Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 9
`Entered: July 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ICON HEALTH & FITNESS, INC.,
`Petitioner,
`
`v.
`
`NAUTILUS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00495
`Patent 8,323,155 B2
`____________
`
`
`Before BARRY L. GROSSMAN, BART A. GERSTENBLITH, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`IPR2017-00495
`Patent 8,323,155 B2
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`
`I.
`
`INTRODUCTION
`
`Background
`
`ICON Health & Fitness, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting institution of inter partes review of claims 1–16 of
`U.S. Patent No. 8,323,155 B2 (Ex. 1001, “the ’155 patent”). Nautilus, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 8) to the Petition.
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may be
`instituted only if “the information presented in the petition . . . and any
`[preliminary] response . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” See 37 C.F.R. § 42.108(c).
`For the reasons given below, on this record, Petitioner has not
`established a reasonable likelihood that it would prevail in showing the
`unpatentability of claims 1–16 of the ’155 patent. Accordingly, we deny the
`Petition and do not institute an inter partes review of the ’155 patent.
`
`Related Proceedings
`
`The parties indicate that the ’155 patent is asserted in Nautilus, Inc. v.
`ICON Health & Fitness, Inc., No. 3:16-cv-05393 (W.D. Wash.). Pet. 1;
`Paper 4, 1. Petitioner challenges three patents related to the ’155 patent via
`continuation applications in three other proceedings: IPR2017-00490
`(US Patent No. 6,689,019 B2); IPR2017-00493 (US Patent No. 7,341,542
`B2); and IPR2017-00494 (US Patent No. 7,632,219 B2). Pet. 1; Paper 4, 1.
`
`Real Parties in Interest
`
`The Petition identifies “ICON Health & Fitness, Inc.” as the sole real
`party in interest. Pet. 1. Patent Owner identifies “Nautilus, Inc.” as the sole
`real party in interest. Paper 4, 1.
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`Patent 8,323,155 B2
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`The References
`
`Petitioner relies on the following references:
`U.S. Patent No. 6,206,804 B1, issued March 27, 2001 (Ex. 1003,
`“Maresh-I”);
`U.S. Patent No. 5,857,941, issued January 12, 1999 (Ex. 1004,
`“Maresh-II”); and
`U.S. Patent No. 6,171,215 B1, issued January 9, 2001 (Ex. 1005,
`“Stearns”).
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–16 of the
`’155 patent on the following grounds:
`
`References
`Maresh-I and Maresh-II
`Maresh-I, Maresh-II, and
`Stearns
`Stearns and Maresh-II
`Stearns, Maresh-II, and
`Maresh-I
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1–4, 6, 8–11, 13, 15, and 16
`5, 7, 12, and 14
`1–3, 5, 7–10, 12, and 14–16
`4, 6, 11, and 13
`
`Petitioner supports its challenge with a Declaration by Scott Ganaja
`dated November 17, 2016 (Ex. 1006).
`
`The ’155 Patent
`
`The ’155 patent is directed to exercise equipment and, in particular,
`“to stationary elliptical motion striding equipment.” Ex. 1001, 1:19–21. As
`explained in the Abstract:
`An exercise device providing a fore and aft horizontal
`component of striding motion that is dynamically user-defined,
`while providing a vertical component of the motion that is
`maintained on a predetermined vertically reciprocating path in
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`
`some embodiments. The exercise device guides the user’s foot
`in a pseudo-elliptical stride path, while providing a dynamically
`variable stride length that allows the user to move with a natural
`stride length. The exercise device allows tall and short users to
`extend or curtail the stride length to match their natural stride
`lengths. The length of the reciprocating path is dynamically
`adjusted during the exercise operation without equipment
`adjustments by changes in the length of the stride input by the
`user at a pair of foot engagement pads disposed on laterally
`spaced apart foot support members.
`Ex. 1001, [57].
`Figure 1 of the ’155 patent is reproduced below:
`
`
`
`Figure 1 of the ’155 patent illustrates one embodiment of the exercise
`device, which includes “two foot links pivotally suspended at a forward end
`from an upright pedestal by respective swing arms and rollably supported at
`a rearward end by rollers on crank arms, with a resistance device resisting
`the vertical component of the foot link motion via the rotating crank arms.”
`Id. at 3:17–23.
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`
`As shown in Figure 1, swing arms 10 and 12 guide the front end
`portions of foot links 4 and 6 in a pendulous swinging motion through an
`arcuate path “A.” Id. at 5:50–52. The rearward end portions of foot links 4
`and 6 each rollingly rest atop roller 36, rotatably mounted on pin 38 attached
`to distal end 33 of a corresponding one of crank arms 28 and 30. Id. at 6:7–
`9, 12–15. Rollers 36 are shaped to laterally retain foot links 4 and 6 thereon
`as the foot links reciprocally move freely rearward and forward relative to
`the rollers during use of exercise machine 2. Id. at 6:17–21. The
`’155 patent explains that “[t]his arrangement allows the user to use a stride
`length during the exercise and change stride length without any machine
`adjustments while the exercise is in progress.” Id. at 6:21–24.
`
`Illustrative Claim
`
`Claims 1 and 9 are the only independent claims of the ’155 patent.
`Claim 1 is illustrative of the claimed subject matter and is reproduced below:
`1.
`A striding exercise device, comprising:
`a frame;
`right and left elongate stride members supported on the
`frame and each including first and second opposed ends and a
`foot engagement pad positioned therebetween;
`right and left crank arms operatively associated with the
`frame and configured to rotate about a crank axis, the right and
`left crank arms including right and left supports, respectively;
`and
`
`right and left downward-facing cams adjacent the
`respective first ends of the right and left elongate stride members,
`the right and left downward-facing cams riding on the right and
`left supports, respectively.
`Id. at 22:19–33.
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`CLAIM CONSTRUCTION
`II.
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Neither
`party contends that any claim terms require express construction and, for
`purposes of this Decision, we agree.
`
`III. ANALYSIS
`Level of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art at the time
`invention of the ’155 patent would have “at least a bachelor’s degree in
`mechanical engineering and several years of experience designing
`mechanical systems or exercise equipment, or an equivalent level of
`education and experience.” Pet. 5 (citing Ex. 1006 ¶¶ 22–23). Patent Owner
`indicates that, for purposes of its Preliminary Response, it agrees with
`Petitioner’s definition of a personal of ordinary skill in the art. Prelim.
`Resp. 6. Accordingly, we adopt the level of ordinary skill in the art as
`agreed by the parties.
`
` Overview of Obviousness
`The analysis under 35 U.S.C. § 103(a) is objective and includes a
`determination of “the scope and content of the prior art,” the “differences
`between the prior art and the claims at issue,” and “the level of ordinary skill
`in the pertinent art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
`(quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18
`(1966)). The analysis also includes such secondary considerations as
`“commercial success, long felt but unsolved needs, [and] failure of others”
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`amongst other considerations “to give light to the circumstances surrounding
`the origin of the subject matter sought to be patented.” Id. (citing Graham,
`383 U.S. at 17–18).
`In undertaking this inquiry:
`Often, it will be necessary . . . to look to interrelated teachings of
`multiple patents; the effects of demands known to the design
`community or present in the marketplace; and the background
`knowledge possessed by a person having ordinary skill in the art,
`all in order to determine whether there was an apparent reason to
`combine the known elements in the fashion claimed by the patent
`at issue.
`Id. at 418. The U.S. Supreme Court explained that “[t]o facilitate review,
`this analysis should be made explicit,” agreeing with the U.S. Court of
`Appeals for the Federal Circuit that “[r]ejections on obviousness grounds
`cannot be sustained by mere conclusory statements; instead, there must be
`some articulated reasoning with some rational underpinning to support the
`legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977,
`988 (Fed. Cir. 2006)).
`
` Obviousness over Maresh-I and Maresh-II
`Petitioner contends that the combination of Maresh-I and Maresh-II
`would have rendered the subject matter of claims 1–4, 6, 8–11, 13, 15, and
`16 obvious to one of ordinary skill in the art at the time of the invention.
`Pet. 13–21. With respect to claims 1 and 9, Petitioner relies upon Maresh-I
`as disclosing most of the elements of the claim, but relies upon Maresh-II as
`disclosing what Petitioner refers to as “element 1d”—“right and left
`downward-facing cams adjacent the respective first ends of the right and left
`elongate stride members, the right and left downward-facing cams riding on
`the right and left supports, respectively”—and “element 9c”—“right and left
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`cams adjacent the respective first ends of the right and left elongate stride
`members, the right and left cams being variably movable across the
`respective right and left supports relative to the right and left crank arms
`rotating about the crank axis.” (Pet. 15–20; Ex. 1007, 1 (element 1d),
`3 (element 9c)).
`
` Maresh-I
`Maresh-I “relates to exercise methods and apparatus and more
`particularly, to exercise equipment which facilitates exercise through a
`curved path of motion.” Ex. 1003, 1:14–16. Maresh-I explains that it
`“provide[s] a novel linkage assembly . . . . [that] allows foot supports to
`travel along elliptical paths which may be altered by adjustable components
`at the operator’s discretion.” Id. at 1:34–39. Figure 13 is reproduced below:
`
`
`Figure 13 “is a side view of a seventh embodiment” of the disclosed exercise
`apparatus. Id. at 2:17–18.
`
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`Maresh-I explains:
`The apparatus 700 generally includes a frame 710 and a linkage
`assembly movably mounted on the frame 710. Generally
`speaking, the linkage assembly encourages a force receiving
`member 740 to travel through an elliptical path of motion having
`a selectively variable length. . . .
`
`On each side of the apparatus 700, the linkage assembly
`generally includes a forward rocker link 730, a force receiving
`link 740, a crank 760, and a roller 750 interconnected between
`the force receiving link 740 and the crank 760. On the
`embodiment 700, the crank 760 on the left side of the
`apparatus 700 is 180 degrees out of phase with the crank 760 on
`the right side of the apparatus 700, and the links on the left side
`move in opposite directions relative to their right side
`counterparts.
`Id. at 8:61–9:18.
`Additionally, Maresh-I teaches:
`[A] crank 760 is keyed to a common shaft which is rotatably
`mounted on the rear stanchion 718 . . . . In this embodiment 700,
`the cranks 760 are flywheels with radially displaced pins secured
`thereto. . . . A separate roller 750 is rotatably connected to each
`crank 760 and projects axially away from the crank 760.
`On each side of the apparatus 700, a force receiving
`link 740 has a rear end supported by a respective roller 750. In
`particular, the roller 750 projects into an elongate slot 745
`formed in the force receiving link 740. . . .
`Each roller 750 cooperates with a respective crank 760 to
`introduce rotational movement and a degree of freedom, in
`series, between the frame 710 and a respective force receiving
`member 740.
`Id. at 9:24–50.
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`
` Maresh-II
`Maresh-II also is directed to “exercise methods and apparatus and
`more particularly, to exercise equipment which facilitates exercise through a
`curved path of motion.” Ex. 1004, 1:5–7. Figure 7 is reproduced below:
`
`
`Figure 7 of Maresh-II shows a side view of the exercise apparatus with only
`one side of the linkage assembly shown. Id. at 2:37–39.
`Maresh-II explains:
`[T]he exercise apparatus 1500 includes a frame 1320 having a
`base 1522, which rests upon a floor surface 99, a forward
`stanchion 1530, which extends upward from the front end of the
`base 1522, and a rearward stanchion 1540, which extends
`upward from the rear end of the base 1522.
`
`A flywheel 1560 is rotatably mounted on the rearward
`stanchion 1540 and rotatable about a crank axis. A roller 1570
`is rotatably mounted on the flywheel 1560 at a location radially
`displaced from the crank axis and cooperates with the
`flywheel 1560 to define a crank. The roller 1570 rotates about a
`roller axis relative to the flywheel 1560 and rotates with the
`flywheel 1560 about the crank axis. Rather than gear teeth, the
`roller 1570 simply has a first bearing surface or interface,
`disposed at a relatively greater diameter about the roller 1570,
`which engages a flat bearing surface 1587 on the force receiving
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`member 1580, and a second bearing surface or interface,
`disposed at a relatively smaller diameter about the roller 1570,
`which engages a flat bearing surface 1617 on a support
`member 1600.
`
`A rearward end of the support member 1610 is rotatably
`connected to a rearward end of a rail 1600. A helical coil
`spring 1619 is disposed between the base 1522 and an opposite,
`forward end of the support member 1610. The spring 1619
`biases the bearing surface 1617 upward against the roller 1570.
`An opposite, forward end of the rail 1600 is rotatably connected
`to
`the forward stanchion 1530.
` The force receiving
`member 1580 is movably mounted on the rail 1600 intermediate
`the forward end and the rearward end. The rearward end of the
`rail 1600 is supported by the force receiving member 1580
`which, in turn, is supported by the roller 1570.
` Id. at 6:36–67.
`Figure 11 is reproduced below:
`
`
`Figure 11 of Maresh-II shows a “first alternative arrangement for movably
`and adjustably connecting the force receiving member to the frame.” Id. at
`2:49–51. Maresh-II explains:
`In the embodiment 2100 of FIG. 11, the roller 2189 rolls
`or bears against a flat or linear bearing surface on a ramp 2150.
`A relatively lower and rearward end of the ramp 2150 is rotatably
`connected to the frame, and a relatively higher and forward end
`of the ramp 2150 is supported by a flange or ledge 2140. A
`threaded hole is formed through the flange 2140 to accommodate
`a lead screw 2134 having a lower end rotatably connected
`relative to the frame. A knob 2130 on the lead screw 2134 is
`rotated to move the flange 2140 up or down along the lead
`screw 2134 and relative to the frame and thereby adjust the
`
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`inclination of the ramp 2150 relative to the frame and the floor
`surface.
`Id. at 8:51–62.
`Figure 23 is reproduced below:
`
`
`Figure 23 of Maresh-II shows a side view of an alternative rack
`arrangement. Id. at 3:14–15. Maresh-II explains:
`[A]lternative support member 3310 is shown as a possible
`substitute for the “overlying” rack and/or force receiving
`member provided on any of the foregoing embodiments shown
`in FIGS. 1–16. The support member 3310 may be described as
`having a rack of gear teeth disposed along an [sic] downwardly
`convex surface.
`Id. at 10:16–21.
`
`Analysis1
`
`Petitioner contends that Maresh-I teaches “right and left
`downward-facing surfaces (downward-facing surfaces of right and left
`slots 745).” Pet. 15 (citing Ex. 1003, 9:33–55). Petitioner asserts that
`“rollers 750 roll along the downward facing surfaces of the slots 745, and
`the slots 745 are illustrated as flat, straight, ‘elongate’ slots in Figure 13.”
`Id. at 16. Petitioner contends that Maresh-I generally states “that ‘the size,
`configuration, and/or arrangement of the components of the disclosed
`embodiments may be modified as a matter of design choice’” (id. (quoting
`
`
`1 We focus on elements 1d and 9c because consideration of those claim
`limitations is dispositive.
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`Ex. 1003, 10:12–14)), and Petitioner asserts that “[o]ne such design choice
`would be to adjust the shape of the slots 745” (id. (citing Ex. 1006 ¶¶ 17,
`42–50)).
`Petitioner turns to Maresh-II, contending that Figure 7 shows circular
`roller 1570 as a support for flat bearing surface 1587 of force receiving
`member 1580. Id. (citing Ex. 1004, 6:42–55, Fig. 7). Petitioner explains
`that Maresh-II teaches “that the shape of the roller or the shape of the force
`receiving member can be modified” and that some of the modifications
`provide a “cam effect.” Id. at 16–17 (citing Ex. 1004, 9:33–10:22, Figs. 17–
`23). In particular, Petitioner points to the teaching that a curved force
`receiving member (illustrated in Figure 23) can be employed in place of the
`flat force receiving member (illustrated in Figure 7). Id. at 17 (citing
`Ex. 1004, 10:16–19; Ex. 1006 ¶¶ 17, 42–50).
`Petitioner contends that one of ordinary skill in the art would have
`been motivated to apply these teachings of Maresh-II to slot 745 of Maresh-I
`because it is “the simple substitution of one known element for another to
`obtain predictable results.” Id. at 17 (citing KSR, 127 S. Ct. at 1740).
`Specifically, Petitioner contends that Maresh-II teaches that a flat force
`receiving member can be modified into a curved surface and still produce
`elliptical motion. Id. Therefore, the “downward facing surface of the flat
`elongate slot 745 of Maresh-I could also be modified to have a curved shape
`and still provide elliptical motion and maintain the degree of freedom in
`forward/rearward travel in a predictable manner.” Id. (citing Ex. 1006 ¶¶ 17,
`42–50).
`Additionally, Petitioner asserts that combining the teachings of
`Maresh-I and Maresh-II “is combining a known technique to a known device
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`ready for improvement to yield predictable results.” Id. at 17 (citing KSR,
`127 S. Ct. at 1740). Petitioner states that “the device of Maresh-I was ready
`for modifications to yield improvements, as taught by Maresh-I that
`adjustments could be made ‘as a matter of design choice’ and would yield a
`predictable result, namely, providing a modified shape of the elliptical path
`of exercise.” Id. at 18 (citing Ex. 1006 ¶¶ 17, 42–50).
`In summary, Petitioner contends:
`[A person of ordinary skill in the art] would have been motivated
`to combine the teachings of Maresh-II with those of Maresh-I to
`modify the downward facing surface of the flat elongate slot 745
`of Maresh-I to include a curved shape, such as the curved shape
`from Figure 23 of Maresh-II, as illustrated in the rotated and
`labeled versions below (but with a smooth surface such as that
`illustrated in Figure 7 of Maresh-II):
`
`
`Id. (citing Ex. 1006 ¶¶ 17, 42–50). Petitioner’s illustration shows the
`“Original Shape of Slot 745” from Maresh-I on the left, and states that it is
`“modified to” the “New Shape of Slot,” alternative support member 3310
`from Maresh-II, shown on the right.
`Patent Owner contends that neither Maresh-I nor Maresh-II disclose
`the cam structure required by claims 1–4, 6, 8–11, 13, 15, and 16. Prelim.
`Resp. 6–7. In particular, Patent Owner asserts that Petitioner fails to show
`that “(1) it would have been obvious to modify the concave up support
`surface shown in Maresh-II to create a concave down surface” and “(2) it
`would have been obvious to then combine the newly created concave down
`surface with Maresh-I.” Id. at 7. Additionally, Patent Owner argues that
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`“there is no evidence that skilled artisans would have recognized a concave
`down surface as solving a known problem or being otherwise desirable.” Id.
`In sum, Patent Owner contends that reaching Petitioner’s proposed
`combination requires at least three unsupported, inventive leaps: (1) rotating
`Maresh-II’s alternative support member 180 degrees; (2) removing the gear
`teeth to create a “smooth surface”; (3) using “this modified, unslotted and
`curved force receiving member, which itself appears in no cited reference, as
`a basis for modifying the damped, straight slot shown in Fig. 13 of
`Maresh-I.” Id. at 10.
`Petitioner has not established a reasonable likelihood that it would
`prevail in showing that one of ordinary skill in the art would have combined
`the teachings of Maresh-I and Maresh-II in the manner proposed and
`modified those teachings to meet the cam limitations of the claims. First,
`Petitioner has not shown a reasonable likelihood of establishing that the cam
`limitations result from “the simple substitution of one known element for
`another to obtain predictable results.” In particular, Petitioner does not
`propose substituting one slot for another, or even one surface for another.
`Rather, Petitioner proposes adjusting the shape of one particular inner
`surface of the slot shown in Maresh-I. The resulting structure (see Pet. 18),
`if it can even be referred to as a slot, is not disclosed in Maresh-II.2 Thus,
`Petitioner has not established a reasonable likelihood of showing that the
`
`
`2 We recognize that Maresh-II teaches that its alternative support
`member 3310 can be used “as a possible substitute” for the overlying rack
`and/or force receiving member shown in its Figures 1–16. Ex. 1004, 10:16–
`19. That teaching, however, fails to support Petitioner’s argument that
`modifying a single surface of the slot shown in Maresh-I is a simple
`substitution of one known element for another.
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`cam limitations can be met by a simple substitution of elements between
`Maresh-I and Maresh-II.
`Second, Petitioner has not demonstrated a reasonable likelihood of
`showing that the claimed cam limitations result from “combining a known
`technique to a known device ready for improvement to yield predictable
`results.” In particular, Petitioner does not explain and has not established
`any reason as to why one of ordinary skill in the art would have combined
`and modified and the teachings as proposed. Pet. 17; see also id. at 14
`(citing Ex. 1006 ¶¶ 35–39). Petitioner states that the known technique is
`modifying a flat surface to a curved surface and that the result is a modified
`shape of the elliptical path of exercise. Id. at 18. We acknowledge that
`Maresh-II teaches the option of using alternative support member 3310,
`which has a curved surface, as a substitute to its overlying rack and/or force
`receiving member, which has a flat surface (i.e., the surface without teeth),
`and that the result is likely a modified shape of elliptical path. Nonetheless,
`Petitioner has not explained why one of ordinary skill in the art, viewing
`Maresh-II’s teaching, would modify one particular surface of Maresh-I’s
`slot 745 to modify the elliptical path. Specifically, Petitioner has not
`provided a reason with rational underpinning for making the modification.
`Mr. Ganaja’s testimony suffers from a similar deficiency. See
`Ex. 1006 ¶¶ 35–39; see id. ¶ 37 (citing Ex. 1003, 1:14–16, 1:34–39;
`Ex. 1004, 1:10–23, 1:35–52). Mr. Ganaja cites to the background and
`summary of the invention sections of Maresh-I and Maresh-II, which discuss
`some of the benefits of the inventions disclosed therein. The cited portions,
`however, fail to discuss any potential reason for combining and modifying
`the teachings of the references as proposed by Petitioner. Maresh-I states
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`the general proposition that “[m]any advantages and improvements of the
`present invention may become apparent from the more detailed description
`that follows” (Ex. 1003, 1:49–51), but that statement alone fails to provide
`sufficient support for the specific modifications proposed by Petitioner.
`Thus, Petitioner has not established a reasonable likelihood of showing that
`the modification to Maresh-I would have been a combination of a known
`technique to a known device ready for improvement to yield predictable
`results.3
`Third, Petitioner’s reliance upon design choice is not supported
`adequately. Petitioner relies heavily on the following statement in Maresh-I:
`“Furthermore, the size, configuration, and/or arrangement of the components
`of the disclosed embodiments may be modified as a matter of design
`choice.” Ex. 1003, 10:12–14. Petitioner, however, fails to connect anything
`specific, in Maresh-I, Maresh-II, or elsewhere, to this statement. In
`particular, there must be “a reason for why a person of ordinary skill in the
`art would have made the specific design choice.” Cutsforth, Inc. v.
`MotivePower, Inc., 636 Fed. Appx. 575, 578 (Fed. Cir. 2016). Additionally,
`this is not a case of simply rearranging known parts, as is often encountered
`in circumstances that may be characterized as design choice. See, e.g., In re
`Kuhle, 526 F.2d 553, 555 (CCPA 1975) (affirming the Board’s finding of
`
`
`3 We note that Petitioner repeatedly refers to the modification as an
`improvement (see, e.g., Pet. 14, 17, 18), yet fails to provide any evidence
`regarding what, if any, improvement results therefrom or would have been
`recognized by one of ordinary skill in the art at the time of the invention.
`See KSR, 550 U.S. at 417 (“if a technique has been used to improve one
`device, and a person of ordinary skill in the art would recognize that it would
`improve similar devices in the same way, using the technique is obvious
`unless its actual application is beyond his or her skill”).
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`obviousness based on design choice where the rearrangement of parts did
`not produce a novel or unexpected result).
`Fourth, Petitioner’s summary of the proposed combination and
`modifications needed to meet the cam limitations reflects the hindsight-
`driven nature of Petitioner’s analysis as well as highlights a significant
`unsupported modification. Petitioner begins with slot 745 shown in
`Figure 13 of Maresh-I. Petitioner modifies one inner surface of slot 745 (the
`downward facing surface), which is shown as flat in Figure 13. Specifically,
`Petitioner changes the flat surface of slot 745 to the curved surface of
`alternative support member 3310, shown in Figure 23 of Maresh-II. In so
`doing, Petitioner rotates the alternative support member 180 degrees.
`Petitioner, however, does not address adequately the shape of the other
`surfaces of alternative support member 3310, including the teeth shown on
`the upper surface (after rotation by Petitioner), stating simply that the upper
`surface would be “a smooth surface such as that illustrated in Figure 7 of
`Maresh-II.” Pet. 18. Petitioner provides no reason as to why one of
`ordinary skill in the art would select a single surface of alternative support
`member 3310, ignore the other surfaces of that structure, and eliminate
`important structure on one of its surfaces (i.e., the teeth, which engage teeth
`on other structures shown in Maresh-II). In short, the twists and turns taken
`by Petitioner to meet the claimed cam limitations are not supported
`adequately by the arguments and evidence relied upon.4
`
`
`4 Joseph D. Maresh is a named inventor on Maresh-I, Maresh-II, and
`Stearns. Ex. 1003, [76]; Ex. 1004, [76]; Ex. 1005, [76]. Petitioner contends
`that this fact supports its argument as to why one of ordinary skill in the art
`would have sought to combine the teachings therein. Pet. 14, 21–22. Even
`if a common inventor provided an additional reason as to why one reference
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`Accordingly, for these reasons, Petitioner has not provided articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness. Thus, Petitioner has not established a reasonable likelihood
`that it would prevail in showing the unpatentability of independent claims 1
`and 9, and claims 2–4, 6, 8, 10, 11, 13, 15, and 16, which depend therefrom.
`
` Obviousness over Maresh-I, Maresh-II, and Stearns
`Petitioner contends that the combination of Maresh-I, Maresh-II, and
`Stearns would have rendered the subject matter of claims 5, 7, 12, and 14
`obvious to one of ordinary skill in the art at the time of the invention.
`Pet. 21–25. Claims 5, 7, 12, and 14 depend, directly or indirectly, from
`claims 1 or 9. This ground relies upon the previous challenge—based upon
`the combination of Maresh-I and Maresh-II—meeting the elements of
`independent claims 1 and 9. See id. (omitting any discussion of claims 1 and
`9 in addressing claims 5, 7, 12, and 14). Accordingly, for the same reasons,
`Petitioner has not established a reasonable likelihood that it would prevail in
`showing the unpatentability of claims 5, 7, 12, and 14.
`
`
`would have commanded the attention of one of ordinary skill in the art when
`considering a second reference, that fact alone does not remedy the
`deficiencies suffered by Petitioner’s arguments regarding the specific
`combination and modifications needed to meet the claim limitations at issue.
`There is no debate that Maresh-I, Maresh-II, and Stearns are analogous art
`and that each would have commended itself to the attention of one of
`ordinary skill in the art of elliptical exercise machines at the time of the
`invention. But, as discussed above, this is not a case where a component of
`one reference is substituted with that of another reference. Rather, there are
`multiple unsupported leaps in Petitioner’s rationale that render it deficient.
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` Obviousness over Stearns and Maresh-II
`Petitioner contends that the combination of Stearns and Maresh-II
`would have rendered the subject matter of claims 1–3, 5, 7–10, 12, and 14–
`16 obvious to one of ordinary skill in the art at the time of the invention.
`Pet. 25–34. With respect to claims 1 and 9, Petitioner relies upon Stearns as
`disclosing most of the elements of the claim, but relies upon Maresh-II as
`disclosing what Petitioner refers to as “element 1d”—“right and left
`downward-facing cams adjacent the respective first ends of the right and left
`elongate stride members, the right and left downward-facing cams riding on
`the right and left supports, respectively”—and “element 9c”—“right and left
`cams adjacent the respective first ends of the right and left elongate stride
`members, the right and left cams being variably movable across the
`respective right and left supports relative to the right and left crank arms
`rotating about the cranks axis.” (Pet. 27–32; Ex. 1007, 1 (element 1d),
`3 (element 9c)).
`
`Stearns
`
`As with Maresh-I and Maresh-II, Stearns is directed to “exercise
`methods and apparatus and more particularly, to exercise equipment which
`facilitates exercise through a curved path of motion.” Ex. 1005, 1:16–18.
`Figure 34 is reproduced below:
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`Figure 34 of Stearns is a side view of an embodiment of the exercise
`machine. Id. at 3:65–67.
`Stearns explains:
`[E]xercise apparatus 2000 ha[s] a frame 2010 which includes a
`base 2014 that extends between a forward end 2011 and a
`rearward end 2012 and is designed to rest upon a floor surface
`. . . . Left and right flywheels or cranks 2020 are rotatably
`mounted on the forward stanchion 2016 and rotate relative
`thereto about a common crank axis. Bearing su