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

Patent Trial and Appeal Board

Jun 5, 2015

13184154 (P.T.A.B. Jun. 5, 2015)

Trials@uspto.gov Paper 33
571-272-7822 Entered: June 5, 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 IPR2014-00184
Patent 8,298,123 B2
____________

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.”) for inter
partes review of claims 1–10 of U.S. Patent No. 8,298,123 B2 (“the ’123
patent”). On January 30, 2014, we instituted an inter partes review of the
’123 patent (“Dec. to Inst.”) on grounds of unpatentability under 35 U.S.C.
§ 103.
After a period of discovery, Icon Health & Fitness, Inc. (“Icon”), the
owner of the ’123 patent, filed a Patent Owner Response (“PO Resp.”).1
Johnson, in turn, filed a Reply (“Reply”) to Icon’s Response. An oral
hearing was held on February 10, 2015, and a transcript (Paper 32, “Tr.”)
has been entered into the record. We have jurisdiction under 35 U.S.C.
§ 6(c). For the reasons that follow, we conclude that Johnson has proven by
a preponderance of the evidence that claims 1–10 of the ’123 patent are
unpatentable.
II. BACKGROUND
A. The ’123 Patent2
The ’123 patent relates to an exercise and health system comprised of
two parts: (1) a “local system” having “one or more health or fitness
devices,” such as a stationary bicycle or weight machine, each equipped with
a computer that serves to “provide feedback and encouragement to the user”
of the device; and (2) a “remote computer system,” in communication with
the local system, “which can be used to monitor the progress and to vary the

1 Icon did not file a motion to amend the claims.
2 The ’123 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, filed Aug. 7, 2013). Pet. 1.
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exercise program or script” of the user. Ex. 1001, 2:34–54, 4:18–22, Fig. 1
(emphasis added). The remote system communicates interactively with the
local system via a “modem” and “telephone line,” or alternatively, “via a
wide-area network (WAN) such as the Internet.” Id. at 5:59–66, 6:23–30.
Notably, the remote system can be operated by a “human personal
trainer” to upload information from the local system “to be analyzed . . . at
the remote computer.” Id. at 2:56–66. The personal trainer can then provide
the user of the fitness device with “additional instruction, encouragement,
and cautions” and download “new exercise scripts or programs to the local
system computer to implement these changes.” Id. at 2:56–3:3 (emphasis
added); see also id. at 10:48–50 (“information can be downloaded to the
local system . . . to, for example, change exercise scripts”). Operated in this
manner, the local system can serve as a “virtual personal trainer” for the
user. Id. at 2:54–55.
B. The Challenged Claims
Johnson challenges the patentability of claims 1–10 of the ’123 patent
(Pet. 7–50), and we instituted inter partes review of all ten claims (Dec.
Inst. 19). Claim 1 is the sole independent claim, and recites:
1. A local exercise system comprising:
at least one exercise apparatus; and
at least one associated local computer configured to
control an operation of said exercise apparatus based upon a
script stored in a read/write memory of said local computer,
said script having been received over a wide area network
interface from a remote server system, the script defining an
exercise session that is to be performed at the local system,
wherein the script specifies a number of exercise related steps
to be performed by the exercise apparatus as part of the exercise
session,
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wherein the local system is configured to detect a
selection corresponding to said script and to the exercise
session that is implemented during execution of said script,

wherein the local system is configured to process the
exercise session by initiating execution of the modifiable script
as part of the exercise session, and

wherein the local system is configured, in response to at
least one of monitored user performance or user input detected
at the local system, to determine to carry out a different number
of exercise related steps than the number of exercise related
steps specified by the script, and is configured to thereafter,
upon determining that the session has not been completed,
continue to process the exercise session.

Ex. 1001, 12:28–52.
C. The Instituted Grounds of Unpatentability
This inter partes review addresses the issue of whether claims 1–10 of
the ’123 patent would have been unpatentable under 35 U.S.C § 103 as
obvious over Dyer,3 or the combination of Dyer with Poulton.4
III. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Under this standard,
claim terms generally are given their ordinary and customary meaning, as
understood by one of ordinary skill in the art in the context of the patent’s
entire written disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). However, a “claim term will not receive its ordinary

3 US Patent No. 4,828,257, iss. May 9, 1989 (Ex. 1002).
4 US Patent No. 5,702,323, iss. Dec. 30, 1997 (Ex. 1012).
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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, the parties focus on the construction of three claim terms,
specifically, “script,” “wide area network interface,” and “exercise related
step.” As such, we make explicit the construction of these terms. All other
terms in the challenged claims need not be construed expressly.
1. “script”
Claim 1 recites that the local computer is configured to control the
exercise apparatus “based upon a script” stored in the computer’s memory.
Throughout the specification, the term “script” is used interchangeably with
the term “exercise program.” See, e.g., Ex. 1001, 2:53–54 (“exercise
program or script”), 3:2 (“new exercise scripts or programs”), 7:56–57 (“a
user ‘script’ of what kind of exercise program”). Stating the “exercise
program” of a user proceeds according to “scripts,” the specification further
explains that “[a] script is simply a sequence of exercise or other health-
related events that are performed in fixed or variable sequences.” Ex. 1001,
8:5–8. The specification goes on to describe a script in terms of “steps or
parameters [that] can be modified” (id. at 12–13) and “a desired exercise
session which can be varied” (id. at 23–24). Consistent with those
descriptions, we construe the term “script” to mean “an exercise program
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consisting of steps and parameters that may be performed in fixed or
variable sequence.”5
2. “wide area network interface”
Claim 1 recites the script as being received at the local computer
“over a wide area network interface” from the remote system. Johnson
proposes an interpretation of this term that includes a telephone modem and
line. Pet. 5–6. The claim term “wide area network” appears once in the
specification, which reads in pertinent part:
The computer 24 is also coupled to a modem 62 for
communication over a telephone line 30. Alternatively, the
computer 24 can be coupled to the remote computer 14 by other
communication linkages, such as ISDN digital transmission
line, via a local area network, or via a wide area network
(WAN) such as the Internet. In other words, the telephone line
30 represents only one type of data communication channel
between the local systems 12 and the remote system 14.

Ex. 1001, 5:59–66 (emphasis added).
This description gives one example of a “wide area network
interface,” namely, the internet, and describes the “wide area network” in
terms of a computer network. Importantly, the use of the words
“[a]lternatively” and “other” alters the plain meaning of the term by drawing
a clear distinction between “a wide area network” and “a telephone line.”
As described, the local system computer can be connected to the remote
system computer by “a modem [and] telephone line,” or alternatively, by
“other communication linkages,” such as “a wide area network (WAN).” Id.
That description distinguishes a wide area network link from a telephone

5 At oral hearing, Icon agreed that a “script” is an “exercise program” made
up of “sets” and associated “parameters” such as “weight” and “a number of
repetition[s].” Tr. 43–44.
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line link. As such, we are not persuaded that a “wide area network
interface” necessarily includes a modem/telephone line, as Johnson
proposes. See Pet. 5–6. Rather, in keeping with the broadest reasonable
interpretation consistent with the specification, we construe the term “wide
area network interface” to mean “a communication link with a network of
computers interconnected over a wide area, such as the internet.”
3. “exercise related step”
Claim 1 recites that the local system is configured “to carry out a
different number of exercise related steps than the number of exercise
related steps specified by the script.” Icon asserts that the term should be
construed as an exercise “set.” PO Resp. 9. Johnson does not propose any
construction for this term aside from its plain and ordinary meaning. Pet. 4.
The specification uses the term “step” in the context of describing the
“order and structuring of the script,” for example:
if it is detected that the user is getting tired due to a slowing of
the exercise repetition rate, the steps or parameters of the
exercise script can be modified accordingly. In other words,
certain script steps can be skipped or the parameters
concerning the steps can be modified. For example, if a user is
determined to be tiring by the local system 12, and if the script
says the next exercise event is to be ten repetitions on the
weight trainer 20, that step could be skipped. Alternatively, the
weight training step could still be done, but the resistance
parameters could be modified. For example, instead of doing
ten repetitions at a hundred pounds resistance on the weight
trainer 20, eight repetitions at eighty pounds of resistance might
be called for.

Ex. 1001, 8:10–22 (emphases added). This portion of the specification
distinguishes between “steps” and “parameters concerning the steps.” As
described, a “step” is a particular segment of an overall exercise program
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that includes either a particular station for weight training or a particular
group, or set, of repetitions on the weight trainer. In contrast, a “parameter”
is a characteristic of the weight training step, such as the precise number of
pounds or repetitions. Thus, changing the number of steps or segments of an
exercise program is distinct from changing the parameters that characterize
the particular step or segment. With that description in mind, we construe
the term “exercise related step” to mean “a particular segment of an exercise
program, where the segment may be a period of exercise on one of the
exercise stations used in the exercise program, or may be a group, or set, of
repetitions at one of the exercise stations.”
B. The Grounds of Obviousness
In the Preliminary Proceeding,6 we instituted trial on obviousness
grounds that included claims 1–10, determining there was a reasonable
likelihood that Johnson would prove the claims unpatentable over either
Dyer alone or in combination with Poulton. Dec. to Inst. 19. Rather than
address each of the ten claims on which we instituted trial, Icon, in its Patent
Owner Response, focuses exclusively claims 1, 2, 4, and 6. See PO Resp. 2,
13. That is, Icon presents evidence and argument only in support of “Claim
1,” “Claim 2,” “Claim 4,” and “Claim 6” (see id. at 6, 13, 17, 21), but is
silent on the patentability of claims 3, 5, and 7–10. Given Icon’s partial
response to the Petition, we divide our analysis in two parts, discussing, first,
those claims that Icon addresses in its Patent Owner Response, and, second,
those claims that Icon leaves unaddressed.

6 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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1. Claims 1, 2, 4, and 6

Johnson argues that claims 1, 2, 4, and 6 are unpatentable over Dyer
alone and provides a detailed explanation of how Dyer meets each limitation
of the claims. Pet. 6–9, 24, 33, 42. In case we do not find that Dyer teaches
a “wide area network interface,” as required by claim 1, Johnson relies on
Poulton as teaching an internet link for exercise stations and combines that
teaching with Dyer to argue unpatenability of the claims. Pet. 12–15, 25, 34,
43.
Like the claimed invention, Dyer discloses a “computer-controlled,
user interactive” exercise system that communicates “personalized
instructional and educational information to a user” and provides an
“exercise regimen which is automatically adjusted to meet the needs of a
user.” Ex. 1002, 1:12–20 (emphasis added). Also, like the claimed
invention, Dyer’s system includes a local system made up of at least one
“exercise station” equipped with a “central processor unit (CPU) . . . for use
in updating and evaluating user information” (id. at 5:49–59, 11:39–46), and
a remote “central computer” for communicating a user’s “performance
history, as well as their exercise program, to individual exercise stations”
(id. at 10:32–50). Each exercise station has a “visual display” and “voice
generator” for communicating “exercise instructions and performance
evaluations to the user” from the remote central computer. Id. at 8:53–9:1,
Fig. 4.
In operation, a user provides an identifier to the exercise station,
which accesses and retrieves information about the user from the remote
central computer. Id. at 3:57–65. “This user information is used in
developing any recommended changes in the user’s exercise program.” Id.
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at 3:65–67 (emphasis added). In turn, visual and audio instructions “are
provided to the user during the exercise period to further assist the user . . .
to achieve the desired aerobic or other condition during the exercise period.”
Id. at 4:18–26. Notably, as taught by Dyer, the system “automatically
updat[es] a user’s exercise program based upon his performance history,”
and “optimiz[es] the value of the exercise session,” by providing “real-time
performance evaluations and coaching instructions to a user of the exercise
equipment.” Id. at 3:11–21 (emphases added). As a result, the system
serves to emulate “a live coach/participant situation.” Id. at 4:26–30.
a. Independent Claim 1
Icon seeks to distinguish Dyer from the claimed invention, arguing
that Dyer’s local system cannot “determine to carry out a different number
of exercise related steps than the number of exercise related steps specified
by the script,” as required by claim 1. PO Resp. 8. This limitation,
according to Icon, requires that the exercise system be able to evaluate and
change the “number of sets” that a user performs during a given exercise
session. Id. at 9. On that basis, Icon asserts that Dyer “never indicates that a
number of sets (i.e., steps) of an exercise are adjusted” in the course of a
workout, but only that “the weight or pace (i.e., a parameter) is adjusted.”
Id. at 9. In Icon’s view, the quantity of sets in Dyer always remains the
same, and although Dyer may enable the parameters of a set, that “is not
akin to changing steps . . . because steps and parameters are clearly
distinguished from one another in the Board’s claim construction.” Id. at 12.
Although Icon is correct that we construe a “step” to be different from
a “parameter,” Icon’s assertion that Dyer is limited to changing only
parameters of an exercise, but not the number of steps (or sets), fails to read
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Dyer “for all that it teaches.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir.
2012). On its face, Dyer teaches that “[d]uring any given exercise period,
user performance is continuously evaluated” by the system. Ex. 1002, 4:18–
26 (emphasis added). That continuous evaluation, according to Dyer,
consists of assisting the user “through each repetition of the exercise” and
providing “on-line, real-time evaluation and instructions to the user
regarding performance of his exercise program.” Id. at 4:53–63. And
because user performance is evaluated in “real time,” Dyer explains that the
system is capable of “automatically producing changes to the user’s exercise
program in view of the user’s performance history.” Id. at 4:63–5:1
(emphasis added); see also id. at 48:23–26 (“providing an exercise system
which uses the present and past user performance history in addition to
demographic data for developing changes to the user’s exercise program”)
(emphasis added). Those passages support a broader view of Dyer as
teaching a system that can make changes to the “exercise program” as a
whole, be it the parameters of an exercise in particular or the number of sets
in general.
Icon’s narrow reading of Dyer as failing to teach adjustments to the
“number of sets” ignores that Dyer is concerned with evaluating a user’s
performance in real time, and then, based on that real time evaluation,
instructing the user on how to improve performance by making “changes to
the user’s exercise program.” Id. at 48:25–26. Although portions of Dyer
focus on changes to parameters, such as number of repetitions and levels of
resistance, Dyer does not rule out changes to other aspects of the “exercise
program.” In the fitness world, an exercise program has long been known to
be defined by both the number of repetitions and the number of sets. Ex.
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1017 at 9–10, 34, 43. In fact, Dyer describes the exercise routine in terms of
“the number of sets of a given exercise performed, and the total number of
repetitions of the exercise performed.” Ex. 1002, 22:19–27. Dyer even
defines what is meant by a “set.” Id. at 22:23–27. Nothing in Dyer suggests
that the system’s ability to change the “exercise program” would not also
encompass the ability to change the number of sets.
Indeed, elsewhere, Dyer describes a “preferred embodiment” that can
“determine proposed changes to the exercise program” by tracking the
number of “sets” performed by a user and deriving a “rating” of the user’s
performance. Ex. 1002, 47:7–54. According to Dyer, the system “calculates
the rating average for all of the sets of the exercise session,” which “could
include those sets comprising an exercise session on the current local station,
and it could also include those sets performed on other local exercise
stations during the user's current, total exercise session.” Id. at 47:31–36
(emphasis added). After assessing the number of sets, the system
“communicates to the user any recommended weight change.” Id. at 47:40–
41. Given that the user is rated on the number of “sets performed,” a skilled
artisan would have understood that, in order to improve the user’s overall
rating, the changes recommended by Dyer’s system would include changes
to the number of sets to be performed in the future.
In another embodiment, Dyer likewise teaches that the system
“compares the number of sets completed with the value of sets to be
completed in a given session” and “instruct[s] the user based on his overall
performance on several stations.” Id. at 47:55–61 (emphasis added). “If the
user skips one or more exercise stations,” the system “notes this and advises
the user,” including making “appropriate coaching instructions.” Id. at
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47:64–48:1. Dyer’s disclosure that the system can advise and instruct a user
based on whether the user completed a “number of sets,” or skipped a
“station,” indicates that the system can instruct the user to change the
number of sets or stations in response to the user having skipped a set or
station.
Icon attempts to distinguish Dyer by arguing that “it is the user that
determines whether to skip a step,” not the system. PO Resp. 14–15. We do
not find this argument persuasive because the claim language expressly
contemplates that the user may be involved in the determination of a
different number of steps. Specifically, as claimed, the determination is
carried out “in response to at least one of monitored user performance or
user input.” That means either the user or the system can initiate the
determination to change the number of steps. Dyer satisfies the claim
language because a skilled artisan would understand Dyer’s system to be
advising and instructing the user on changes to the exercise program only
after the user has skipped a set or a station, i.e., in response to user input.
See Ex. 1017 at 48 (testimony by Icon’s declarant that, in Dyer, “if the user
was not conforming to the computer expectations, there would be some
notification that—that the session isn’t going according to plan and then the
user then would opt—could opt to change the number of repetitions or the
number of sets or eliminate use of the machine”).
Also, in arguing that Dyer is limited to changing parameters, and not
sets, Icon points to an “initialization procedure” in which Dyer only
describes adjustments to “repetitions and weight.” PO Resp. 10–11.
However, the “initialization procedure” in Dyer pertains to establishing a
“beginning weight,” or “starting weight,” for the first repetition of an
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exercise routine that has yet to be determined. Ex. 1002, 36:3–46. Because
the sole objective of initialization is to determine the “initial weight value”
of “one repetition,” that section of Dyer, naturally, would not mention a
number of sets. See id. at 36:24–64; see also Ex. 1017 at 31–37 (testimony
by Icon’s declarant that initialization is “not a workout” because “[w]hat it’s
looking for is the—what’s called the one rep maximum.”) and Ex. 2006 at
24–25 (testimony by Johnson’s declarant that initialization is “a one shot
deal”). Moreover, there is no evidence that Dyer’s discussion of
“initialization” negates in any way its teachings elsewhere, as discussed
above, of the ability to change the exercise program after initialization is
complete. See In re Inland Steel Co., 265 F.3d 1354, 1361 (Fed. Cir. 2001)
(the entire disclosure of a reference must be considered for what it fairly
teaches one of ordinary skill in the art).
Given Dyer’s extensive discussion of evaluating and instructing users
based on their completion of “sets” or “stations” in a given exercise
program, we find that a skilled artisan would have understood Dyer’s
teaching of “automatically producing changes to the user’s exercise program
in view of the user’s performance history” (Ex. 1002, 4:63–5:1) to
encompass not only changes to the precise parameters of a particular
exercise, but also changes to the number of sets in general. Thus, we
conclude that Johnson has proven by preponderant evidence that Dyer is
capable of “carrying out a different number of sets than the number
originally prescribed by the exercise program,” as required by claim 1.
Claim 1 also requires that local system receive the exercise program,
or script, “over a wide area network interface” with the remote system.
Johnson argues that Dyer’s disclosure of transmitting data between the local
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and remote systems via “outside computers,” “telephone communication
systems,” and a “modem” would have suggested a “wide area network
interface.” Pet. 6–9 (citing Ex. 1002 10:51–63). Johnson’s declarant adds
that “in 1995, interaction with the internet was commonly done via a
telephone modem connected to a telephone line” and “even though a
telephone line is not necessarily a wide area network, a modem connected to
a telephone line is clearly a ‘wide area network interface.’” Ex. 1016
¶ 10(d). Also, Johnson argues that, if Dyer is found not to teach a “wide
area network interface,” a skilled artisan nonetheless would have found it
obvious to modify Dyer’s transmission link to incorporate the internet
because Poulton teaches that “the worldwide web or internet” can be used
for linking exercise apparatus “between users remotely spaced from one
another.” Pet. 12–15 (citing Ex. 1012).
In its Patent Owner Response, Icon does not dispute that, in the
relevant time frame, a skilled artisan would have considered the internet to
be a well-known interface for transmitting information between remote
computers, nor does Icon dispute that a skilled artisan, viewing Dyer’s
disclosure of transmitting information via a modem/telephone link, would
have considered the internet as an obvious substitution.7 See PO Resp. 8–17
(focusing exclusively on the limitation that the system “carry out a different
number of exercise related steps . . .”). Likewise, Icon does not dispute that
Poulton teaches the internet as an obvious substitution for the
modem/telephone link of Dyer. See id. at 17. After due consideration, we

7 Icon argued in the Preliminary Proceeding that neither Dyer alone nor Dyer
in view of Poulton teaches or suggests a “wide area network interface,” as
required by claim 1. Dec. to Inst. 10–12. In its Patent Owner Response,
however, Icon no longer posits this argument.
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find that a preponderance of the evidence shows that a skilled artisan,
viewing the teachings of Dyer alone or in combination with Poulton, would
have been led to utilize the internet as the communication link for Dyer’s
exercise system in order to obtain quicker access to larger amounts of
information at remote locations. See Pet. 15.
After considering the totality of the evidence and argument presented
by Johnson and Icon, we also find that Dyer teaches or suggests the
remaining limitations of claim 1. Accordingly, we conclude that a
preponderance of the evidence shows that claim 1 would have been
unpatentable for obviousness over Dyer alone or in combination with
Poulton.
b. Dependent Claims 2, 4, and 6
Johnson relies on Dyer as teaching the limitations of claims 2, 4, and
6. Pet. 24–26, 33–34, 42–44. Unlike other dependent claims, Icon argues in
support of patentability for claims 2, 4, and 6. PO Resp. 13, 17–25. For the
reasons that follow, we conclude that a preponderance of the evidence
demonstrates that these claims are unpatentable.
Claim 2, which depends directly from claim 1, adds the limitation that
the local system is able to carry out a different number of steps “by skipping
at least one of the specified steps.” Icon relies on the same arguments for
patentability of claim 2 as it does for claim 1. PO Resp. 13–14. As
discussed above, Dyer teaches that the system monitors whether the user
“finish[es] all sets” or “skips one or more stations” (Ex. 1002, 47:55–67),
and based on that performance, instructs the user on “proposed changes to
the exercise program” (id. at 47:7–10). We find that a skilled artisan would
have understood those teachings by Dyer to mean that the system can
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instruct the user to either finish the set or station, or skip it entirely. As such,
we determine that a preponderance of the evidence demonstrates that claim 2
would have been obvious over Dyer alone, or Dyer and Poulton in
combination.
Claim 4 depends from claim 3, and recites that the local system is
configured to “generate audio” about “a change in resistance” for the
particular exercise “prior to” the change actually occurring. Icon argues that
neither Dyer alone nor Dyer in combination with Poulton teaches or suggests
“audio that is directly related to a change in resistance . . . prior to the
change in resistance actually occurring.” PO Resp. 18. We disagree. Dyer
teaches expressly that:
Visual and audio instructions and evaluation information are
provided to the user during the exercise period to further assist
the user in exerting the appropriate amount of force to achieve
the desired aerobic or other condition during the exercise
period. These instructions and evaluation information are
preferably communicated to the user audibly to provide verbal
motivation to the user similar to that received in a live
coach/participant situation.” Id. at 4:23–30

Ex. 1002, 4:22–26.
Importantly, Dyer goes on to explain that, in making changes to a
user’s exercise program, the CPU communicates a number of instructions to
the user, including “any recommended weight change and preferably also []
an explanation to the user as to why the resistance . . . should be changed.”
Id. at 47:7–10, 40–43 (emphasis added). In another section, Dyer discloses
that the system audibly instructs the user of a reduction in weight before the
next set is begun: “With the weight reduced, the CPU passes to block 675
and produces an audible and optionally visual output indicating that the
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weight has been reduced, and requesting the user to please continue with the
exercise session.” Id. at 33:37–59 (emphasis added). Contrary to Icon’s
assertions, these express teachings by Dyer indicate that the verbal warning
of a new resistance/weight level occurs “prior to” the user undertaking the
exercise. As such, we conclude that a preponderance of the evidence
demonstrates a skilled artisan would have understood Dyer as teaching the
limitations of claim 4.
Claim 6 depends from claim 5. Together these claims add that the
“audio” or “verbal recitation” generated by the system include “a
description” and “a duration of time” for the exercise event. Icon argues that
these limitations are not met because Dyer “does not calculate, determine, or
otherwise identify a duration of time related to a user’s pace.” PO Resp. 23.
We disagree. Dyer expressly teaches that the system includes a “speech
generator” which verbally “advise[s] the user if he is going too fast or too
slow” and “will periodically give the user positive reinforcement.” Ex.
1002, 16:61–17:4. We find that Dyer’s teaching of verbally advising and
reinforcing a user as to their pace for a given exercise would have suggested
to a skilled artisan including, as part of the verbal advice, the length of time
a user needs to maintain that pace. As such, we conclude that a
preponderance of the evidence shows a skilled artisan would have
understood Dyer as teaching the limitations of claim 6.
2. Dependent Claims 3, 5, and 7–10
Johnson relies on Dyer for teaching the limitations of claims 3, 5, and
7–10. These claims define further the terms, “audio” and “exercise event,”
as used in the other claims. In its Petition, Johnson presents credible and
probative evidence pointing towards the unpatentability of claims 3, 5, and
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7–10. Pet. 24–26, 33–34, 42–44. In its Response, however, Icon never
disputes Johnson’s challenge to these dependent claims. PO Resp. 6–25.
Inter partes review, by its very nature, is meant to be an interactive
process between petitioner and patent owner. In that regard, our rules
instruct that the patent owner response “must include a statement identifying
material facts in dispute. Any material fact not specifically denied may be
considered admitted.” 37 C.F.R. § 42.23(a). In addition, our trial practice
guide provides 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. 48,756, 48,766 (Aug. 14, 2012).
Here, Johnson presents persuasive evidence and argument showing
unpatentability of claims 3, 5, and 7–10. In contrast, Icon does not articulate
any reason for patentability of these claims. Absent any rebuttal from Icon,
we will not scour the record in an effort to save the unaddressed claims.
Upon review of Johnson’s case, a preponderance of the evidence shows a
skilled artisan would have understood Dyer as teaching the limitations of
claims 3, 5, and 7–10. As such, those claims are unpatentable as obvious.
IV. CONCLUSION
Johnson has proven by a preponderance of the evidence that claims 1–
10 of the ’123 patent are unpatentable for obviousness over Dyer alone, or
Dyer and Poulton, under 35 U.S.C. § 103. This is a Final Written Decision
of the Board under 35 U.S.C. § 318(a).
V. ORDER
Accordingly, it is hereby:
ORDERED that claims 1–10 of the ’123 patent have been proven to
be unpatentable by a preponderance of the evidence; and
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Patent 8,298,123 B2

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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.

PETITIONERS:

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

PATENT OWNER:

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