Case 1:20-cv-00662-RGA Document 141 Filed 09/10/21 Page 1 of 15 PageID #: 4449
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`IN THE UNITED STATES DISTRJCT COURT
`FOR THE DISTRJCT OF DELAWARE
`
`PELOTON INTERACTIVE, INC.,
`
`Plaintiff and
`Counter-Defendant,
`
`V.
`
`Civil Action No. 20-662-RGA
`
`ICON HEAL TH & FITNESS, INC.,
`
`Defendant and
`Counterclaimant.
`
`MEMORANDUM OPINION
`
`Michael J. Flynn, Andrew M. Moshos, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
`Wilmington, DE; Steven N. Feldman, LATHAM & WATKINS LLP, Los Angeles, CA;
`Lawrence J. Gotts (argued), Susan Y. Tull, Gabriel K. Bell, LATHAM & WATKINS LLP,
`Washington, D.C. ; Marc N. Zubick, LATHAM & WATKINS LLP, Chicago, IL; David F.
`Kowalski (argued), LATHAM & WATKINS LLP, San Diego, CA; William J. Trach, LATHAM
`& WATKINS LLP, Boston, MA; Joseph C. Akalski (argued), LATHAM & WATKINS LLP,
`New York, NY, Attorneys for Plaintiff and Counter-Defendant.
`
`Frederick L. Cottrell, III, Christine D. Haynes, RJCHARDS , LAYTON & FINGER LLP,
`Wilmington, DE; David R. Wright, Taylor J. Wright, MASCHOFF BRENNAN, Salt Lake City,
`UT; Charles J. Veverka (argued), Ray Nelson (argued), MASCHOFF BRENNAN, Park City,
`UT; Sterling A. Brennan (argued), MASCHOFF BRENNAN, Irvine, CA, Attorneys for
`Defendants.
`
`SeptemberJ.i, 202 1
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`

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`Case 1:20-cv-00662-RGA Document 141 Filed 09/10/21 Page 2 of 15 PageID #: 4450
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`~~STRJ
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`Before me is a claim construction dispute concerning U.S. Patent No. 6,601 ,016 (the ' 016
`
`Patent) and U.S. Patent No. 7,556,590 (the' 590 Patent). The parties submitted a Joint Claim
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`Construction Brief (D.I. 113) and the Court held a Markman Hearing on June 25, 2021. (D.I.
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`126). Following the hearing, the parties submitted supplemental letters to the Court concerning
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`several terms. (D.I. 130; D.I. 131). As many terms were resolved by agreement of the parties or
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`at the hearing (see D.I. 124; D.I. 126 at 11:1-12), this opinion addresses only the remaining
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`terms: XML, mark-up language, translator device, and the four "means of comparing" claims.
`
`I.
`
`BACKGROUND
`
`The asserted patents generally disclose methods of monitoring fitness activity and
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`facilitating communication between exercise devices and computers. (' 590 Patent 1 :40-49; ' 0 16
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`Patent 1 :20-31). Per the parties' briefing, the following claims are representative:
`
`'016 Patent, Claim 49:
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`49. A method for competing against a plurality of exercisers, said method comprising the
`steps of:
`receiving current fitness activity for a first exerciser exercising on a first exercise
`machine in a particular mark-up language format at an exercise machine monitor for
`monitoring exercise performed by a second exerciser on a second exercise machine,
`wherein said current fitness activity is received at said exercise machine monitor from
`a universally accessible server system, wherein said current fitness activity for a first
`exerciser is identified by a universal identifier associated with said first exerciser; and
`displaying a graphical comparison of said current fitness activity for said first exerciser
`with current fitness activity for said second exerciser from an output interface
`controlled by said exercise machine monitor, such that said second exerciser is
`enabled compete against a plurality of exercisers.
`
`'590 Patent Claim 1:
`
`1. A system configured to enable a plurality of users to compete in a virtual race, the
`system comprising:
`a first exercise device communicatively connected to a first computer device, the first
`exercise device being adapted to communicate using an exercise communication
`protocol and the first computer device being adapted to communicate using a
`
`2
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`computer communication protocol, the exercise communication protocol and the
`computer communication protocol being different types of communication protocols,
`wherein the first computer device is configured to monitor use of the first exercise
`device relative to a first start time, and wherein the communication of the first
`exercise device and the first computer device is facilitated by a first translator device
`adapted to translate data between the exercise communication protocol and the
`computer communication protocol;
`a second exercise device communicatively connected to a second computer device, the
`second exercise device being adapted to communicate using the exercise
`communication protocol and the second computer device being adapted to
`communicate using the computer communication protocol, wherein the second
`computer device is configured to monitor use of the second exercise device relative to
`a second start time, and wherein the communication of the second exercise device and
`the second computer device is facilitated by a second translator device adapted to
`translate data between the exercise communication protocol and the computer
`communication protocol;
`means for comparing the use of the first exercise device relative to the first start time
`with the use of the second exercise device relative to the second start time; and
`means for providing communication between the first computer device, the second
`computer device and the comparing means.
`
`II.
`
`LEGAL STANDARD
`
`"It is a bedrock principle of patent law that the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude." Phillips v. AWHCorp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) ( en bane) (internal quotation marks omitted). "' [T]here is no magic formula or
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`catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
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`weight to appropriate sources ' in light of the statutes and policies that inform patent law."'
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`SoftView LLC v. Apple Inc. , 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
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`415 F.3d at 1324) (alteration in original). When construing patent claims, a court considers the
`
`literal language of the claim, the patent specification, and the prosecution history. Markman v.
`
`Westview Instruments, Inc. , 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370
`
`(1996). Of these sources, "the specification is always highly relevant to the claim construction
`
`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."
`
`Phillips, 415 F.3d at 1315 (internal quotation marks omitted).
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`"[T]he words of a claim are generally given their ordinary and customary meaning ....
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`[Which is] the meaning that the term would have to a person of ordinary skill in the art in
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`question at the time of the invention, i.e., as of the effective filing date of the patent application."
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`Id. at 1312-13 ( citations and internal quotation marks omitted). "[T]he ordinary meaning of a
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`claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321
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`(internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as
`
`understood by a person of skill in the art may be readily apparent even to lay judges, and claim
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`construction in such cases involves little more than the application of the widely accepted
`
`meaning of commonly understood words." Id. at 1314.
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`When a court relies solely upon the intrinsic evidence-the patent claims, the
`
`specification, and the prosecution history-the court' s construction is a determination oflaw.
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`See Teva Pharrn. USA, Inc. v. Sandoz, Inc., 574 U.S. 318,331 (2015). The court may also make
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`factual findings based upon consideration of extrinsic evidence, which "consists of all evidence
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`external to the patent and prosecution history, including expert and inventor testimony,
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`dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19 (internal quotation marks
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`omitted). Extrinsic evidence may assist the court in understanding the underlying technology,
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`the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic
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`evidence, however, is less reliable and less useful in claim construction than the patent and its
`
`prosecution history. Id.
`
`"A claim construction is persuasive, not because it follows a certain rule, but because it
`
`defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa ' per
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`Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would
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`exclude the inventor's device is rarely the correct interpretation." Osram GMBHv. Int '! Trade
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`Comm 'n, 505 F.3d 1351 , 1358 (Fed. Cir. 2007) (citation and internal quotation marks omitted).
`
`III.
`
`CONSTRUCTION OF DISPUTED TERMS
`
`A. "Extensible mark-up language" ('016 Patent claims 2, 18, 34)
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`a. Peloton 's proposed construction: Plain meaning, i.e., XML. Otherwise, indefinite.
`
`b. ICON 's proposed construction: a markup language that accommodates additions,
`
`for example, designed-defined tags.
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`c. Court's pre-Markman proposed construction: XML.
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`d. Court's construction: XML.
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`ICON disagreed with the Court' s proposed construction but did not seek further
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`argument. (D.I. 124 at 1). As such, I will adopt the Court' s proposed construction of "XML"
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`which I believe accords with the plain meaning of the term.
`
`B. "Mark-up language" ('016 Patent claims 1, 2, 17, 18, 33, 34, 49, 53)
`
`a. Peloton 's proposed construction: XML or other computer language that describes
`
`how to perform actions such as displaying and printing a text document in a
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`device-independent way through the use of corresponding textual tags. Otherwise,
`
`indefinite.
`
`b. Peloton 's amended proposed construction: A computer language that identifies
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`data with tags around text consisting of angle bracket delimiters and tag names.
`
`c.
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`ICON's proposed construction: a data transmission protocol that identifies data
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`with tags.
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`d. ICON 's amended proposed construction: a data structure format that identifies
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`data with tags.
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`e. Court's pre-Markman proposed construction: A computer language that identifies
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`data with tags.
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`f. Court 's construction: A computer language that identifies data with tags.
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`At oral argument, the parties focused solely on the use of the word "tag" in the Court's
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`proposal. Peloton requested an amendment to the Court's proposed construction that further
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`defined "tag" as "consisting of angle bracket delimiters and tag names." (D.I. 126 at 9:7-11 ).
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`Following argument on this topic, the Court invited the parties to submit a letter supplying
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`technical dictionaries or other relevant extrinsic evidence on the definition of "tag" in the context
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`of a mark-up language. (Id. at 22:22-24:6).
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`Upon review of the extrinsic evidence, I do not think it is appropriate to add Peloton's
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`proposed additional language to "tag." The parties submitted numerous relevant sources, but I
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`do not see one that required a tag to consist of delimiters on both sides of the text or that the
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`delimiters needed to be angle brackets. For example, several of Peloton' s cited definitions were
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`limited to HTML, a specific mark-up language. (D.I. 131-1 , at Ex. 3, Ex. 4, Ex. 6, Ex. 10).
`
`Others introduce a broad definition and typically use HTML as an example. (See, e.g., id. at Ex.
`
`1 ). One such definition is reproduced below:
`
`tag n. 1. In programming, one or more characters containing information about a
`file, record type, or other structure. 2. In certain types of data files, a key or an
`address that identifies a record and its storage location in another file. [] 3. In
`markup languages such as SGML and HTML, a code that identifies an element in
`a document, such as a heading or a paragraph, for the purposes of formatting,
`indexing, and linking information in the document. In both SGML and HTML, a
`tag is generally a pair of angle brackets that contain one or more letters and
`numbers. Usually one pair of angle brackets is placed before an element, and
`another pair is placed after, to indicate where the element begins and ends. For
`example, in HTML, <I>hello world</I> indicates that the phrase "hello world"
`should be italicized.
`
`(Id. (citing MICROSOFT COMPUTER DICTIONARY 435 (4th ed. 1999)).
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`Other definitions contemplate both "single and compound tags." But a "single tag" would
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`conflict with Peloton' s proposed requirement that tags be "around text" (thus, always requiring a
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`compound tag).1 (Id. at Ex. 3 (describing single and compound tags in the context of HTML)).
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`While I do not doubt that Peloton's proposed definition describes a common form of a markup
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`language, the proffered definitions do not support limiting the disputed term to this form alone.
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`Thus, I will adopt the Court's initial proposed construction, without a further limitation on "tag."
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`C. "Translator Device[s]" (' 590 Patent claims 1, 13)
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`a. Peloton 's proposed construction: Function (Claim 1): translating data between
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`the exercise communication protocol and the computer communication protocol;
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`Function (Claim 13): the function of claim 1, and also "communicatively
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`coupling the first and second exercise devices to the means for comparing so as to
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`facilitate communication of data representative of the performance of each of the
`
`plurality of users between the first and second exercise devices and the means for
`
`comparing;" Structure: indefinite.
`
`b. ICON's proposed construction: a device or structure configured to translate and
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`exchange data between different data formats.
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`c. Court 's construction: Indefinite.
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`The parties dispute whether 35 U.S.C . § 112(6) applies to "translator device." ICON
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`asserts that Peloton cannot overcome the presumption that § 112( 6) does not apply where the
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`term does not recite "means" because the specification discloses a definite structure. (D.I. 113 at
`
`1 Peloton' s letter offers a modification on its proposed construction to "clarify that markup
`languages provide for corresponding textual tags ( compound tags) - but may also support certain
`pre-defined single tags." (D.I. 131 at 3). The modified proposal is "a computer language that
`provides for identifying data with tags around text consisting of angle bracket delimiters and tag
`names." (Id.) .
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`69). Peloton argues that ICON, because it relies on the specification to provide structure, has
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`conceded that§ 11 2(6) applies. (Id. at 73).
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`Williamson v. Citrix Online, LLC provides the relevant standard. 792 F.3d 1339 (Fed.
`
`Cir. 2015). In Williamson , the Federal Circuit explained that the appropriate inquiry "is not
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`merely the presence or absence of the word 'means' but whether the words of the claim are
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`understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the
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`name for structure." Id. at 1348 (en bane). When deciding if the claims had a sufficiently
`
`definite meaning, the Court considered whether anything in the written description and
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`prosecution history "might lead us to construe that expression as the name of a sufficiently
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`definite structure as to take the overall claim limitation out of the ambit of§ 112." Id. at 1351.
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`Claim 1 recites, "a [] translator device adapted to translate data between the exercise
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`communication protocol and the computer communication protocol." ' 590 Patent 30:33-36.
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`Similarly, claim 13 describes, "translator devices are configured to communicatively couple the
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`first and second exercise devices to the means for comparing so as to facilitate communication of
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`data representative of the performance of each of the plurality of users between the first and
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`second exercise devices and the means for comparing." ' 590 Patent 32:5-11 & Certificate of
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`Correction.
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`The claim language is functional. "Device," a classic nonce word, does not provide any
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`indication of structure. Mass. Ins. of Tech. & Elecs. For Imaging, Inc. v. Abacus Software , 462
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`F.3d 1344, 1354 (Fed. Cir. 2006) ("The generic terms ' mechanism,' ' means,' ' element,' and
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`' device,' typically do not connote sufficiently definite structure."). Nor does "translator," as it
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`merely describes the function of the device. ICON' s briefing does not argue that "translator
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`device" is a term of art or connotes a structure known to a POSA. At the Markman Hearing,
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`ICON did state that a POSA would know that a "translator device" is a "piece of hardware that
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`translates from one communication protocol to the next," but ICON' s expert does not appear to
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`offer a statement to that effect. (D.I. 126 at 55:24-56:4). While the specification does frequently
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`refer to a "translator device," it does not suggest that the term has a defined structure. See, e.g. ,
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`' 590 Patent 14:22-33 ("Those skilled in the art will appreciate that computer device 14 and/or
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`translator device 13 may take a variety of configurations, including personal computers, hand(cid:173)
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`held devices, multi-processor systems, microprocessor-based or programmable consumer
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`electronics, telephones, network PCs, mini-computers, mainframe computers, and the like.").
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`Applying Williamson , I agree that the term is properly subject to § 112(6). ICON' s
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`briefing urges the court to conflate the initial Williamson analysis with the subsequent
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`application of§ 112(6) and find that the specification discloses a sufficient structure. (D.I. 113 at
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`68-70). The Federal Circuit, however, has cautioned against this, explaining, "That the
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`specification discloses a structure corresponding to an asserted means-plus-function claim term
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`does not necessarily mean that the claim term is understood by persons of ordinary skill in the art
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`to connote a specific structure or a class of structures." MID Prods. Inc. v. Iancu, 933 F.3d 1336,
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`1344 (Fed. Cir. 2019). Thus, I will proceed to the§ 112(6) analysis.
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`The first step in construing a means-plus-function term is to identify the claimed
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`function. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012). Peloton proposes
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`functions for claim 1 and claim 13 (given above) and ICON has not disputed them.
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`Next, the Court must "identify corresponding structure in the written description of the
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`patent that performs the function." Id. ICON' s briefing does touch on structure in the context of
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`its arguments under Williamson , but the briefing does not address the presence of an algorithm.
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`(D.I. 113 at 68-69). Figure 8 in the ' 590 Patent depicts the "translator device" as consisting of
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`two interfaces, a microcontroller, an inverter, and a converter. Additionally, the specification
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`states that "the translation is performed by microcontroller 164." '590 Patent 16:26-27. Where
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`the disclosed structure is a computer or microprocessor, the specification must additionally
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`specify an algorithm. Net MoneyIN, Inc. v. VeriSign, Inc. , 545 F.3d 1359, 1367 (Fed. Cir. 2008)
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`(explaining that "in a means-plus-function claim in which the disclosed structure is a computer,
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`or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the
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`general purpose computer, but rather the special purpose computer programmed to perform the
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`disclosed algorithm") ( quoting Aristocrat Techs. Aust!. Pty. Ltd. v. Int 'l Game Tech. , 521 F .3d
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`1328, 1333 (Fed. Cir. 2008) (internal quotation omitted)).
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`Peloton raised the absence of an algorithm in its briefs and ICON did not dispute it or
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`attempt to identify an algorithm. Thus, I find that the term "translator device" is indefinite.
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`D. "Means for Comparing" ('590 Patent claims 1, 13, 14, 17)2
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`a. Peloton 's proposed construction (Claim 1): Function: comparing the use of the
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`first exercise device relative to the first start time with the use of the second
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`exercise device relative to the second start time" Structure: indefinite.
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`b. ICON's proposed construction (Claim]): Function: agreed. Structure: a remote
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`system, such as3 Server (216), Communication System (18), and/or Remote
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`computer (148) that can be accessed via a network connection such as that
`
`disclosed at (16), (150), ( 154 ), or (21 O); one or more Computer Devices (212a-n),
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`2 The proposed constructions reproduced below reflect the contents of the Joint Claim
`Construction Brief. (D.I. 113). ICON later clarified its position on algorithmic disclosure. (See
`D.I. 123).
`3 I have doubts about the "such as" language ICON proposes for each of the constructions, but
`the parties have not raised any concerns about it.
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`one or more Translator Devices4 (220a-n), and/or Exercise Devices (222a-n) that
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`can access/communicate with the remote system via the network connection.
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`c. Peloton 's proposed construction (Claim 13): Function: the function of the means
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`for comparing claim 1, and "comparing the performance of each of the plurality
`
`of users and notify one of the plurality of users of the performance of another of
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`the plurality of users." Structure: indefinite.
`
`d. ICON's proposed construction (Claim 13): Function: agreed. Structure: a
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`remote system, such as Server (216), Communication System (18), and/or Remote
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`computer (148) that can be accessed via a network connection such as that
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`disclosed at (16), (150), (154), or (210); one or more Computer Devices (212a-n),
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`one or more Translator Devices (220a-n), and/or Exercise Devices (222a-n) that
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`can access/communicate with the remote system via the network connection.
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`e. Peloton 's proposed construction (Claim 14) : Function: the function of the means
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`for comparing claims 1 and 13, and "comparing the performance of each of the
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`plurality of users based on an order in which each of the plurality of users
`
`completed the virtual race." Structure: indefinite.
`
`f.
`
`ICON 's proposed construction (Claim 14) : Function: agreed. Structure: a
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`remote system, such as Server (216), Communication System (18), and/or Remote
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`computer ( 148) that can be accessed via a network connection such as that
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`disclosed at (16), (150), (154), or (210); one or more Computer Devices (212a-n),
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`4 The parties do not raise issues about "translator devices" in connection with the disputes about
`these terms.
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`one or more Translator Devices (220a-n), and/or Exercise Devices (222a-n) that
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`can access/communicate with the remote system via the network connection.
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`g. Peloton 's proposed construction (Claim 17) : Function: the function of the means
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`for comparing of claims 1 and 13, and "notifying each of the plurality of users of
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`a winner of the virtual race subsequent to the end of the virtual race." Structure:
`
`indefinite.
`
`h. ICON's proposed construction (Claim 17) : Function: agreed. Structure: a
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`remote system, such as Server (216), Communication System (18), and/or Remote
`
`computer (148) that can be accessed via a network connection such as that
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`disclosed at (16), (150), (154), or (210); one or more Computer Devices (212a-n),
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`one or more Translator Devices (220a-n), and/or Exercise Devices (222a-n) that
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`can access/communicate with the remote system via the network connection.
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`1. Court 's construction (Claim 1): Function: agreed. Physical structure: a remote
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`system, such as Server (216), Communication System (18), and/or Remote
`
`computer (148) that can be accessed via a network connection such as that
`
`disclosed at (16), (150), (154), or (210); one or more Computer Devices (212a-n),
`
`one or more Translator Devices (220a-n), and/or Exercise Devices (222a-n) that
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`can access/communicate with the remote system via the network connection.
`
`Algorithmic Structure: Figure 11 and the corresponding specification disclosure
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`of step 242 to step 256, Figure 12 and the corresponding specification disclosure
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`of step 270 to step 282.
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`J. Court 's Construction (Claim 13) : Function: agreed. Physical Structure: a
`
`remote system, such as Server (216), Communication System (18), and/or Remote
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`computer ( 148) that can be accessed via a network connection such as that
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`disclosed at (16), (150), (154), or (210); one or more Computer Devices (212a-n),
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`one or more Translator Devices (220a-n), and/or Exercise Devices (222a-n) that
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`can access/communicate with the remote system via the network connection.
`
`Algorithmic Structure: Figure 11 and the corresponding specification disclosure
`
`of step 242 to step 256, Figure 12 and the corresponding specification disclosure
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`of step 270 to step 282.
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`k. Court's Construction (Claim 14) : Function: agreed. Physical Structure: a
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`remote system, such as Server (216), Communication System (18), and/or Remote
`
`computer (148) that can be accessed via a network connection such as that
`
`disclosed at (16), ( 150), (154 ), or (21 0); one or more Computer Devices (212a-n),
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`one or more Translator Devices (220a-n), and/or Exercise Devices (222a-n) that
`
`can access/communicate with the remote system via the network connection.
`
`Algorithmic Structure: Figure 11 and the corresponding specification disclosure
`
`of step 242 to step 256, Figure 12 and the corresponding specification disclosure
`
`of step 270 to step 282.
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`1. Court's Construction (Claim 17): Function: agreed. Physical Structure: a
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`remote system, such as Server (216), Communication System (18), and/or Remote
`
`computer (148) that can be accessed via a network connection such as that
`
`disclosed at (16), (150), ( 154 ), or (21 0); one or more Computer Devices (212a-n),
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`one or more Translator Devices (220a-n), and/or Exercise Devices (222a-n) that
`
`can access/communicate with the remote system via the network connection.
`
`Algorithmic Structure: Figure 11 and the corresponding specification disclosure
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`of step 242 to step 256, Figure 12 and the corresponding specification disclosure
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`of step 270 to step 282.
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`With respect to all the "means for comparing" claims, the parties contest the limitations
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`of the algorithmic disclosure identified by ICON. (See D.I. 126 at 89:1-16). The primary dispute
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`is whether ICON' s algorithmic disclosure must be limited by the language in Figures 11 and 12.
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`(See id. at 92:2-1 2).5 ICON seeks to amend the language in the flow chart to include the term
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`"competition" in addition to race, and to substitute the term "parameter of choice" instead of
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`"user position." (See D.I. 123).
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`Following the hearing, the parties submitted letters to the Court identifying support for
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`the theory that ICON may expand the algorithmic disclosure via embodiments contained in the
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`specification. (D.I. 130, D.I. 131). ICON submitted AllVoice Computing PLC v. Nuance
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`Commc 'ns, Inc. , 504 F.3d 1236 (Fed. Cir. 2007) for the proposition that algorithms may be read
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`broadly . (D.I. 130 at 6). However, All Voice involved a dispute on the sufficiency of the
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`algorithm. All Voice , 504 F.3d at 1245-46. After considering an expert declaration which
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`explained that there were "several straightforward ways that the algorithm represented in Figure
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`8A could be implemented by one skilled in the art using well-known features," the Court agreed
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`the disclosure was sufficient. Id. The fact that many software techniques known to a POSA may
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`be used to implement the algorithm does not support ICON' s argument that the algorithm itself
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`may be amended.
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`On this point, Aristocrat Techs. Austl. Pty. Ltd. v. Int 'l Game Tech., 521 F.3d 1328 (Fed.
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`Cir. 2008) is instructive. In Aristocrat, plaintiff argued that "''the written description delineates
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`5 Peloton also argued that ICON' s disclosure was insufficient. (See D.I. 113 at 74-79, 81-87).
`However, Peloton only cites to conclusory assertions from its expert that the Patent does not
`disclose an algorithm (See, e.g. , D.I. 114-3 at APPX370, APPX373 , APPX376, APPX378).
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`14
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`Case 1:20-cv-00662-RGA Document 141 Filed 09/10/21 Page 15 of 15 PageID #: 4463
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`what constitutes [ the asserted disclosure of structure] through the disclosed embodiments of the
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`invention." Id. at 1334. The Court rejected plaintiff's argument, explaining "the description of
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`the embodiments is simply a description of the outcome of the claimed functions, not a
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`description of the structure." Id. at 1334-35. Additionally, the Federal Circuit has declined to
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`expand structural disclosure where the specification states that alternative structures or forms
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`may be used, without additional disclosure of those structures. See Fonar Corp. v. Gen. Elec.
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`Co. , 107 F.3d 1543, 1551-52 (Fed. Cir. 1997) (limiting a claim to "generic gradient wave form"
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`and equivalents where the patent "states that other wave forms may be used" but "fails to
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`specifically identify those wave forms"); see also Dragon Intellectual Prop. , LLC v. Apple, Inc.,
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`2015 WL 5298938, at *5 (D. Del. Sept. 9, 2015) (limiting the disputed structure to "AC power
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`source" because, while "DC power sources and batteries are disclosed in the patent, they are not
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`linked to the function at issue").
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`I do not think it is proper to amend the algorithmic disclosure in order to expand its
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`scope. I will adopt Peloton' s proposed algorithmic disclosure for the "means of comparing"
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`claims, which relies on the language used in the specification.
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`IV.
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`CONCLUSION
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`Within five days the parties shall submit a proposed order consistent with this Memorandum
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`Opinion.
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`15
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