U.S. Patent No. 8,323,155
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`I1618.10037US01
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`
`
`ICON Health & Fitness, Inc.
`Petitioner
`
`v.
`
`Nautilus, Inc.
`Patent Owner
`
`
`
`Case No. IPR2017-00495
`Patent No. 8,323,155
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`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,323,155
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`TABLE OF CONTENTS
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`Page
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`I.
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`CONCURRENT IPRS ..................................................................................... 1
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`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(a)(1) ........................... 1
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`III. STATEMENT OF MATERIAL FACTS ........................................................ 2
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`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104 ............................. 2
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`A.
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`B.
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`Standing ................................................................................................. 2
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`Challenge and Relief Requested ........................................................... 2
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`1.
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`2.
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`3.
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`4.
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`Challenged Claims ...................................................................... 2
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`Specific Statutory Grounds ......................................................... 2
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`Claim Construction ..................................................................... 3
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`Explanation of Unpatentability and Supporting Evidence ......... 3
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`V.
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`PROPOSED GROUNDS OF REJECTION ARE NOT REDUNDANT ........ 4
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`VI. THERE EXISTS A REASONABLE LIKELIHOOD THAT CLAIMS 1-
`16 OF THE ’155 PATENT ARE UNPATENTABLE BASED ON
`MARESH-I ALONE AND MARESH-I IN COMBINATION WITH
`SECONDARY REFERENCES ....................................................................... 5
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`A.
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`Claims 1-16 are Unpatentable as Obvious ............................................ 5
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`1.
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`2.
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`The Level of Ordinary Skill in the Art........................................ 5
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`Prior Art References .................................................................... 5
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`a) Maresh-I ............................................................................ 5
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`b) Maresh-II .......................................................................... 8
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`c)
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`Stearns ............................................................................. 10
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`3. Maresh-I in Combination With Maresh-II Renders Obvious
`Claims 1-4, 6, 8-11, 13, 15, and 16 (Ground 1) ......................... 13
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`a)
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`b)
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`c)
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`d)
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`e)
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`f)
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`A POSITA would be motivated to combine Maresh-I
`with Maresh-II ................................................................ 13
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`Claims 1, 2, and 9 ........................................................... 14
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`Claims 3 and 10 .............................................................. 20
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`Claims 4, 6, 11, and 13 ................................................... 20
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`Claims 8 and 16 .............................................................. 20
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`Claim 15 .......................................................................... 21
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`4. Maresh-I in Combination with Maresh-II and Stearns Renders
`Obvious Claims 5, 7, 12, and 14 (Ground 2) ............................ 21
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`a)
`
`b)
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`A POSITA would be motivated to combine Maresh-I
`with Stearns..................................................................... 21
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`A POSITA would be motivated to combine Maresh-I
`with Maresh-II and Stearns ............................................. 22
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`c)
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`Claims 5, 7, 12, and 14 ................................................... 23
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`VII. THERE EXISTS A REASONABLE LIKELIHOOD THAT CLAIMS 1-
`16 OF THE ’155 PATENT ARE UNPATENTABLE BASED ON
`STEARNS ALONE AND STEARNS IN COMBINATION WITH
`SECONDARY REFERENCES ..................................................................... 25
`
`A.
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`Claims 1-16 are Unpatentable as Obvious .......................................... 25
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`1.
`
`Stearns in combination with Maresh-II Renders Obvious
`Claims 1-3, 5, 7-10, 12 and 14-16 (Ground 3) ........................... 25
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`a)
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`b)
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`c)
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`d)
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`e)
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`A POSITA would be motivated to combine Stearns with
`Maresh-II ........................................................................ 25
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`Claims 1, 2, and 9 ........................................................... 26
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`Claims 3 and 10 .............................................................. 32
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`Claims 5, 7, 12, and 14 ................................................... 33
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`Claims 8 and 16 .............................................................. 33
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`f)
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`Claim 15 .......................................................................... 33
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`2.
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`Stearns in Combination with Maresh-II and Maresh-I Renders
`Obvious Claims 4, 6, 11, and 13 (Ground 4) ............................ 34
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`a)
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`A POSITA would be motivated to combine Stearns with
`Maresh-II and Maresh-I .................................................. 34
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`b)
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`Claims 4, 6, 11, and 13 ................................................... 34
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`VIII. CONCLUSION .............................................................................................. 37
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`EXHIBIT LIST
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`Exhibit 1001: U.S. Patent No. 8,323,155 to Ohrt et al. (“the ’155 Patent”)
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`Exhibit 1002: Prosecution History of U.S. Patent No. 8,323,155
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`Exhibit 1003: U.S. Patent No. 6,206,804 to Maresh (“Maresh-I”)
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`Exhibit 1004: U.S. Patent No. 5,857,941 to Maresh et al. (“Maresh-II”)
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`Exhibit 1005: U.S. Patent No. 6,171,215 to Stearns et al. (“Stearns”)
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`Exhibit 1006: Declaration of Scott Ganaja Regarding U.S. Patent No. 8,323,155
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`(“Ganaja”)
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`Exhibit 1007: Claim Language and Reference Numbers of U.S. Patent No. 8,323,155
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`Exhibit 1008: U.S. Patent No. 6,689,019 to Ohrt et al. (“the ’019 Patent”)
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`Exhibit 1009: U.S. Patent No. 7,341,542 to Ohrt et al. (“the ’542 Patent”)
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`Exhibit 1010: U.S. Patent No. 7,532,219 to Ohrt et al. (“the ’219 Patent”)
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`Petitioner in this matter is ICON Health & Fitness, Inc. (“Petitioner”). Inter
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`partes review (“IPR”) under 35 U.S.C. §§311-319 and 37 C.F.R. §42.100 et seq. is
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`requested for claims 1-16 of U.S. Patent No. 8,323,155 (“the ’155 Patent” - Ex.
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`1001). The prosecution history of the ’155 patent is included as Exhibit 1002.
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`I.
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`CONCURRENT IPRS
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`Three additional IPR petitions are being concurrently filed on three direct
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`continuations in the same family as the ’155 patent, namely U.S. Patent Nos.
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`6,689,019 (“the ’019 Patent” - Ex. 1008), 7,341,542 (“the ’542 Patent” - Ex. 1009),
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`and 7,632,219 (“the ’219 Patent - Ex. 1010).
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`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(a)(1)
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`The real party-in-interest is ICON Health & Fitness, Inc. The ’155 Patent is
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`currently the subject of the following lawsuit for patent infringement: Nautilus, Inc.,
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`v. ICON Health & Fitness, Inc. (W.D. Wash. No. 3:16-cv-05393, filed May 23,
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`2016). Lead and back-up counsel and service information for the same is provided
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`in the following table. Petitioner consents to email service at the email addresses:
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`Lead Counsel
`John T. Gadd
`(Reg. No. 52,928)
`jgadd@mabr.com
`Maschoff Brennan
`1389 Center Drive
`Suite 300
`Park City, Utah 84098
`Tel: (435) 252-1360
`Fax: (435) 252-1361
`
`Back-Up Counsel
`Mark W. Ford
`(Reg. No. 67,732)
`mford@mabr.com
`Maschoff Brennan
`1389 Center Drive
`Suite 300
`Park City, Utah 84098
`Tel: (435) 252-1360
`Fax: (435) 252-1361
`
`Back-Up Counsel
`Adam F. Smoot
`(Reg. No. 63,433)
`asmoot@mabr.com
`Maschoff Brennan
`1389 Center Drive
`Suite 300
`Park City, Utah 84098
`Tel: (435) 252-1360
`Fax: (435) 252-1361
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`III. STATEMENT OF MATERIAL FACTS
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`A.
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`The ’155 Patent was filed on May 16, 2011, but claims priority as a
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`continuation to the ’019 Patent that was filed on March 30, 2001.
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`B. U.S. Patent No. 6,206,804 (“Maresh-I” – Ex. 1003) was filed on April
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`3, 1998 and issued on March 27, 2001, and is prior art to the ’155 Patent under 35
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`U.S.C. §102(a).
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`C. U.S. Patent No. 5,857,941 (“Maresh-II” – Ex. 1004) was filed April 15,
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`1997 and issued January 12, 1999, and is prior art to the ’155 Patent under 35 U.S.C.
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`§102(b).
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`D. U.S. Patent No. 6,171,215 (“Stearns” – Ex. 1005) was filed on May 5,
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`1998 and issued on January 9, 2001, and is prior art to the ’155 Patent under 35
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`U.S.C. §102(a).
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`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104
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`A.
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`Standing
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`Petitioner hereby certifies that the ’155 patent is available for IPR and that
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`Petitioner is not barred or estopped.
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`B. Challenge and Relief Requested
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`1.
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`Challenged Claims
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`Petitioner hereby petitions for review of the patentability of claims 1-16 of the
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`’155 patent.
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`2.
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`Specific Statutory Grounds
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`2
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`Statutory Ground 1: Claims 1-4, 6, 8-11, 13, 15, and 16 are unpatentable as
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`obvious under §103 over Maresh-I in view of Maresh-II.
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`Statutory Ground 2: Claims 5, 7, 12, and 14 are unpatentable as obvious under
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`§103 over Maresh-I in view of Maresh-II and Stearns.
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`Statutory Ground 3: Claims 1-3, 5, 7-10, 12 and 14-16 are unpatentable as
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`obvious under §103 over Stearns in view of Maresh-II.
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`Statutory Ground 4: Claims 4, 6, 11, and 13 are unpatentable as obvious under
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`§103 over Stearns in view of Maresh-II and Maresh-I.
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`3.
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`Claim Construction
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`Petitioner has adopted the broadest reasonable interpretation of the claims.
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`Petitioner expressly reserves the right to adopt alternative claim constructions in
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`other proceedings that apply a different standard. To the extent the Board determines
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`that any particular term needs construction aside from recognizing that the broadest
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`reasonable interpretation applies, Petitioner reserves the right to propose a particular
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`construction at an appropriate time during the proceeding, such as in Petitioner’s
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`Reply.
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`4.
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`Explanation of Unpatentability and Supporting Evidence
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`An explanation of how claims 1-16 of the ’155 patent are unpatentable when
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`given their broadest reasonable construction, with supporting evidence, is provided
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`below in Sections VI and VII. In Exhibit 1007, each element is labeled with either a
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`claim number or an element number/letter (e.g., claim 1, 2nd element is labeled as
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`3
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`“Element 1b”). In Sections VI and VII, these claim and element labels are employed
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`for the sake of clarity and brevity.
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`Additionally, certain groups of claims and/or elements are identical or so
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`similar that the same portions of the prior art teach a group of claims and/or elements.
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`Therefore, in the present Petition, when claims and/or elements are grouped under a
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`single bolded heading, such claims and/or elements are grouped together for
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`convenience in addressing the group together. See Ganaja, 14-21.
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`Petitioner notes that the practice employed in the present Petition of grouping
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`similar claims and/or elements together for the convenience of the Board is a practice
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`that has been used in multiple IPR petitions (see, e.g., IPR2015-00636, paper 1, pp.
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`34-35, 43, 56, and 59; IPR2015-00637, paper 1, pp. 41-43; IPR2015-01889, paper
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`1, pp. 27-28 and 45-59), is a practice that has been challenged by patent owners (see,
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`e.g., IPR2015-00636, paper 6, pp. 1-6; IPR2015-00637, paper 6, pp. 1-5), and is a
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`practice that has been expressly approved by the Board despite the challenges by
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`patent owners (see, e.g., IPR2015-00636, paper 8, pp. 6-8; IPR2015-00637, paper 8,
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`pp. 20-22).
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`V.
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`PROPOSED GROUNDS OF REJECTION ARE NOT REDUNDANT
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`Although Petitioner has proposed multiple grounds of rejection for each of the
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`challenged claims, none of these grounds of rejection are redundant. In particular:
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`
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`Petitioner proposes Grounds 1-2 in addition to Grounds 3-4 in the event
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`that the explicit language describing the variability of the apparatus of FIG. 13 of
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`Maresh-I is found to be more persuasive on elements 2 and 9c than the inherent
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`variability of the apparatus of Figs. 33 and 34 of Stearns.
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`
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`Petitioner proposes Grounds 3-4 in addition to Grounds 1-2 in the event
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`that a foot receiving member simply resting atop a roller of the apparatus of Figs. 33
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`and 34 of Stearns is found to be more persuasive on the “riding on” and “movable
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`across” in elements 1d and 9c than a roller in a slot of a force receiving member of
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`the apparatus of FIG. 13 of Maresh.
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`VI. THERE EXISTS A REASONABLE LIKELIHOOD THAT CLAIMS 1-
`16 OF THE ’155 PATENT ARE UNPATENTABLE BASED ON
`MARESH-I ALONE AND MARESH-I IN COMBINATION WITH
`SECONDARY REFERENCES
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`A. Claims 1-16 are Unpatentable as Obvious
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`1.
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`The Level of Ordinary Skill in the Art
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`A person of ordinary skill in the art of the ’155 Patent at the time of the
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`invention of the ’155 Patent (“POSITA”) would have at least a bachelor’s degree
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`in mechanical engineering and several years of experience designing mechanical
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`systems or exercise equipment, or an equivalent level of education and
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`experience. See Ganaja, 22-23.
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`2.
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`Prior Art References
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`a) Maresh-I
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`5
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`Maresh-I was filed on April 3, 1998 and issued on March 27, 2001. Thus,
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`Maresh-I qualifies as 102(a) art against the ’155 Patent. Maresh-I teaches an
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`elliptical exercise apparatus with a user-variable stride length. In particular, the
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`exercise apparatus 700 of Figure 13 of Maresh-I includes a force receiving member
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`740 (also referred to as a foot
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`supporting link 740) with a
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`separate
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`foot
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`support
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`platform 744. The
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`force
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`receiving member 740 is
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`coupled to a forward rocker
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`link 730 at the forward end of
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`the exercise apparatus 700,
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`and includes an elongate slot
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`745 at the rearward end. The exercise apparatus 700 also includes cranks 760 with
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`radially disposed pins that support rollers 750 that project into the slot 745. The
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`exercise apparatus 700 has a user-variable stride length because:
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`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. This portion
`of the lin[k]age assembly may also be described in terms of means for
`determining displacement of the force receiving members in a first
`direction (and in cyclical fashion), and means for allowing the user to
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`determine displacement of the force receiving members in a second,
`perpendicular direction.
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`Maresh-I, 9:46-55 (emphasis added). See Ganaja, 28-30.
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`The slot 745 includes a downward facing surface, as illustrated in the labeled
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`portion of Figure 13 of Maresh-I below:
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`Because the roller 750 rolls along the downward facing surface of the slot 745, a
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`user would be able to move the force receiving members 740 in a forward or
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`rearward direction, regardless of where in the rotational cycle the cranks 760 are
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`located. The user could push both force receiving members 740 forward, pull both
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`backwards, or follow a more traditional striding motion with one foot forward while
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`the other is rearward, and vice versa. In each instance, the cranks 760 may continue
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`to rotate, moving the rearward portions of the force receiving members 740 upward
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`and downward in cyclical fashion while the user determines the amount of
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`forward/rearward motion. See Ganaja, 28-30.
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`b) Maresh-II
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`Maresh-II was filed on April 15, 1997 and issued on January 12, 1999.
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`Thus, Maresh-II qualifies as 102(b) art against the ’155 Patent. Maresh-II
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`teaches an elliptical exercise apparatus with a force receiving member (e.g., foot
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`support) that is supported by a roller-based or gear-based support at one end and
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`a free-moving portion such as swinging handle members at the other. See, e.g.,
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`Maresh-II, 6:34-55, 7:8-42, Figures 1, and 7-9.
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`Maresh-II additionally teaches the modification of various aspects of the
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`exercise apparatus, such as exchanging the swinging handle members for a roller
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`that rolls along a ramp as the free-moving portion. See, e.g., Maresh-II, 8:38-50,
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`Figures 8-9 and 11-16. For example,
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`exchanged for
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`See Ganaja, 31-34.
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`As another example, Maresh-II teaches the modification of the roller-based
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`support or gear-based support by modifying the shape or curvature of the roller/gear
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`or of the surface with which the roller/gear interacts to introduce a cam effect. See,
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`e.g., Maresh-II, 9:34-41, 9:58-65, 10:9-22, Figures 7-9 and 17-23.
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`For example, Maresh-II teaches that the flat bearing surface 1587 (without teeth)
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`of the force receiving member 1580 indicated below in Figure 7:
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`may be modified (without the teeth) to have a curved shape like in Figure 23:
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`In particular, Maresh-II explicitly states that the modifications illustrated in
`
`Figure 23 are applicable to a “force receiving member provided on any of the
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`foregoing embodiments shown in FIGS. 1-16,” including Figure 7 (reproduced
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`and annotated above). 10:16-19. See Ganaja¸ 31-34.
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`c)
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`Stearns
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`Stearns was filed on May 5, 1998 and issued on January 9, 2001. Thus,
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`Stearns qualifies as 102(a) art against the ’155 Patent. Stearns teaches an
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`elliptical exercise apparatus with an adjustable stride length. In particular, in
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`Figures 33 and 34 (reproduced below), Stearns illustrates an elliptical exercise
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`apparatus 2000 with foot
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`supporting links 2030 that
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`are supported by rollers 2023
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`on cranks 2020 at one end
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`and
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`rollers 2033
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`rolling
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`along bearing surfaces 2013
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`at
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`the other. See, e.g.,
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`Stearns,
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`18:37-19:30,
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`Figures 33 and 34. For example, Stearns states:
`
`On each side of the apparatus 2000, a roller 2023 is rotatably connected
`to a radially displaced portion of a respective crank [20]20. Right and
`left foot supporting links 2030 have forward portions which are
`supported by respective rollers 2023; intermediate portions 2034
`which are sized and configured to support respective feet of a standing
`person; and rearward ends which are rotatably connected to
`respective rollers 2033 in contact with respective bearing surfaces
`2013.
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`Stearns, 18:46-55 (emphasis added). Furthermore, the cranks 2020 are connected
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`via a common crank axis that keeps the cranks 2020 180° out of phase with each
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`11
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`other. See Ganaja, 55-56.
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`Thus, while Stearns explicitly calls out adjusting the stride length by adjusting
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`the location of collar 2048 along the rocker link 2060 (19:7-15), a user may also
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`change the stride length simply by applying forward and rearward pressure to the
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`food supporting links 2030 and/or rocker links 2060, and without adjusting the
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`location of collars 2048. This is because the foot supporting links 2030 are not
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`immovably fixed at any point to cranks 2020. Rather, the foot supporting links 2030
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`are supported by rollers at both ends (2023 and 2033) and to rocker link 2060
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`(through collar 2048). Rocker link 2060 is able to swing forward and backward even
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`if crank 2020 is not moving. At first observation of Figure 33, it may appear as
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`though the roller 2023 is coupled in some way to the rocker link 2060. However, as
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`can be seen in Figure 34 (reproduced below), the roller 2023 is not attached to any
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`of the rocker link 2060, the collar 2048, the drawbar link 2040, or the foot supporting
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`links 2030. Rather, as can be seen in Figure 34, the roller 2023 is only coupled to the
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`crank 2020. Therefore, if a user were to move their feet forward or backward (or
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`were to grasp the rocker links 2060 and move their arms forward or backward)
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`without the cranks 2020 moving, the drawbar link 2040 would cause the foot
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`supporting link 2030 to move forward and backward. See Ganaja, 55-56.
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`Because foot supporting links 2030 are not directly fixed to the movement or
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`position of cranks 2020, a user would be able to move the foot supporting links 2030
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`in a forward or rearward direction, regardless of where in the rotational cycle the
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`cranks 2020 are located. Thus, the location of the collar 2048 would act as a limit to
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`how far the user could adjust the elliptical shape, rather than the elliptical motion
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`being completely defined by the location of the collar 2048. See Ganaja, 55-56.
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`3. Maresh-I in Combination With Maresh-II Renders Obvious
`Claims 1-4, 6, 8-11, 13, 15, and 16 (Ground 1)
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`a)
`A POSITA would be motivated to combine Maresh-I
`with Maresh-II
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`In addition to the specific motivations to combine addressed with respect to
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`13
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`I1618.10037US01
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`specific claims, Petitioner submits that a POSITA starting with Maresh-I would have
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`been motivated to incorporate the teachings of Maresh-II into the teachings of
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`Maresh-I. See Ganaja, 35-39.
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`First, the two references address similar subject matter. Maresh-I and Maresh-
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`II both address elliptical exercise apparatuses and improvements thereof. Cf.
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`Maresh-I, 1:14-16, 34-39 and Maresh-II, 1:10-23, 35-52; see Ganaja, 35-39.
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`Second, the inventor of Maresh-I is also the lead inventor of Maresh-II. A
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`POSITA with the Maresh-I reference would have looked at other teachings of the
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`same inventor when improving or modifying any of the embodiments of Maresh-I.
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`Additionally, Maresh-I and Maresh-II share the same US class and sub-class and the
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`same international class, further illustrating that a POSITA beginning with Maresh-
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`I would also look to the teachings of Maresh-II. See Ganaja, 35-39.
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`Third, Maresh-I explicitly contemplates modifying the various embodiments
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`taught in Maresh-I. For example, Maresh-I teaches that “the size, configuration,
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`and/or arrangement of the components of the disclosed embodiments may be
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`modified as a matter of design choice.” Maresh-I, 10:12-14. Furthermore, Maresh-
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`II also contemplates that “those skilled in the art will recognize additional
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`embodiments, modifications, and/or applications which fall within the scope of the
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`present invention.” Maresh-II, 10:23-27. Thus, both references contemplate
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`modifying and improving upon their respective teachings. See Ganaja, 35-39.
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`b)
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`Claims 1, 2, and 9
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`Elements 1p, 1a, 1b, and 9p: Maresh-I teaches a striding exercise device
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`(seventh exercise apparatus 700) that includes a frame (frame 710) and right and left
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`elongate stride members (right and left force receiving members 740) supported on
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`the frame (frame 710) and each including first ends (the rearward end with the slot
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`745) and opposing second ends (the forward end coupled to the forward rocker link
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`730) and a foot engagement pad (the separate foot supporting platform 744)
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`positioned therebetween. See, e.g., Maresh-I, 8:59-9:-46, Figure 13; see also 1:34-
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`39; see Ganaja, 15 and 40.
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`Elements 1c, 9a, and 9b: Maresh-I teaches right and left crank arms (radially
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`displaced right and left pins of the cranks 760) operatively associated with the frame
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`(frame 710) and configured to rotate about a crank axis (center axis of cranks 760),
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`the right and left crank arms (radially displaced right and left pins of the cranks 760)
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`including right and left supports (rollers 750), respectively. See, e.g., 9:23-30 and
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`9:46-55; see Ganaja, 16 and 41.
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`Element 1d, claim 2, and element 9c: Maresh-I teaches right and left
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`downward-facing surfaces (downward-facing surfaces of right and left slots 745)
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`adjacent the respective first ends (the right and left rearward ends with slots 745) of
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`the right and left elongate stride members (right and left force receiving members
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`740), the right and left downward-facing surfaces (downward-facing surfaces of
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`right and left slots 745) riding on the right and left supports (right and left rollers
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`750), respectively. See, e.g., 9:33-55. Maresh-I also teaches the right and left
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`downward-facing surfaces (downward-facing surfaces of right and left slots 745)
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`being variably movable across the respective right and left supports (right and left
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`rollers 750) relative to the right and left crank arms (radially displaced right and left
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`pins of the cranks 760) rotating about the crank axis (center axis of the cranks 760).
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`See, e.g., 9:33-55. Maresh-I also teaches the right and left downward-facing surfaces
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`(downward-facing surfaces of right and left slots 745) are free to ride on the
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`respective right and left supports (right and left rollers 750) variably relative to the
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`right and left crank arms (radially displaced right and left pins of the cranks 760)
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`rotating about the crank axis (center axis of the cranks 760). See, e.g., 9:33-55; see
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`Ganaja, 17 and 42-50.
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`Maresh-I teaches that the rollers 750 roll along the downward facing surfaces
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`of the slots 745, and the slots 745 are illustrated as flat, straight, “elongate” slots in
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`Figure 13. However, Maresh-I also teaches that “the size, configuration, and/or
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`arrangement of the components of the disclosed embodiments may be modified as a
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`matter of design choice.” Maresh-I, 10:12-14. One such design choice would be to
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`adjust the shape of the slots 745. See Ganaja, 17 and 42-50.
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`The related reference of Maresh-II illustrates that in some embodiments, such
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`as that illustrated in Figure 7, the support for a flat bearing surface 1587 of the force
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`receiving member 1580 is a circular roller 1570. See, e.g., Maresh-II, 6:42-55 and
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`Figure 7. In other embodiments, such as illustrated in Figures 17-23, Maresh-II
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`teaches that the shape of the roller or the shape of the force receiving member can
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`be modified, and even describes various modifications as providing a “cam effect.”
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`Id. at 9:33-10:22 and Figures 17-23. In particular, Maresh-II teaches curving a
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`previously-flat force receiving member (e.g., as illustrated in Figure 7) to become a
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`curved force receiving member (e.g., as illustrated in Figure 23). See e.g., 10:16-19;
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`see Ganaja, 17 and 42-50.
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`A POSITA would have been motivated to apply these teachings of Maresh-II
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`to the slot 745 of Maresh-I. Combining the teachings of Maresh-II with those of
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`Maresh-I is the simple substitution of one known element for another to obtain
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`predictable results. See, e.g., KSR, 127 S.Ct. at 1740. In particular, the rearward end
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`of Maresh-I was supported in a similar manner as illustrated in some embodiments
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`of Maresh-II (e.g., a roller rolling along a flat surface). A POSITA would recognize
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`that just as the flat force receiving member in Maresh-II was taught to be modified
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`into a curved surface (e.g., as illustrated in Figure 23) and still produce elliptical
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`motion, the downward facing surface of the flat elongate slot 745 of Maresh-I could
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`also be modified to have a curved shape and still provide elliptical motion and
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`maintain the degree of freedom in forward/rearward travel in a predictable manner.
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`See Ganaja, 17 and 42-50.
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`Additionally, combining the teachings of Maresh-II with Maresh-I is
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`combining a known technique to a known device ready for improvement to yield
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`predictable results. See, e.g., KSR, 127 S.Ct. at 1740. In particular, the known
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`technique of modifying a flat bearing surface to be a curved surface as taught by
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`I1618.10037US01
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`Maresh-II is applied to the known device of Maresh-I. Furthermore, the device of
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`Maresh-I was ready for modifications to yield improvements, as taught by Maresh-
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`I that adjustments could be made “as a matter of design choice” and would yield a
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`predictable result, namely, providing a modified shape of the elliptical path of
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`exercise. See Ganaja, 17 and 42-50.
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`Thus, a POSITA would have been motivated to combine the teachings of
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`Maresh-II with those of Maresh-I to modify the downward facing surface of the flat
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`elongate slot 745 of Maresh-I to include a curved shape, such as the curved shape
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`from Figure 23 of Maresh-II, as illustrated in the rotated and labeled versions below
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`(but with a smooth surface such as that illustrated in Figure 7 of Maresh-II):
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` modified to
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`See Ganaja, 17 and 42-50.
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`A POSITA would have used such a modification by recognizing that such a
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`shape is one of the variations suggested by Maresh-II. For example, Maresh-II
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`contemplated changing the shape of any force receiving member to be curved. See,
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`e.g., Maresh-II, 10:16-19 and Figure 23. Furthermore, a POSITA would have
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`recognized that Figures 22 and 23 served to show that a number of variations were
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`possible. Additionally, Figures 17-21 show that Maresh-II contemplated changing
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`the shape of the elliptical motion in a number of ways or directions. Figures 22 and
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`23 illustrate that those changes could be accomplished by modifying the previously
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`flat supporting surface rather than only changing the shape of the roller. Thus, a
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`POSITA would have been motivated to change the shape of the downward facing
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`surface of the flat elongate slot 745 to a curved shape as illustrated above. See
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`Ganaja, 17 and 42-50.
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`Additionally, a POSITA would have recognized that by doing so, a “cam
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`effect” might be obtained. See, e.g., Maresh-II, 9:52-57 and 9:60-65; see Ganaja, 17
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`and 42-50.
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`Thus, Maresh-I as modified by Maresh-II teaches right and left downward-
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`facing cams (modified downward-facing surfaces of right and left slots 745) adjacent
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`the respective first ends (the right and left rearward ends with the slots 745) of the
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`right and left elongate stride members (right and left force receiving members 740),
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`the right and left downward-facing cams (modified downward-facing surfaces of
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`right and left slots 745) riding on the right and left supports (right and left rollers
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`750), respectively. See Maresh-I, 9:33-55. Further, Maresh-I as modified by
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`Maresh-II also teaches the right and left downward-facing cams (downward-facing
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`surfaces of right and left modified slots 745) being variably movable across the
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`respective right and left supports (right and left rollers 750) relative to the right and
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`left crank arms (radially displaced right and left pins of the cranks 760) rotating
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`about the crank axis (center axis of the cranks 760). See, e.g., 9:33-55. Also, Maresh-
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`I as modified by Maresh-II teaches that the right and left downward-facing cams
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`Inter Partes Review of U.S. Patent No. 8,323,155
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`I1618.10037US01
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`(downward-facing surfaces of right and left modified slots 745) are free to ride on
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`the respective right and left supports (right and left rollers 750) variably relative to
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`the right and left crank arms (radially displaced right and left pins of the cranks 760)
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`rotating about the crank axis (center axis of the cranks 760). See, e.g., 9:33-55; see
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`Ganaja, 17 and 42-50.
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`c)
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`Claims 3 and 10
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`Claims 3 and 10: Maresh-I as modified by Maresh-II teaches right and left
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`support links (right and left forward rocker links 730) between the frame (frame 710)
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`and the respective second ends (the forward ends coupled to the right and left
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`forward rocker links 730) of the right and left elongate stride members (right and
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`left force receiving members 740). See, e.g., 9:56-