Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 11
`Entered: October 27, 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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 11
`Entered: October 27, 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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2017-00495
`Patent 8,323,155 B2
`
`
`INTRODUCTION
`I.
`ICON Health & Fitness, Inc. (“Petitioner”) filed a Request for
`Rehearing (Paper 10, “Req. Reh’g”) of our Decision Denying Institution of
`Inter Partes Review (Paper 9, “Decision” or “Dec.”), dated July 6, 2017.
`The Petition raised four grounds challenging claims 1–16 of U.S. Patent No.
`8,323,155 B2 (“the ’155 patent”). We determined that Petitioner had not
`established a reasonable likelihood that it would prevail in showing the
`unpatentability of the claims based on any of the challenges. Dec. 2, 29.
`In particular, we determined that Petitioner had not shown 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, or the teachings of Stearns and Maresh-II, in the manner
`proposed and modified those teachings to meet the cam limitations of the
`claims. Dec. 15–19 (discussing Petitioner’s challenge based on Maresh-I
`and Maresh-II), 25–28 (discussing Petitioner’s challenge based on Stearns
`and Maresh-II).
`Petitioner contends that we misapprehended or overlooked at least
`two reasons why one of ordinary skill in the art would have modified the
`teachings of Maresh-I and Stearns “to include curved force receiving
`members.” Req. Reh’g 6. First, that “a ‘cam effect’ . . . may be obtained by
`making the proposed modifications” and, second, “the explicit teaching in
`Maresh-II to modify flat force receiving members itself provides a reason for
`making a similar modification to flat force receiving members disclosed in
`other references.” Id.
`For the reasons stated below, Petitioner’s rehearing request is denied.
`
`2
`
`
`
`IPR2017-00495
`Patent 8,323,155 B2
`
`
`STANDARD OF REVIEW
`II.
`Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on
`petition, a panel will review the decision for an abuse of discretion.” An
`abuse of discretion occurs when a “decision was based on an erroneous
`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d
`1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify,
`specifically, all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was addressed previously in a
`motion, opposition, or reply. See 37 C.F.R. § 42.71(d).
`
`III. DISCUSSION
`
`Obtaining a “Cam Effect”
`Petitioner contends that obtaining a cam effect was set forth in the
`Petition as a reason for making the proposed modifications. Req. Reh’g 7.
`The Decision focused on elements 1d and 9c (see, e.g., Dec. 12 n.1),
`which recite “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 “right and left cams adjacent 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,” respectively. Ex. 1007, 1, 3. The
`Decision addressed Petitioner’s arguments as to why one of ordinary skill in
`the art allegedly would have modified Maresh-I’s slot 745 in light of
`Maresh-II, finding none of them sufficient. Dec. 15–19.
`
`3
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`IPR2017-00495
`Patent 8,323,155 B2
`
`
`We recognize that the Petition included the following sentence in its
`discussion of grounds 1 and 3: “Additionally, a [person of ordinary skill in
`the art] would have recognized that by doing so, a ‘cam effect’ might be
`obtained.” Pet. 19 (discussing the combination of Maresh-I and Maresh-II)
`(citing Ex. 1004, 9:52–57, 9:60–65; Ex. 1006 ¶¶ 17, 42–50), 31 (discussing
`the combination of Stearns and Maresh-II) (citing Ex. 1004, 9:52–57, 9:60–
`65; Ex. 1006 ¶¶ 17, 75–83). To the extent that Petitioner intended achieving
`a cam effect to be a reason for making the proposed modifications and
`combination, we agree with Petitioner that we did not address expressly this
`argument. We did not do so because there is nothing reflected in that one
`sentence to convey that a cam effect is itself something desired or something
`of benefit that would have prompted one of ordinary skill in the art to make
`the modifications and combination proposed. Petitioner’s statement stands
`alone and unsupported. In other words, the statement suggests that, after
`modifications are made, a cam effect might result, but the statement never
`suggests why obtaining such an effect is desirable or would warrant the
`modifications in the first instance. The same sentence is provided in
`Mr. Ganaja’s declaration. See Ex. 1006 ¶¶ 49, 82. As with the Petition,
`Mr. Ganaja does not explain why achieving a cam effect would have been a
`reason that would have prompted one of ordinary skill in the art to undertake
`the modifications and combination proposed. Id.; see Metalcraft of
`Mayville, Inc. v. Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In
`determining whether there would have been a motivation to combine prior
`art references to arrive at the claimed invention, it is insufficient to simply
`conclude the combination would have been obvious without identifying any
`
`4
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`IPR2017-00495
`Patent 8,323,155 B2
`
`reason why a person of skill in the art would have made the combination.”
`(citation omitted)).
`
`Explicit Teaching in Maresh-II
`Petitioner contends that we misapprehended or overlooked that
`Maresh-II contains an explicit teaching that its flat force receiving members
`may be replaced with a force receiving member that is curved. Req.
`Reh’g 8. Petitioner asserts that this teaching “provides a reason for making
`the same modification to the flat force receiving members of the elliptical
`machines of Maresh-I and Stearns.” Id. at 9; see id. at 8–9 (“This explicit
`teaching not only provides a reason to modify the device disclosed by the
`reference, but also provides a reason to modify other devices that have the
`same component.”).
`We did not misapprehend or overlook Maresh-II’s teaching. In fact,
`to the contrary, we stated the following:
`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.
`Dec. 16.
`Similarly, we did not misapprehend or overlook Maresh-II’s teaching
`in the context of Petitioner’s proposed combination with Stearns. Rather, we
`stated the following:
`We acknowledge that Maresh-II teaches the option of using
`alternative support member 3310, which has a curved surface, as
`
`5
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`IPR2017-00495
`Patent 8,323,155 B2
`
`
`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 the
`bottom surface of the forward portion of Stearns’ foot supporting
`link to change the elliptical path. Specifically, Petitioner has not
`provided a reason with rational underpinning for making the
`modification, especially in light of the difference in location of
`the curved surface in Maresh-II, i.e., at the rearward or rear end
`of the exercise apparatus, as compared to the location of
`Petitioner’s proposed modification to Stearns, i.e., at the forward
`or front end of the apparatus.
`Id. at 26.
`Accordingly, we did not misapprehend or overlook Petitioner’s
`position regarding Maresh-II.1
`
`IV. ORDER
`For the reasons explained, it is hereby ORDERED that Petitioner’s
`request for rehearing is denied.
`
`
`
`
`
`1 As reflected in the quotations from our Decision, we disagree with
`Petitioner’s characterization (Req. Reh’g 8–9) that the proposed
`modifications to Maresh-I and Stearns involve modifying the same
`component discussed in Maresh-II.
`
`6
`
`
`
`IPR2017-00495
`Patent 8,323,155 B2
`
`For PETITIONER:
`
`John Gadd
`Mark Ford
`Adam Smoot
`MASCHOFF BRENNAN
`jgadd@mabr.com
`mford@mabr.com
`asmoot@mabr.com
`
`
`For PATENT OWNER:
`
`
`Andrew Mason
`John Vandenberg
`Garth Winn
`KLARQUIST SPARKMAN, LLP
`andrew.mason@klarquist.com
`john.vandenberg@klarquist.com
`garth.winn@klarquist.com
`
`
`
`7
`
`
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