UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Echelon Fitness Multimedia, LLC
`Petitioner
`
`v.
`
`Peloton Interactive, Inc.,
`Patent Owner.
`
`
`
`
`Patent No. 10,322,315 to Foley et al.
`
`IPR Case No.: IPR2020-01186
`
`
`PETITIONER’S REPLY
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`
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`B. 
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`C. 
`
`V. 
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`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1 
`I. 
`A POSITA DOES NOT NEED TRAINER QUALIFICATIONS ................. 1 
`II. 
`III.  CLAIM CONSTRUCTION ........................................................................... 7 
`Leaderboard. ......................................................................................... 7 
`A. 
`Remaining Terms. ................................................................................ 9 
`B. 
`IV.  CLAIMS 5-8 AND 15-18 ARE UNPATENTABLE UNDER
`GROUND 1 .................................................................................................... 9 
`Claims 5, 7, 15 and 17 are Unpatentable over Watterson and
`A. 
`Hurwitz. ................................................................................................ 9 
`The combination is operable. ..................................................... 9 
` 
`A POSITA would have reason to combine the references. ..... 12 
` 
`Claims 6 and 16 (Leaderboard) are Unpatentable over
`Watterson and Hurwitz. ...................................................................... 15 
`Claims 8 and 18 (Start Signal) are Unpatentable over Watterson
`and Hurwitz. ....................................................................................... 19 
`GROUND 2: CLAIMS 5-8 AND 15-18 ARE UNPATENTABLE
`OVER HURWITZ IN VIEW OF GARCIA AND MARTENS ................... 20 
`Claims 5 and 15 are Unpatentable over Hurwitz in view of
`A. 
`Garcia and Martens. ........................................................................... 20 
`Obvious to modify Hurwitz in view of Garcia to provide
` 
`a web interface. ........................................................................ 21 
`Obvious to modify Hurwitz in view of Garcia to offer
`archived classes. ....................................................................... 22 
`Obvious to modify Hurwitz in view of Garcia and
`Martens to offer same comparative display for archived
`classes. ...................................................................................... 23 
`To the extent required, it was obvious to modify Hurwitz
`in view of Garcia to display video of the instructor. ............... 27 
`Claims 6 and 16 (Leaderboard) are Unpatentable over Hurwitz
`in view of Garcia and Martens. .......................................................... 31 
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` 
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`B. 
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`C. 
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`D. 
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`Claims 7 and 17 are Unpatentable over Hurwitz in view of
`Garcia and Martens. ........................................................................... 31 
`Claims 8 and 18 (start signal) are Unpatentable over Hurwitz in
`view of Garcia and Martens. .............................................................. 32 
`VI.  Conclusion .................................................................................................... 33 
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`PETITIONER’S EXHIBIT LIST
`
`Exhibit
`1001
`
`Description
`U.S. Patent No. 10,322,315 (“’315 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`File history of U.S. Patent No. 10,322,315 (“’315 FH”)
`
`Declaration of Kevin Jeffay, Ph.D. (“Jeffay”)
`
`U.S. Patent No. 7,874,957 to Hurwitz (“Hurwitz”)
`
`U.S. Patent App. Pub. No. 2011/0224999 to Baccarella-
`Garcia (“Garcia”)
`
`U.S. Patent 7,736,272 to Martens (“Martens”)
`
`U.S. Patent No. 7,628,730 to Watterson (“Watterson”)
`
`U.S. Patent App. Pub. No. 2011/0086707 to Loveland
`(“Loveland”)
`
`U.S. Patent App. Pub. No. 2012/0162351 to Feldman
`(“Feldman”)
`
`U.S. Patent App. Pub. No. 2007/0219057 to Fleishman
`(“Fleishman”)
`
`U.S. Patent App. Pub. No. 2006/0184427 to Singh (“Singh-
`427”)
`
`U.S. Patent App. Pub. No. 2007/0005395 to Singh (“Singh-
`395”)
`
`U.S. Patent App. Pub. No. 2008/0242514 to Piccionelli
`(“Piccionelli”)
`
`Jeff Carlson, The iPad 2 Pocket Guide, Peachpit Press ©
`2011
`
`iv
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`Case No. IPR2020-01186
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`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`ISBN-13: 978-0-321-77569-6
`ISBN-10: 0-321-77569-4
`
`Amended Complaint for Patent Infringement, Trademark
`Infringement, Trade Dress Infrignement, Trademark and
`Trade Dress Dilution, Trade Libel, False Advertising, and
`Unfair Business Practices, Peloton Interactive, Inc. v.
`Echelon Fitness, LLC, 1:19-cv-01903-RGA, D.E. 16 (D.
`Del. Jan. 1, 2020) (“Complaint”)
`Petition, Flywheel Sports, Inc. v. Peloton Interactive, Inc.,
`IPR2019-00564 (“IPR2019-00564”), Paper 1 (PTAB Jan. 17, 2019)
`(“’855-Petition”)
`
`
`Preliminary Patent Owner Response in IPR2019-00564,
`Paper 11 (May 8, 2019) (“’855-POPR”)
`
`Institution Decision in IPR2019-00564, Paper 20 (June 5, 2019)
`(“’855-Decision”)
`Patent Owner Response in IPR2019-00564, Paper 33 [Public
`Redacted] (Sept. 3, 2019) (“’855-POR”)
`Petitioner’s Reply in IPR2019-00564, Paper 53 [Public Redacted]
`(Nov. 27, 2019) (“’855-Reply”)
`
`Patent Owner Surreply in IPR2019-00564, Paper 70 (December
`26, 2019) (“’855-Surreply”)
`
`U.S. Patent No. 9,861,855 (“’855 patent”)
`
`File history of U.S. Patent No. 9,861,855 (“’855 FH”)
`Joint Claim Construction Chart, Peloton Interactive, Inc. v.
`Flywheel Sports, Inc., 2:18-cv-00390-RWS-RSP, Dkt. No. 159,
`(E.D. Tex. Dec. 20, 2019)
`
`U.S. Patent No. 5,213,555 to Hood (“Hood”)
`
`U.S. Patent No. 9,174,085 to Foley
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`v
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`Case No. IPR2020-01186
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`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
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`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`File History of U.S. Patent No. 9,174,085
`
`Institution Decision in IPR2019-00294, Paper 20 (June 5, 2019)
`(“’085-Decision”)
`U.S. Patent No. 9,233,276 to Foley
`
`File History of U.S. Patent No. 9,233,276
`
`Institution Decision in IPR2019-00295, Paper 21 (June 5, 2019)
`(“’276-Decision”)
`[Intentionally left blank]
`
`[Intentionally left blank]
`
`U.S. Patent No. 10,486,026 to Foley
`
`File History of U.S. Patent No. 10,486,026
`
`U.S. Patent No. 4,452,897
`
`U.S. Patent No. 7,833,135
`
`U.S. Patent No. 4,709,917
`
`Peloton Interactive, Inc. Brochure
`
`Library of Congress Record for Jeff Carlson, The iPad 2 Pocket
`Guide, Peachpit Press © 2011
`U.S. Patent No. 10,022,590 to Foley
`
`File History of U.S. Patent No. 10,022,590
`
`Declaration of Douglas Weider in Support of Motion for Pro Hac
`Vice Admission
`Declaration of Stephen M. Ullmer in Support of Motion for Pro Hac
`Vice Admission
`Petition, Flywheel Sports, Inc. v. Peloton Interactive, Inc.,
`IPR2019-00295 (“IPR2019-01411”), Paper 2 (PTAB Aug. 9, 2019)
`(“Flywheel ’315-Petition”)
`
`Preliminary Patent Owner Response in IPR2019-00295, Paper 10
`(November 14, 2019) (“’315-POPR”)
`
`vi
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`Case No. IPR2020-01186
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`1047
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`1048
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`1049
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`1050
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`1051
`
`1052
`
`1053
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`1054
`
`1055
`
`1056
`
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`Preliminary Patent Response in IPR2019-00295, Paper 10 (PTAB
`March 6, 2019) (“’276-POPR”)
`
`Patent Owner Response in IPR2019-00295, Paper 30 (PTAB Sept.
`3, 2019) (“’276-POR”)
`Preliminary Patent Owner Response in IPR2019-2094, Paper 10
`(PTAB March 6, 2019) (“’085-POPR”)
`Patent Onwer Response in IPR2019-2094, Paper 29 (August 3,
`2019) (“’085-POR”)
`Ehsani Deposition Transcript (Public Redacted), filed by Flywheel
`as Exhibit 1033 in IPR2019-00294, as Exhibit 1034 in IPR2019-
`00295, and Exhibit 1041 in 2019-00564. (“Ehasani Transcript”)
`Random House’s Webster’s College Dictionary (April 1999)
`(Definition of Leaderboard) (“Webster Leaderboard Definition
`(1999)”)
`Institution Decision in IPR2020-01541, Paper 16 (March 3, 2021)
`(“’026-Decision”)
`Declaration of Dr. Mark Ehsani, filed by Patent Owner as Exhibit
`2012 in IPRs 2019-00294, 2019-00295 and 2019-00564 (“Ehsani
`Declaration”)
`Second Declaration of Dr. Mark Ehsani (public redacted), filed by
`Patent Owner as Exhibit 2023 in IPRs 2019-00294, 2019-00295 and
`2019-00564 (“Second Ehsani Declaration”)
`Reply Declaration of Kevin Jeffay, Ph.D. (“Jeffay Reply”)
`
`Transcript of deposition of Jim Rutberg, taken June 25, 2021
`(“Rutberg Transcript”)
`Declaration of Dr. Houh, filed by Petitioner as Exhibit 1003 in
`Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., IPR2021-
`00342 (“Houh-062-IPR-Declaration”)
`
`U.S. Patent No. 7.166,062 (“‘062-Patent”)
`
`of
`capture
`Archive
`Internet
`2012
`11,
`January
`www.thefreedictionary.com/leaderboard showing the American
`Heritage 2009 definition of leaderboard (“American Heritage
`Definition (1999)”)
`Declaration of Dr. Kevin C. Almeroth, Document 62, Peloton
`Interactive, Inc. v. Echelon Fitness, LLC, 1:19-cv-01903-RGA, (D.
`
`vii
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`Del.) (Redacted Filing Date December 7, 2020) (“Almeroth
`Declaration”)
`Petition, Peloton Interactive, Inc. v. ICON Health & Fitness, Inc.,
`IPR2021-00342, Paper 2 (December 18, 2020) (“062-IPR-
`Petition”)
`Transcript of deposition of Dr. Henry Houh, taken July 8, 2021
`(“Houh Transcript”)
`
`1062
`
`1063
`
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`Petitioner’s Reply
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`I.
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`INTRODUCTION
`The prior art for both grounds discloses each element of the Challenged
`
`Claims, and the motivations for combining them are straightforward and well
`
`known. Faced with a clear showing of obviousness and having failed to avoid
`
`institution by disclaiming most of the ’315 patent claims, Patentee resorts to
`
`mischaracterizing the proposed combinations and misapplying the law.
`
`Patentee neither argues that the references teach away from the proposed
`
`modifications nor offers expert testimony that the combinations would be difficult
`
`to implement. Instead, Patentee essentially demands that Petitioner provide an
`
`instruction manual as to how to combine the references, ignoring that a skilled
`
`artisan may use their ordinary skill, creativity, and common sense to combine the
`
`references in a manner that results in a functionating device.
`
`The Challenged Claims are obvious.
`
`II. A POSITA DOES NOT NEED TRAINER QUALIFICATIONS
`Petitioner proposed the level of skill as:
`
`a Bachelor’s degree in electrical engineering, computer science,
`computer engineering, or comparable academic experience and at least
`two years of practical experience in the design of network-based
`applications and/or equipment interface systems for providing multi-
`media content such as on-line exercise classes.
`
`(Pet. 8-9.) The Board found “Petitioner’s proposal…consistent with the level of skill
`
`reflected in the ’315 Patent and the asserted references.” (Institution Decision at 11.)
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`Patentee now argues that a POSITA would also have an exercise field degree
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`(e.g., exercise physiology) and/or two years’ exercise field experience (e.g., a
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`personal trainer) (collectively, “trainer qualifications”). (POR 6; Ex-2004-Rutberg
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`Decl. ¶38.) Because the art relates to “exercise equipment,” Patentee argues such
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`qualifications are required to determine what motivates people to exercise. (Id. 5-6.)
`
`However, the art relates to Internet-connected computerized exercise equipment
`
`design, and an artisan would not need trainer qualifications to understand that
`
`competition and working out in a group motivates people to exercise. See Perfect
`
`Web Techs., Inc. v. INFOUSA, Inc., 587 F.3d 1324, 1329 (Fed Cir. 2010) (“KSR
`
`expanded the sources of information for a[n]…obviousness inquiry to…any need or
`
`problem known in the field…and the background knowledge, creativity, and
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`common sense of the person of ordinary skill.”).
`
`Indeed, in its nine prior submissions involving the ’315 patent and related
`
`patents, Patentee never asserted a POSITA needed trainer qualifications. Instead,
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`Patentee endorsed a skill level without trainer qualifications by offering testimony
`
`from an expert who “applied that definition for [his] analysis.” (Ex-1054-Ehsani-
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`Declaration ¶¶15-16.) Worse yet, despite lacking trainer qualifications (Ex-1054-
`
`Ehsani-Declaration ¶6), Patentee offered testimony from that expert on some of the
`
`same issues here, including whether Hurwitz would have led a POSITA to combine
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`Watterson’s time-adjusted races with features of Watterson’s classes. (Ex-1055-
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`2
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`Petitioner’s Reply
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`Second-Ehsani-Declaration ¶¶4, 118.)
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`Further, while Patentee now argues field of invention references to “exercise
`
`equipment” dictate a POSITA have trainer qualifications, it took the opposite
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`position when challenging a patent “relate[d] to exercise equipment” (Ex-1059-’062
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`Patent 1:19),1 when it asserted that technical qualifications were sufficient. (Ex-
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`1061-Almeroth-Declaration ¶30.) Nor did Patentee (or the technical expert it relies
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`upon here) believe a POSITA needed trainer qualifications when Patentee
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`challenged the ’062 Patent’s validity. (Ex-1062-’062-Petition 14-15 (technical
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`qualifications only); Ex-1058-Houh-’062-IPR-Declaration ¶34 (same).)
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`Patentee’s litigation-induced change in position is unjustified because, as the
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`exemplary figures below reflect, the art at issue relates to network-connected
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`exercise devices having hardware, sensors and interface systems for receiving and
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`displaying multimedia content and communicating with server computers and other
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`exercise devices over the Internet. (See, e.g., Ex-1001 10:5-56, 11:22-28; Ex-1004-
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`Hurwitz 2:32-58, 4:18-43, 8:17-27; Ex-1005-Garcia 0018-0019, 0049-0050, Fig. 9;
`
`
`1 The ’062 Patent is related to Ex-1007-Watterson and also sought to “provide the
`
`desirable benefits of group exercise in a home setting.” (Ex-1059-’062 patent 1:65-
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`66; Ex-1007-Watterson 2:19-20.)
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`Petitioner’s Reply
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`Ex-1006-Martens 4:8-40, 6:59-7:18, 8:30-44, Figs. 2-4; Ex-1007-Watterson 6:30-
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`52, 10:53-65, Figs. 1, 2 and 6; Ex-1056-Jeffay Reply ¶4.)
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`Case No. IPR2020-01186
`Case No. IPR2020-01 186
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`Petitioner’s Reply
`Petitioner’s Reply
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`Watterson [Ex—100?|
`
`
`
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`5
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`Moreover, the problems in the art did not pertain to “what motivates people
`
`to exercise,” as Patentee argues. (POR 7; Ex-2004-Rutberg Decl. ¶39.) It was well-
`
`known that group settings and competition motivated people to exercise. (See Ex-
`
`1056-Jeffay Reply ¶2 (citing Hurwitz 1:31-33, 46-51; Watterson 1:65-66, 39:40-42;
`
`Martens 3:26-29; Garcia 0003; ’315 patent 1:53-57.) The problems and solutions
`
`are focused on how to realize these known motivations in various internet-connected
`
`computer systems. (Ex-1056-Jeffay Reply ¶2 (describing the problems and
`
`solutions in the prior art and ’315 patent).)
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`Thus, Petitioner’s proposed level of skill is consistent with the problems and
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`solutions in the art, and the sophistication of the technology. (Ex-1003-Jeffay ¶41;
`
`Ex-1056-Jeffay Reply ¶5.)2
`
`
`2 Dr. Jeffay did not disregard the five-factor analysis “in favor of a previous
`
`petitioner’s proposed skill level.” (POR 6.) Patentee omits Dr. Jeffay’s testimony
`
`showing he considered the factors, did his own “independent analysis,” and did not
`
`simply accept the prior proposal. (Ex-2006-Jeffay-Transcript 55:16-63:8, 63:13-
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`65:19.)
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`However, even if a POSITA had to possess both technical and trainer
`
`qualifications, that would not impact the unpatentability of the Challenged Claims.3
`
`First, an expert need not be a POSITA to testify if he is “qualified in the pertinent
`
`art.” See Consolidated Trial Practice Guide (Nov. 2019) §G pg. 34 (citing Sundance,
`
`Inc. v. DeMonte Fabricating, Ltd., 550 F.3d 1356, 1363-64 (Fed Cir. 2008)).
`
`Second, the references and motivations for combining are easily understandable,
`
`making expert testimony unnecessary. See Belden v. Berk-Tek LLC, 805 F.3d 1064,
`
`1079 (Fed. Cir. 2015).
`
`III. CLAIM CONSTRUCTION
`A.
`Leaderboard.
`Patentee’s proposed construction improperly imports a “numerically ordered”
`
`requirement. (POR 16.) Patentee concedes that the plain meaning controls (id.), and,
`
`the plain meaning of “leaderboard” would have been “a display of those leading in
`
`a contest.” (Ex-1052-Webster Definition (1999); see also Ex-1060-American
`
`
`3 Dr. Jeffay has taken live in-studio and internet-connected archived exercise classes
`
`that included displaying participants’ performance should Board find a POSITA
`
`should have experience with the exercise art at issue. (Ex-2006 45:16-47:13, 48:16-
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`55:5.)
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`Heritage Definition (2009) (“a board that displays the leaders in a competition”).
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`Indeed, Patentee’s expert concedes “leaderboard” “historically meant a ‘board’
`
`showing the ‘leaders.’” (Ex-2004-Rutberg Declaration ¶82.)4
`
`Competitors on the “leaderboard” need not be “numerically ordered,” as
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`demonstrated by prior “leaderboard” constructions Patentee proposed that did not
`
`require numerical ordering. (Ex-1019-’855-POR 44 (“an ordered list that identifies,
`
`during an exercise class, multiple users and a performance parameter”); Ex-1024-
`
`JCCS 20.) Patentee cites Figures 8-11 as supporting its new position, but those
`
`figures merely depict “exemplary embodiment[s].” (’315 patent 3:34-43.) Finally,
`
`claim differentiation dicates a “leaderboard” is not a ranked list, as the “leaderboard”
`
`limitations in related ’026 patent depend from claims already requiring a
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`“dynamically updating ranked list.” (Ex-1034 (compare claims 1 and 11 with claims
`
`8 and 13).)
`
`
`
`
`4 Patentee seeks to incorporate four paragraphs of the Rutberg Declaration as
`
`evidencing “common usage” of leaderboard in modern times (POR 17), but the
`
`dictionary definitions Mr. Rutberg cites do not require “numerical ordering” (Exs-
`
`2014-2016) and
`
`the cited 2020-2021 articles/definitions
`
`(Exs-2014-2019)
`
`significantly post-date the priority date.
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`B. Remaining Terms.
`Patentee’s proposed constructions of the remaining terms have no bearing on
`
`the invalidity arguments in the Petition and, thus, their proper construction need not
`
`be resolved. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999).
`
`IV. CLAIMS 5-8 AND 15-18 ARE UNPATENTABLE UNDER GROUND 1
`A. Claims 5, 7, 15 and 17 are Unpatentable over Watterson and
`Hurwitz.
`Patentee does not dispute that Watterson in view of Hurwitz teaches every
`
`element of claims 5, 7, 15 and 17.5 Patentee only disputes: (1) whether the
`
`combination is operable for archived classes and (2) whether a POSITA would have
`
`combined the references. Patentee’s arguments lack merit.
`
`
`The combination is operable.
`Watterson undisputedly discloses: (1) archived exercise classes in which a
`
`user’s own performance parameters are displayed during a class (Pet. 21-25) and (2)
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`archived races in which users’ performance parameters are compared during a race.
`
`
`5 Patentee does not contend that dependent claims 5, 7, 15 or 17 provide an
`
`independent basis for patentability beyond disclaimed independent claim 1’s
`
`limitations. Thus, the disputed issue for these claims is whether Watterson in view
`
`of Hurwitz renders obvious the limitations of claim 1.
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`(Pet. 27.) Hurwitz discloses comparing users’ performance parameters during an
`
`exercise class, and that doing so motivates users by fostering competition. (Pet. 28.)
`
`To achieve this same benefit, a POSITA would have been motivated to modify
`
`Watterson’s system to also compare users’ performance parameters during
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`live/archived exercise classes. (Pet. 19-20, 27-28.)
`
`Patentee contends that the proposed combination is inoperable because
`
`Watterson does not archive users’ performance data for exercise classes and
`
`therefore the system lacks “the necessary data…for display in element [1.6].” (POR
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`26.) This argument incorrectly assumes that Petitioner’s combination requires
`
`bodily incorporating Watterson’s comparative display feature (from archived races)
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`into Watterson’s archived classes absent modification. But the test for obviousness
`
`is not whether the feature “may be bodily incorporated into the structure of”
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`Watterson’s system for displaying archived classes. Allied Erecting and
`
`Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir.
`
`2016). Instead “obviousness focuses on what the combined teachings would have
`
`suggested.” In re Mouttet, 686 F.3d 1322, 1330 (Fed. Cir. 2012). Further, because
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`a POSITA “is also a person of ordinary creativity, not an automaton,” what the prior
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`art suggests is not limited by “the fact that it would take some creativity to carry out
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`the combination.” See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
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`1321, 1343 (Fed. Cir. 2020).
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`10
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`Applying the correct standard, Watterson’s and Hurwitz’s teachings suggest
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`an operable system for comparing performance parameters during archived classes.
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`In the racing context, Watterson discloses “a first user…may receive information
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`regarding the workout performed by a second user” over a network to facilitate
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`“compet[ition] against the second user and vice versa,” and that the “competition
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`may be…time adjusted.” (Ex-1007-Watterson 10:38-65 (cited at Pet. 19).)
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`Watterson further discloses that the earlier participant’s “statistical information and
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`a real-time representation of the race is stored” and rebroadcast so that later racers
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`experience the race as though all participants are competing live. (Pet. 27 (citing
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`Ex-1007-Watterson 41:21-42:6; Ex-1003-Jeffay ¶108).)
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`Thus, as the Petition recognized, providing a comparative display for an
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`archived competition (race or class) includes collecting/storing prior participants’
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`data. (See POR 28, 31 (falsely contending that Petitioner never “recognized the need
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`to collect…[archived] data” or include the “competition module’s data collection”
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`functionality).) Finally, a POSITA would have expected to succeed in implementing
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`comparative display features in Watterson’s classes, given Watterson already
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`offered functionality for doing so during races. (Pet. 21 (citing Ex-1003-Jeffay ¶81).)
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`“[I]t is well-settled that one of ordinary skill can use his or her ordinary skill,
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`creativity, and common sense to make the necessary adjustments and further
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`modifications to result in a properly functioning device.” Caterpillar Inc. v. Wirtgen
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`11
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`Am., Inc., IPR2018-00155, Paper 13 at 35 (P.T.A.B. May 22, 2019) (citing KSR, 550
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`U.S. at 418.) A POSITA would understand that implementing the comparative
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`display feature in Watterson’s classes would require storing prior participants’ class
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`data and comparing it to later participants’ class data. (Pet. 21 (citing Ex-1003-
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`Jeffay ¶81); Ex-1056-Jeffay Reply ¶¶7-9.) “Neither [the Board’s] rules, nor the law,
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`require an instruction manual on how to physically incorporate or combine the
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`disclosures of sperate references.” Caterpillar, Paper 13 at 31; see also id. at 30
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`(combination adequately explained where patentee offered no evidence that
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`implementing combination “would have been particularly difficult and beyond the
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`level of ordinary skill in the art”).
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`A POSITA would have reason to combine the references.
`The Petition explains why a POSITA would modify Watterson in view of
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`Hurwitz, including by comparing multiple users’ performance parameters on the
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`display in order to foster competition, in live and archived classes. (Pet. 19-21, 27-
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`28.) It was well-known to a POSITA and laypersons that competition motives people
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`to exercise. (See, e.g., Pet. 11-12 (citing Ex-1004-Hurwitz 1:31-33 (“a competitive
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`environment can add a much needed edge and can motivate people to higher levels
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`of performance”)).)
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`12
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`Patentee does not contend Watterson or Hurwitz teach away from combining
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`the references. (POR 34-40.) Nor does Patentee dispute that comparing users’
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`performance facilitates competition and motivates users to exercise.6
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`Indeed, Patentee previously acknowledged that “Hurwitz would suggest to [a
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`POSITA] to modify Watterson to show relative performance during a live class”7
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`(Ex-1017-855-POPR 49), though Patentee argues here that a POSITA would not
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`have incorporated Hurwitz’s comparative display into archived classes. (POR 39-
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`40.) But the same reason Hurwitz utilizes a comparative display for live classes, to
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`6 Patentee quotes Rovalma, SA v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019,
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`1025-26 (Fed. Cir. 2017), which stated in dicta that it does not necessarily follow
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`that a POSITA “would have been motivated to increase thermal conductivities
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`beyond levels previously achieved.” (emphasis added.) That rationale does not apply
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`because the proposed combination merely replicates well-known motivational
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`benefits of competition.
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`7 Patentee takes issue with Petitioner’s characterization. (POR 39 n. 11.) However,
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`the Board similarly understood Patentee’s statement as an “acknowledge[ment] that
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`Hurwitz would have suggested to a [POSITA] to modify Watterson’s disclosure to
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`show relative performance parameters during a live class….” (Ex-1018-‘855-
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`Decision 23.)
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`13
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`promote competition, would encourage a POSITA to add the feature for archived
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`classes. (Pet. 28 (citing Ex-1003-Jeffay ¶111).)
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`Patent Owner’s primary response is that, if the “extraordinary Watterson
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`team”8 did not arrive at the proposed modification, a POSITA lacking exercise
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`expertise would not have. (POR 37.) Patentee offers no legal support for its
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`position. The design choices of three inventors, working for a single company with
`
`its own business motivations, are
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`irrelevant.
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` See Amazon.com v.
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`Barnesandnoble.com, Inc., 239 F.3d 1343, 1364 (Fed Cir. 2001) (reversing district
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`court for relying on prior art developer’s admission that “it never occurred to him to
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`modify” his program as a basis for lack of motivation).
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`Patentee’s argument also runs afoul of the “expansive and flexible approach”
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`for analyzing obviousness, under which “any need or problem known in the field of
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`endeavor at the time of invention and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed.” KSR, 550 U.S. at 415, 420. A
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`“particular combination need not be…the preferred, or most desirable,
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`8 Patentee submits exhibits purporting to identify “hundreds of patents” issued to the
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`Watterson inventors as support for why a POSITA would not have been motivated
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`to combine the references. (POR 37 (citing Exs. 2009-2011).) These exhibits are
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`irrelevant and inadmissible and should be excluded.
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`14
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`combination.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). It is sufficient if
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`the reason is a “suitable” one “from which the prior art did not teach away.” Par
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`Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014).
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`Equally unavailing is Patentee’s contention that Dr. Jeffay cannot opine on
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`the proposed modification because he lacks trainer qualifications. (POR 37-38.)
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`One need not have such qualifications to recognize that (1) competition motivates
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`people and (2) you can facilitate competition by comparing people’s performance.
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`See Perfect Web Techs., Inc. v. INFOUSA, Inc., 587 F.3d 1324, 1329 (Fed Cir. 2010).
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`(See also §II, supra.)
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`Claims 5, 7, 15 and 17 are obvious.
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`B. Claims 6 and 16 (Leaderboard) are Unpatentable over Watterson
`and Hurwitz.
`Patentee’s contention that Hurwitz does not disclose a leaderboard relies upon
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`its improper construction that “leaderboard” requires a “numerically ordered list.”
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`(See §III(A).) Applying the correct construction, Hurwitz’s Figure 15 (see annotated
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`versions below) discloses a “leaderboard” because it includes a “horse race display”
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`that shows who is in the lead and orders/ranks the competitors right-to-left based on
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`most-to-least distance traveled. (Pet. 20 (citing Ex-1004-Hurwitz Fig. 15, 8:16-60);
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`Ex-1003-Jeffay ¶137 (citing Ex-1004-Hurwitz 8:23-26, 8:31-36); Ex-1056-Jeffay
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`Reply ¶10).)
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`15
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`Case No. IPR2020-01186
`Case No. IPR2020-01 186
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`Petitioner’s Reply
`Petitioner’s Reply
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`16
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`16
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`Further, even if the Board adopted Patentee’s construction that the
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`performance rankings have to be numeric, the “parameter display” portion of
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`Hurwitz’s leaderboard makes numeric performance comparisons, albeit not ranked
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`from best-to-worst like the horse-race display orders performance.
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`
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`However, it would have been obvious to rearrange Hurwitz’s exemplary
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`parameter display so that the “the participants are ordered by a participant’s overall
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`rank with respect to a particular performance parameter.” (Pet. 32 (citing Ex-1003-
`
`Jeffay ¶137).) Indeed, Hurwitz emphasizes the importance of allowing competitors
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`to “easily track their relative performance in real-time.” (Ex-1004-Hurwitz Abstract
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`(emphasis added) (cited at Pet. 11, 28, 48, 58); see also Pet. 20 ((citing Ex-1004-
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`Hurwitz 1:52-62, 8:16-60, FIGS. 2-3, 15.) (“leaderboard display showing relative
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`performance parameters … fosters healthy competition and motivates users”).)
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`17
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`A POSITA would have understood that sorting the list “would result in a more
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`useful … comparative display,” in furtherance of Hurwitz’s goal of allowing users
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`to easily track their relative performance. (Ex-1003-Jeffay ¶137; see also id. (citing
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`Ex-1004-Hurwitz 8:23-26, 8:31-36 (recognizing the benefits of the ordered horse
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`race display because it “show[s] who is currently in the lead and how far behind the
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`leader other users are.”) Further, Patentee does not dispute that it would have been
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`well within a POSITA’s technical grasp to rearrange information that Hurwitz
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`already presents in order to provide users with the flexibility to tailor the display
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`according to their display preferences. (Ex-1003-Jeffay ¶137.)
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`While Patentee contends the obviousness showing for sorting by performance
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`is conclusory, 9 Petitioner’s arguments are rationally underpinned by the evidence
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`including Hurwitz’s express disclosures. Providing users with the flexibility to
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`rearrange the display in simple ways (e.g., sorting the list by power output) was an
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`obvious variant of Hurwitz’s exemplary display that merely requires rearranging
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`information already displayed. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334,
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`1340 (Fed. Cir. 2020) (citing KSR, 550 U.S. at 417, 421 (§103 bars the patentability
`
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`9 Patentee’s exact incorporation by reference argument (POR 42) was rejected by
`
`the Board in instituting review of the related ’026 patent. (Ex-1053-’026-Decision
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`29 fn. 9.)
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`18
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`Case No. IPR2020-01186
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`Petitioner’s Reply
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`of obvious variations where a POSITA “has good reasons to pursue the known
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`options within his or her technical grasp”).)
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`Claims 6 and 16 are obvious.
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`C. Claims 8 and 18 (Start Signal) are Unpatentable over Watterson
`and Hurwitz.
`Patentee does not dispute that Hurwitz discloses the claim 8/18 “start signal”
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`limitation. Instead, Patentee contends there would be no need to add Hurwitz’s start
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`signal to Watterson’s live classes, which “begin[] at a scheduled time,” or to archived
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`classes, w