Case 1:20-cv-00662-RGA Document 154 Filed 10/05/21 Page 1 of 3 PageID #: 4757
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`PELOTON INTERACTIVE, INC.,
`
`Plaintiff,
`
`V.
`
`ICON HEATH & FITNESS, INC.,
`
`Defendant.
`
`Civil Action No. 20-662-RGA
`
`MEMORANDUM ORDER
`
`On September 1, 2021 , I held an evidentiary hearing to determine whether the "means for
`
`receiving" and "means for displaying" terms of U.S. Patent No. 6,601 ,016 may be performed
`
`without special programming. Both parties presented experts who provided helpful testimony.
`
`Based on testimony at the hearing, I make the following findings of fact. To perform the
`
`"means for receiving" term in claim 53 , there must be an application in the universally accessible
`
`server system that tells the server to send the first exerciser's fitness activity data to the second
`
`exerciser' s device monitor. (D.I. 150 at 78 :15-80:5). The server system would also need to be
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`programmed to send the first exerciser' s fitness activity data in a mark-up language format. (Id.
`
`at 85:5-8). The server system would need to be programmed to identify fitness activity data
`
`with a universal identifier associated with the first exerciser. (Id. at 85 :9-11 ).
`
`A general-purpose computer would not be able to read mark-up language without
`
`additional programming. (Id. at 15:25-16:6). A general-purpose computer would require
`
`additional programming to be able to look at the current fitness activity data, to be able to
`
`I
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`PELOTON INTERACTIVE, INC.,
`
`Plaintiff,
`
`V.
`
`ICON HEATH & FITNESS, INC.,
`
`Defendant.
`
`Civil Action No. 20-662-RGA
`
`MEMORANDUM ORDER
`
`On September 1, 2021 , I held an evidentiary hearing to determine whether the "means for
`
`receiving" and "means for displaying" terms of U.S. Patent No. 6,601 ,016 may be performed
`
`without special programming. Both parties presented experts who provided helpful testimony.
`
`Based on testimony at the hearing, I make the following findings of fact. To perform the
`
`"means for receiving" term in claim 53 , there must be an application in the universally accessible
`
`server system that tells the server to send the first exerciser's fitness activity data to the second
`
`exerciser' s device monitor. (D.I. 150 at 78 :15-80:5). The server system would also need to be
`
`programmed to send the first exerciser' s fitness activity data in a mark-up language format. (Id.
`
`at 85:5-8). The server system would need to be programmed to identify fitness activity data
`
`with a universal identifier associated with the first exerciser. (Id. at 85 :9-11 ).
`
`A general-purpose computer would not be able to read mark-up language without
`
`additional programming. (Id. at 15:25-16:6). A general-purpose computer would require
`
`additional programming to be able to look at the current fitness activity data, to be able to
`
`I
`
`
`
`Case 1:20-cv-00662-RGA Document 154 Filed 10/05/21 Page 2 of 3 PageID #: 4758
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`identify the current fitness activity, to be able to identify the universal identifier, and to
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`understand that it is associated with the first exerciser. (Id. at 11 : 16--12: 1 ).
`
`To perform the "means for displaying" term in claim 53, a general-purpose computer
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`would require additional programming to be able to compare the first exerciser's fitness activity
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`data with the second exerciser' s fitness activity data and to present this comparison in graphical
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`form. (Id. at 19:9-20, 88:12-14, 89:19-25).
`
`With respect to the "means for receiving" claim, the parties agree on the function and
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`dispute the structure. (See D.I. 113 at 21). As to the "means for displaying" claim, the parties
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`dispute both the function and the structure. (Id. at 32). Though ICON' s briefing on these terms
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`asserted the existence of an algorithm, at the Markman Hearing, ICON clarified, "We do not
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`claim an algorithm with respect to means for receiving or means for displaying." (D.I. 126 at
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`28:12-14). As these claims are implemented via a computer, the indefiniteness inquiry turns on
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`the applicability of the Katz exception.
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`In Katz, the Federal Circuit explained that an algorithm is required only if the claims
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`consist of "computer-implemented means-plus-function claims in which the computer would be
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`specially programmed to perform the recited function. " In re Katz Interactive Call Processing
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`Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). Subsequently, the Federal Circuit clarified
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`the scope of the Katz exception. Simple programming, or programming encompassed in off the
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`shelf programs, may still be "special programming" within the meaning of Katz. See EON Corp.
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`IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015). The Court stated,
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`"as originally described in Katz, ' special programming' includes any functionality that is not
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`' coextensive' with a microprocessor or general purpose computer." Id.
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`2
`
`I
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`
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`Case 1:20-cv-00662-RGA Document 154 Filed 10/05/21 Page 3 of 3 PageID #: 4759
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`ICON's examinations at the hearing focused heavily on "off the shelf' programs and
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`components. (See, e.g. , D.I. 150 at 21:14-20, 22:4-13 , 23:14-24:4, 25:19-22, 32:20-24, 35:16-19,
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`36:6-10, 49:12-13 , 51 :12-15, 59:14-17). That is not the test. In light of my factual findings, it
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`follows that, to perform the stated functions, 1 special programming is required. As ICON offers
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`no algorithm, these claim terms are indefinite.
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`IT IS SO ORDERED this ~
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`ay of October 2021.
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`1 The parties dispute regarding the scope of the "means for displaying" claim is not
`determinative here. Before the hearing, I proposed adopting Defendant' s recitation of function.
`(D.I. 121 at 1). ICON did not appear to dispute this at the hearing. Regardless, I do not think the
`additional clause included in Defendant' s proposal changes the analysis at all. It merely clarifies
`that the user may compete against a plurality of exercisers rather than just one additional
`exerciser. (D.I. 113 at 32). Taking ICON' s construction, the hearing did not demonstrate that a
`general purpose computer could "display[] 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" without special programming. (See id. );
`see also Aristocrat Techs. Australia Pty Ltd. v. Int '! Game Tech. , 521 F.3d 1328, 1332 (Fed. Cir.
`2008) (finding no reversible error when the District Court declined to construe the function
`before holding the term indefinite).
`
`3
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`
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