the exercise machine recited by claim 4.
To the extent Icon argues that Shea’s server is not “universally
accessible” because it lacks an “internet” connection, we find that Shea
inherently discloses an internet connection between Shea’s computer server
102 and exercise terminals 104. Icon’s declarant, Dr. David C. Paulus,
acknowledges that by the filing date for the ’719 patent, the internet was a
well-known means for connecting to a server system. Ex. 3004 ¶ 14 (“By
1995 ‘Internet’ had been defined by the Federal Networking Counsel . . . and
was used prolifically in the United States by 2000”). Indeed, Dr. Paulus
equates a wide area network (WAN) with the use of the internet. Id. ¶ 24.
And predictably, Johnson’s declarant, Dr. Timothy C. Mickelson, agrees.
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Ex. 1009 ¶ 31. Crediting that mutual testimony, we find that Shea’s
disclosure of a “wide-area network” link, as well as an “e-mail link,”
necessarily infers the use of an internet connection. Ex. 1003, 5:4–14 (“wide
area network (WAN)”), 28:36–29:4 (“e-mail link”). As such, even under
Icon’s interpretation of “universally accessible server,” Johnson has
demonstrated by a preponderance of the evidence that Shea anticipates
claim 4.
b. Claims 6 and 10 – Anticipation by Shea
Johnson also challenges claims 6 and 10 as being anticipated by Shea.
Claims 6 and 10 are similar in that both speak of receiving “fitness goals”
from the independent computing device. See PO Resp. 14. The
Specification of the ’719 patent defines “fitness goals” as “the number of
calories that the user wants to burn or the number of repetitions at a
particular weight that the user needs to perform.” Ex. 1001, 8:2–5 (emphasis
added).
Icon argues that, although fitness goals may be sent to Shea’s central
computer, Shea fails to disclose receiving fitness goals “from central
computer 102 to any exercise terminal.” PO Resp. 16–17. A preponderance
of the evidence indicates otherwise. Shea is replete with references to
transmission of “fitness goals,” not only to the central computer, as Icon
contends, but also from the central computer to the user at the exercise
machine. Ex. 1003, 3:19–27, 13:50–55, 24:55–67. For example, consistent
with the ’719 patent’s definition of fitness goal in terms of “calories” and
“repetitions,” Shea discloses a “second implementation” in which the central
computer can “dynamically . . . modify a pre-selected workout for an
exerciser” (id. at 15:66–16:13) and “visually and/or aurally prompt[s]” the
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user as to “total calories burned during the workout, and the like” (id. at
18:7–20). Shea further explains that “exercise data such as a number of
repetitions and an exercise time is retrieved and the processor communicates
the exercise data to the exerciser via a speaker and/or a display.” Id. at
3:50–54 (emphasis added). Because Shea expressly discloses that the
central computer keeps the user informed of calories burned and repetitions
completed, we find that Shea meets the claim 6 limitation of “receiving
fitness goals” at the exercise machine from the computing device.
Claim 10 adds the limitation of using the fitness goals received from
the computing device to specify a “time duration and intensity” on the
exercise machine. See PO Resp. 15. Shea discloses this limitation in a
number of places. For example, Shea discloses that the exercise-related data
stored on the central computer may be used by “a system control program
. . . to determine workouts for each exerciser that will best help the exerciser
achieve the fitness goals which he/she has set.” Ex. 1003, 3:12–16.
According to Shea, the exercise-related data “may include . . . an exercise
time, and/or a difficulty level(s) and is selected based [on] . . . but is not
limited to, one or more of the exerciser’s profile data, the exerciser’s fitness
goal data . . . .” Id. at 3:21–27 (emphasis added). In another place, Shea
discloses that the exercise-related data received from the independent
computing device may include “program parameters (e.g., total exercise
time, difficulty level)” for use by the processor to control the exercise
machine. Id. at 6:45–52. We find that Shea’s express disclosure of using
exercise time and difficulty level to control the exercise machine anticipates
claim 10.
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In sum, we determine that Johnson has demonstrated by a
preponderance of the evidence that claims 6 and 10 are anticipated by Shea.
c. Claim 12 – Obvious Over Shea and Abbondanza
Claim 12 adds the step of “controlling output of indicators of fitness
activity” from the exercise machine “according to user output preferences
included in said exercise-related data.” Ex. 1001, 14:60–64. Johnson
challenges claim 12 as obvious over Shea and Abbondanza. Pet. 43–44.
Icon counters that Shea “do[es] not disclose receiving any user output
preference from an independent computing device.” PO Resp. 25–26. We
do not find Icon’s argument persuasive for at least two reasons. First, claim
12 does not speak to the output of exercise data (or user preferences) from
the computing device. Rather, claim 12 recites the output of data as being
“from said exercise machine to an output interface” with the computing
device. As claimed, exercise data is output from the exercise machine, not
the computing device. Because Icon premises its argument against Shea on
an incorrect construction of claim 12, we do not find Icon’s argument
persuasive.
In any event, we find that Shea discloses an output interface in the
manner called for by claim 12. For example, Shea expressly discloses “an
interface 402” that “controls the transfer of [exerciser] data to/from input
device 400 over the network.” Ex. 1003, 11:55–56 (emphasis added). That
disclosure indicates that transfer of exercise-related data is bidirectional
between central computer 102 and exercise terminal 104. Indeed, Shea
discloses a “modem” as a possible interface. Id. at 11:56–57. Those
disclosures indicate that Shea’s interface 402 operates as a transceiver
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capable of transmitting data to the computing device and receiving data from
the computing device.
Similar teachings of transmitting exercise-related data to/from the
computing device are also found in Abbondanza. Ex. 1005, 6:55–7:26
(disclosing that “[c]ontrol center 140 has a transmitter and two receivers”),
8:4–21 (teaching “conventional input/output means for gathering and
displaying information related to a user’s work-out regimen”). And
Abbondanza further teaches a user interface that allows the user to select
output preferences “from a series of menu choices” related to the user’s
“work-out regimen.” Id. at 8:4–21. We are persuaded that a skilled artisan
would have found it obvious to modify Shea’s output interface to utilize user
preferences as taught by Abbondanza so as to save the user from selecting
the preferences every time a machine is used. See Ex. 1009 ¶ 39. As such,
we hold that Johnson has proven by a preponderance of the evidence that
claim 12 would have been obvious over Shea and Abbondanza under 35
U.S.C. § 103.
2. Clem-Based Grounds
We also conclude that Johnson has proven by a preponderance of the
evidence that claims 4 and 10 are unpatentable under 35 U.S.C. § 102 as
anticipated by Clem, and that claims 6 and 12 are unpatentable under 35
U.S.C. § 103 as obvious over Clem and Dyer and Clem and Abbondanza,
respectively.
a. Claims 4 and 10 – Anticipation by Clem
As acknowledged by Icon’s declarant, Dr. Paulus, “Clem discloses a
programmable fitness device 32 that communicates with a remote computer
that hosts a website 12 via an internet system 19.” Ex. 3004 ¶ 28 (citing Ex.
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2:34–65). According to Clem, website 12 “can operate as a server device”
for transmitting exercise-related information (video and audio) between “a
computer located at the website 12” and fitness device 32. Ex. 1004, 2:47–
65. In addition to website 12, Clem discloses that exercise-related
information “can also be interactively communicated to and from third party
applications 14.” Id. at 3:57–62, Fig. 1. We find that Clem satisfies claim 4
by giving the user the option of receiving exercise-related information from
either website 12 or third-party applications 14. And because Clem
discloses that the exercise-related information may be transmitted via the
internet connection according to a “user password,” we further find that
Clem meets the “universal identifier” limitation required by claim 4. Ex.
1004, 3:39–45; Ex. 1007 ¶ 10(d). Given these findings, a preponderance of
the evidence shows that Clem anticipates claim 4.
With respect to claim 10, Clem discloses that the website accumulates
a “digest” of personal information for each user and selects a control
program “according to the digest.” Ex. 1004, 3:1-14. In turn, the user can
engage in “two way communication” with the website and obtain
information “regarding matters relating to fitness, including matters such as
exercise routines and exercise equipment.” Id. at 2:53–57 (emphasis added).
As examples of fitness-related information that the user may receive from
the website, Clem discloses “calorie information” or information for
controlling “speed,” “resistance level,” or “periods of time.” Id. at 3:48–57,
4:8–33. We credit the testimony of Johnson’s declarant, Dr. Mickelson, that
a skilled artisan would have understood these categories of information to
encompass fitness goals, including time duration and intensity. See Ex.
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1009 ¶¶ 33–37. Thus, Johnson has shown by a preponderance of the
evidence that Clem anticipates claim 10.
b. Claim 6 – Obvious Over Clem and Dyer
Like Clem, Dyer teaches transmitting a desired exercise program from
a central computer to individual exercise stations. Ex. 1002, 10:32–50, Fig.
5. Dyer further teaches that the transmitted exercise program depends upon
the particular “goal” of the user. Id. at 11:15–32, 21:1–38, 37:20–29, 46:36–
43. For example, because “change in a user’s weight is often a goal in
exercise programs,” Dyer provides a scale at the exercise station so that
“weight information . . . can be reported to the user . . . along with
evaluation comments or instructions relating to the weight information.” Id.
at 11:21–32. Accounting for Dyer’s teachings, we conclude that a skilled
artisan would have understood the combination of Clem and Dyer as
conveying the limitation of claim 6 that “fitness goals” be received at the
exercise machine from the computing device. As such, Johnson has proven
by a preponderance of the evidence that claim 6 is unpatentable as obvious
over Clem and Dyer.
c. Claim 12 – Obvious Over Clem and Abbondanza
Clem discloses various output indicators of fitness activity, such as
pulse and heart rate, which are monitored by website 12 via input/output
interfaces. Ex. 1004, 5:16-58. Abbondanza teaches “conventional
input/output means for gathering and displaying information related to a
user’s work-out regimen” and further teaches a user interface for selecting
output preferences “from a series of menu choices” related to the user’s
“work-out regimen.” Ex. 1005, 8:4–21. We are persuaded that a skilled
artisan would have found it obvious to modify Clem’s output interface to
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utilize user preferences as taught by Abbondanza so as to save the user from
selecting the preferences every time a machine is used. See Ex. 1009 ¶ 40.
Thus, we hold that Johnson has proven by a preponderance of the evidence
that claim 12 would have been obvious over Clem and Abbondanza under
35 U.S.C. § 103.
D. Motion to Amend
Icon filed a Motion to Amend the claims of the ’719 patent,
requesting to substitute new claims 15–24 for original claims 1–4, 6, 7, 9,
and 11–13. Mot. Amend 1. The Motion was contingent on the panel’s
determination that claims 1–4, 6, 7, 9, and 11–13 are unpatentable. Id. As
discussed above, the panel has determined that those claims are unpatentable
based on the information presented in Johnson’s Petition. Thus, the
contingency has manifested.
As the movant, the patent owner bears the burden of proof in
demonstrating patentability of the proposed substitute claims over the prior
art in general. See 37 C.F.R. § 42.20(c). A mere conclusory statement that
the features proposed by the substitute claims are not described in the prior
art, or would not have been obvious over the prior art, is facially inadequate.
Icon’s argument for patentability of the substitute claims consists of
(1) coded notations to a master list of explanations, and (2) bare citations to
paragraphs of the declaration of its expert, Dr. Paulus. For example, in
arguing that proposed claim 15 is patentably distinct over the prior art, Icon
relies on the following analysis:
Patent Owner submits the following technical facts and
reasoning from the following paragraphs of the Paulus
Declaration for the Board’s consideration: the NLs (¶ 23), the
PC (¶ 24), the SU (¶ 25), the GSA-NO (¶ 26), the PDs-S (¶ 27),
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the PDs-C (¶ 28), the PDs-D (¶ 29), the PDs-A (¶ 30), and the
PDs-B (¶ 31).5

Mot. Amend 10.
Icon’s presentation of its patentability arguments in such an obtuse
fashion does not amount to meaningful analysis. Icon’s contention that its
abbreviated approach is necessary “in the interest of keeping to the page
limit of 15 pages” (Mot. Amend 8) does not justify side-stepping its burden
of persuasion. We will not undertake to decipher short-hand code as the first
step to understanding a party’s arguments and proofs on the issue of
patentability.
Our rules clearly articulate that a party’s initial brief, be it a petition or
a motion, must include “[a] full statement of the reasons for the relief
requested, including a detailed explanation of the significance of the
evidence including material facts and the governing law, rules, and
precedent.” 37 C.F.R. § 42.22(a)(2). More so, “[a]rguments must not be
incorporated by reference from one document into another document.” 37
C.F.R. § 42.6(a)(3). Icon’s Motion to Amend fails on both counts. Aside
from listing the proposed substitute claims, Icon’s Motion provides little
more than a morass of cryptic notations that fall well short of any
meaningful discussion of the prior art, the level of skill in the art, and the
significance of the added features. Mot. Amend 7–15.
Because Icon’s Motion to Amend lacks meaningful analysis, we are
not persuaded that it demonstrates sufficiently the patentability of the
proposed substitute claims. Accordingly, Icon’s Motion is denied.

5 Icon’s argument is equally deficient for the other proposed substitute
claims, using the same cryptic notations and bald citations to discuss the
prior art. See, e.g., Mot. Amend 11–15.
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IV. CONCLUSION
Johnson has proven by a preponderance of the evidence that claims 1–
14 of the ’719 patent are unpatentable under 35 U.S.C. §§ 102 and 103. This
is a Final Written Decision of the Board under 35 U.S.C. § 318(a). Parties to
the proceeding seeking judicial review of this Decision must comply with
the notice and service requirements of 37 C.F.R. § 90.2.
V. ORDER
Accordingly, it is hereby:
ORDERED that, claims 1–14 of the ’719 patent have been proven to
be unpatentable by a preponderance of the evidence;
FURTHER ORDERED that Icon’s Motion to Amend is denied; and
FURTHER ORDERED that the parties to the proceeding seeking
judicial review of this Final Written Decision must comply with the notice
and service requirements of 37 C.F.R. § 90.2.

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PETITIONERS:

Kevin P. Moran
Benjamin E. Evans
John C. Scheller
MICHAEL BEST & FRIEDRICH LLP
kpmoran@michaelbest.com
beevans@michaelbest.com
jcsheller@michaelbest.com

PATENT OWNER:

Charles J. Veverka
John T. Gadd
Mark W. Ford
MASCHOFF BRENNAN
cveverka@mabr.com
jgadd@mabr.com
mford@mabr.com