Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 1 of 67
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`EXHIBIT 1
`
`1
`
`EX2008
`Woodway USA, Inc.
`IPR2023-00836
`
`

`

`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 2 of 67
`
`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
`
`Plaintiffs,
`
`
`
`CHAPCO, INC. and SAMSARA, LLC
`
`
`
`
`
`v.
`
`
`
`WOODWAY USA, Inc.
`
`
`
`
`
`
`
`Defendant.
`
`
`
`: CIVIL ACTION No.
`:
`3:15cv01665 (JCH)
`:
`:
`:
`:
`:
`:
`: March 2, 2017
`
`
`
`
`
`OPENING EXPERT REPORT OF DR. ROBERT GIACHETTI RE:
`INVALIDITY OF UNITED STATES PATENT NO. 8,986,169
`and UNITED STATES PATENT NO. 9,039,580
`
`
`
`
`
`
`
`
`2
`
`EX2008
`Woodway USA, Inc.
`IPR2023-00836
`
`

`

`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 3 of 67
`
`
`
`I.
`
`II.
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION AND SUMMARY OF MY OPINIONS ...............................................2
`
`QUALIFICATIONS AND EXPERIENCE .........................................................................4
`
`III. MATERIALS CONSIDERED FOR THIS REPORT .........................................................6
`
`IV.
`
`EXHIBITS ...........................................................................................................................7
`
`V.
`
`UNDERSTANDING OF THE LAW ..................................................................................7
`
`A.
`
`Invalidity ................................................................................................................10
`
`1.
`
`2.
`
`Anticipation................................................................................................10
`
`Obviousness ...............................................................................................11
`
`B.
`
`Combining References ...........................................................................................12
`
`1.
`
`2.
`
`Reason to Combine ....................................................................................12
`
`All Elements...............................................................................................13
`
`Indefiniteness .........................................................................................................13
`
`PHOSITA - Power Transmission Technology ......................................................13
`
`C.
`
`D.
`
`VI.
`
`DESCRIPTION OF THE PRIOR ART .............................................................................14
`
`A.
`
`B.
`
`Non-Motorized Treadmills ....................................................................................14
`
`The Asserted Patents ..............................................................................................34
`
`1.
`
`2.
`
`U.S. Patent No. 8,986,169 (“Bayerlein ‘169”) ..........................................34
`
`U.S. Patent No. 9,039,580 (“Bayerlein ‘580”) ..........................................38
`
`VII. COMPARISON OF THE PRIOR ART TO THE ASSERTED CLAIMS ........................41
`
`G.
`
`Motivation to Combine References .......................................................................54
`
`CONCLUSION ..................................................................................................................56
`
`
`
`
`A.
`
`
`
`1
`
`3
`
`EX2008
`Woodway USA, Inc.
`IPR2023-00836
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`

`

`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 4 of 67
`
`I.
`
`INTRODUCTION AND SUMMARY OF MY OPINIONS
`
`1.
`
`I, Robert S. Giachetti, have been retained in this matter by counsel for Samsara
`
`Fitness, LLC (“Samsara”) and Chapco Inc. (“Chapco”). I have been informed that Woodway USA
`
`Inc. (“Woodway”) has asserted that a non-motorized treadmill product manufactured and sold by
`
`Samsara, identified as the TrueForm Runner, infringes several claims of U.S. Patent 9,039,580
`
`titled Manual Treadmill and Methods of Operating The Same (herein Bayerlein ‘580) as well as
`
`U.S. Patent 8,986,169 Manual Treadmill and Methods of Operating The Same (herein Bayerlein
`
`‘169).
`
`2.
`
`I have been asked by counsel for Samsara and Chapco to independently review the
`
`asserted claims of Bayerlein ‘580 and Bayerlein ‘169 and determine whether each asserted claim
`
`is valid. I understand that Bayerlein ‘169 and Bayerlein ‘580 patents were issued by the United
`
`States Patent and Trademark Office (“USPTO”) and as such there is a presumption of validity. I
`
`have also been informed that clear and convincing evidence of invalidity is required to overcome
`
`this presumption.
`
`3.
`
`I undertook that independent review of each asserted claim. It is my opinion to a
`
`reasonable degree of engineering certainty that there is clear and convincing evidence that each
`
`asserted claim of Bayerlein ‘169 and Bayerlein ‘580 patents is invalid under 35 U.S.C. §§ 102,
`
`103 and/or 112. The clear and convincing evidence on which I rely is included in this Report:
`
`
`
`
`
`U.S. Patent No. 8,590,169
`(asserted claims 11, 12, 12, 13, 14, 15, 16)
`
`11, 12, 13
`
`Socwell (U.S. Patent No. 5,709,632
`
`102(b)
`
`11, 12, 13, 14, 15 and 16
`
`Pasqualin Application 2006/0287165 in
`combination with Socwell
`
`
`
`11, 12, and 16
`
`
`
`Cutter (U.S. Patent No. 3,642,279) in
`combination with Haber (U.S. Patent No.
`5,411,455)
`
`103
`
`103
`
`11, 12, 13, 14, 15 and 16
`
`Schönenberger (U.S. Patent No. 4,334,676)
`in combination with Haber
`
`103
`
`11, 12, 13, 14, 15 and 16
`
`Schmidt (U.S. Patent No. 1,211,765)
`
`102/103
`
`2
`
`4
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`EX2008
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`IPR2023-00836
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`

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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 5 of 67
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`11, 12, 13, 14, 15 and 16
`
`11, 12, 13, 14, 15 and 16
`
`11, 12, 13, 14, 15 and 16
`
`Schmidt (U.S. Patent No. 1,211,765) in
`combination with Chickering (U.S. Patent
`No. 3,637,206)
`
`102/103
`
`Schmidt (U.S. Patent No. 1,211,765) in
`combination with Magid (U.S. Patent No.
`5,538,489)
`
`102/103
`
`Schmidt (U.S. Patent No. 1,211,765) in
`combination with Zeibell (U.S. Patent No.
`641,424)
`
`102/103
`
`
`
`U.S. Patent 9,039,580
`(asserted claims 1, 4, 5, 6, 10, 11, 12, 13, 14, 18, 19, 20, and 25)
`
`
`
`
`
`1, 2, 3, 4, 5, 6, 10, 11, 12,
`13, 14, 18, 19, 20, 21, 22,
`and 25
`
`1, 2, 3, 4, 5, 6, 10, 11, 12,
`13, 14, 18, 19, 20, 21, 22,
`and 25
`
`1, 2, 3, 4, 5, 6, 10, 11, 12,
`13, 14, 18, 19, 20, 21, 22,
`and 25
`
`1, 2, 3, 4, 5, 6, 10, 11, 12,
`13, 14, 18, 19, 21, 22, and
`25
`
`Socwell (U.S. Patent No. 5,709,632)
`
`102(b)
`
`Haber (U.S. Patent No. 5,411,455) in
`combination with Socwell
`
`103
`
`Magid (U.S. Patent No. 5,538,489) in
`combination with Socwell
`
`103
`
`Cutter (U.S. Patent No. 3,642,279) in
`combination with Magid
`
`103
`
`1, 2, 3, 4, 5, 6, 10, 11, 12,
`18, and 25
`
`Schönenberger (U.S. Patent No.
`4,334,676) in combination with Magid
`
`103
`
`1, 4, 5, 6, 10, 11, 12, 18, and
`25
`
`Abelbeck (U.S. Patent No. 6,042,514) in
`combination with Magid
`
`103
`
`3
`
`5
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`EX2008
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`IPR2023-00836
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`

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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 6 of 67
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`1, 4, 5, 6, 10, 11, 12, 14, 18,
`and 25
`
`Eschenbach (U.S. Patent No. 6,053,848)
`in combination with Magid
`
`103
`
`1, 4, 5, 6, 10, 11, 12, 14, 18,
`and 25
`
`Schmidt (U.S. Patent No. 1,211,765)
`
`102/103
`
`1, 2, 3, 4, 5, 6, 10, 11, 12,
`14, 18, and 25
`
`Schmidt (U.S. Patent No. 1,211,765) in
`combination with Zeibell (U.S. Patent No.
`641,424)
`
`102/103
`
`1, 2, 3, 4, 5, 6, 10, 11, 12,
`13, 14, 18, 19, 21, 22, and
`25
`
`
`
`Chickering (U.S. Patent No. 3,637,206) in
`combination with Magid
`
`103
`
`4.
`
`The opinions I provide herein are my own and are based on my independent review
`
`and on my education, experience, training, and skill accumulated in the practice of engineering.
`
`Between now and such time that I may be asked to testify at deposition and/or trial, I expect to
`
`continue my review, evaluation, and analysis.
`
`5.
`
`I also expect to review reports submitted by Woodway’s expert(s) and expressly
`
`reserve the right to amend or supplement this report, as appropriate, after considering the opinions
`
`set forth in those Woodway reports. I also expressly reserve the right to amend or supplement this
`
`report based on additional material information that may become available or result from our
`
`continuing investigation.
`
`
`
`II.
`
`QUALIFICATIONS AND EXPERIENCE
`
`6.
`
`Bayerlein ‘580 and Bayerlein ‘169 both relate to exercise devices constructed from
`
`commonly available mechanical machinery hardware and structural elements. There are no
`
`electronics or software elements at issue in the asserted claims. Accordingly, in my opinion, a
`
`person having ordinary skill in the art (“PHOSITA”) of these two patents is a mechanical engineer
`
`4
`
`6
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`EX2008
`Woodway USA, Inc.
`IPR2023-00836
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`

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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 7 of 67
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`with at least one year of machine design experience related to power transmission equipment1 and
`
`a demonstrated understanding of the biomechanics of exercise, including knowledge in the field
`
`of anthropometry (i.e. the study of human proportion).
`
`7.
`
`I am a Licensed Professional Engineer in Illinois, with over 10 years of experience
`
`in mechanical engineering. My experience in machinery and mechanisms spans numerous
`
`industries; I have worked directly designing mechanical systems and machinery and have
`
`consulted on the operation of machinery in various fields including rail, exercise equipment, and
`
`industrial machinery.
`
`8.
`
`I am currently employed by Exponent, Inc. as a Managing Engineer. I joined
`
`Exponent in June 2008 after working in the Biomechanics Laboratory at University of Wisconsin-
`
`Madison and University of Illinois at Chicago where I focused my research on the forces within
`
`the knee joint and coordination of lower limb musculature as it relates to foot forces and balance
`
`during walking, standing, running, etc. While at the University of Wisconsin-Madison
`
`biomechanics lab, my research responsibilities included designing, developing and constructing
`
`equipment used to harness participants in efforts to analyze and characterize their lower limb force
`
`capabilities. These research responsibilities also involved the use and disassembly of treadmills
`
`to characterize force and balance capabilities of participants. As part of these research
`
`responsibilities I reviewed studies focused on using treadmills and similar devices as rehabilitation
`
`devices (e.g. the “Locomat”). During this time, I also assisted in the preliminary development of a
`
`force measuring treadmill intended to dissociate the foot forces used in walking from the
`
`requirements imposed by upright posture.
`
`9.
`
`My responsibilities with Exponent include engineering consulting and testing with
`
`respect to exercise equipment, consumer product design and machinery design, product and
`
`machinery performance, accident reconstruction, and failure analysis.
`
`
`1Mechanical Power Transmission apparatus includes gears, belts, chains, bearings, rollers,
`flywheels, clutches, cranks, conveyors and couplings. See for example, Mechanical Power
`Transmission Handbook 2006. 4th ed.
`
`5
`
`7
`
`EX2008
`Woodway USA, Inc.
`IPR2023-00836
`
`

`

`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 8 of 67
`
`10.
`
` Prior to attending graduate school, I worked as a project engineer, designing
`
`industrial machinery at Braner USA and I worked as an estimator and designer at Alloy Sling
`
`Chain, IND. LTD.
`
`11.
`
`I am an active member of the ASTM International committees2 that oversee sports
`
`equipment and consumer products. I have been recognized as an expert in mechanical power
`
`transmission equipment and serve on the American Society of Mechanical Engineers (ASME)
`
`Power Transmission and Gearing Committee. I have also participated, by invitation, in the
`
`National Council of Examiners for Engineering and Surveying (NCEES) Mechanical Professional
`
`Activities and Knowledge Studies (PAKS) committee. This committee reviews and evaluates the
`
`problems and problem types that appear on the Mechanical Engineering Professional Engineering
`
`exam.
`
`12.
`
`For nearly 18 years, I have worked in the area of machine design and biomechanical
`
`applications of machine design. These machines have ranged from chairs, to standard consumer
`
`level treadmills, to commercial weightlifting equipment and other specialized types of exercise
`
`equipment.
`
`13. My Curriculum Vitae is attached as Exhibit A along with my current four-year
`
`testimony list.
`
`14.
`
`I am a salaried employee of Exponent. In 2017 Exponent charges an hourly rate of
`
`$315 for my time, plus reasonable expenses. I have no financial interest in the outcome of this
`
`case.
`
`
`
`III. MATERIALS CONSIDERED FOR THIS REPORT
`
`15.
`
`I have attached as Exhibit B a list of materials that I considered and/or relied upon
`
`in reaching my opinion. I have examined a TrueForm Runner and I have also relied on my
`
`
`2 ASTM Committee F08 on Sports Equipment, Playing Surfaces, and Facilities; and ASTM
`Committee F15 on Consumer Products.
`
`6
`
`8
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`EX2008
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`IPR2023-00836
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`

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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 9 of 67
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`education, training, and professional experience in the design and testing of machinery and
`
`mechanisms, and my personal examination of the accused and similar equipment. I reserve the
`
`right to update this Exhibit and to rely on additional documents and testimony as I become aware
`
`of them and, if appropriate, to amend and/or supplement my opinions accordingly.
`
`IV.
`
`EXHIBITS
`
`16.
`
`At any hearing or other proceeding in this case, I may provide and rely on visual
`
`aids and demonstrative exhibits to demonstrate basic principles of practical mechanical design and
`
`implementation, and the technologies that are the subject of Bayerlein ‘580 and Bayerlein ‘169.
`
`In addition, I may provide and rely on aids and demonstratives, such as charts, models or videos,
`
`to demonstrate my opinions and the bases for them. Examples of these visual aids and
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`demonstrative exhibits may include claim charts, patent drawings, excerpts from patent
`
`specifications, file history, discovery responses, Markman materials, deposition testimony,
`
`deposition exhibits, or documents produced by the parties in this litigation, or obtained by various
`
`websites, as well as charts, models, diagrams, videos, and any materials or computer-generated
`
`videos. I reserve the right to rely on materials in the future not discussed herein. I have not yet
`
`selected which specific exhibits I may use, although the patents and images identified and
`
`incorporated within the report, in whole or in part, may be exhibits. Those exhibits have not yet
`
`been prepared.
`
`V.
`
`UNDERSTANDING OF THE LAW
`
`17.
`
`I have been retained as an engineer, not as an expert on patent law. I have general
`
`familiarity with patent law principles from my professional experiences. Additionally, counsel to
`
`Samsara and Chapco has provided citations to legal principles relating to patents and patent
`
`infringement/validity that govern the issues on which I was asked to opine in this matter.
`
`7
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`9
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`EX2008
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`IPR2023-00836
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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 10 of 67
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`18.
`
`As noted above, I have been informed that there is a presumption of validity when
`
`a patent is issued. I have been informed that invalidity can only be demonstrated by clear and
`
`convincing evidence. I also understand that each claim of a patent is presumed to be valid
`
`independently of the validity of the other claims in the patent. I understand that for a particular
`
`claim to be deemed invalid, every element of this claim must be present in a single piece of prior
`
`art or in some obvious combination of prior art as that term is defined in 35 U.S.C. § 102.
`
`19.
`
`I have been informed that in order to determine whether a patent claim is invalid,
`
`the claim terms must first be interpreted, and I understand that the Court conducted a claim
`
`construction hearing on November 28, 2016. I have read the Claim Construction Ruling that issued
`
`following that claim construction hearing.3 In my analysis I have considered the claim terms using
`
`their plain and ordinary meaning as I believe a PHOSITA would have where the claim term has
`
`not been defined by the Court or is not indefinite. If the Court provided a construction, I have
`
`applied that construction to each applicable claim term in accordance with the Claim Construction
`
`Ruling dated December 8, 2016.
`
`20.
`
`I understand that the parties disputed the construction of certain claim terms and
`
`that the Court construed disputed terms in the Claim Construction Ruling as follows:4
`a. Bearing Rail
`
` Means: “A rail with bearings whose top profile corresponds to the shape
`
`of the running surface”
`
`b. A safety device cooperating with the rear shaft
`
` Means: “A safety device adjoined to the rear shaft”
`
`c. Coupled
`
` Means: “the joining of two members directly or indirectly”
`
`d. Running Surface
`
`
`3 Dkt. No. 76.
`
`4 Claim Construction Ruling, p. 28.
`
`8
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`10
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`EX2008
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`IPR2023-00836
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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 11 of 67
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` Means: “The portion of the running belt upon which a user could place
`
`their foot during normal operation”5
`
`
`
`21.
`
`The word “support” or a variant is used throughout Bayerlein ‘169 and Bayerlein
`
`‘580 generally to indicate some manner of weight bearing or ability to bear weight though some
`
`manner of vertical force capability transmitted directly, element to element, in accordance with the
`
`Court’s interpretation of this usage. Examples within the common specification suggest the plain
`
`meaning of support (i.e. weight bearing or vertical force capability) and include “supported by the
`
`front shaft” (Bayerlein ‘169 col. 2, 40-45), or “support member,” (Bayerlein ‘169 col. 3, 25-30),
`
`“help support a user” (Bayerlein ‘169 col. 15, 15-17), or “supported in tension about.” (Bayerlein
`
`‘169 col. 16, 67).
`
`22.
`
`However, in contrast to these uses of the support-based term, there are numerous
`
`other instances within Bayerlein ‘169 and Bayerlein ‘580 that are inconsistent with the plain uses
`
`of the word “support.” A few examples of these instances include: “support wall” (Bayerlein ‘169
`
`col. 22, 25-30), “supports an inner ring 1504...” (Bayerlein ‘169 col. 27, 19-20), “supports and
`
`outer ring…” (Bayerlein ‘169 col. 28, 10-15), “is supported outboard of and adjacent to the inner
`
`ring…” (Bayerlein ‘169 col. 28, 22-25), and “The housing 1502 is supported by a stud 1520 which
`
`is coupled to the frame 40. The stud 1520 may be separated or spaced apart from the housing…”
`
`(Bayerlein ‘169 col. 28. 26-30). Notably, stud 1520 does not provide weight bearing or “support”
`
`to housing 1502, as depicted in Fig. 38. Furthermore, housing 1502 does not “support” surface
`
`1504, rather, shaft 68 “supports” the one way bearing element and the bearing element that is
`
`comprised of surface 1504 and 1506 supports the housing; without stud 1520 in place, the bearing
`
`
`5 Could also be defined as “part of” a foot
`
`9
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`11
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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 12 of 67
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`housing would not fall off due to lack of “support,” as understood by the common usage of the
`
`word in the specification.
`
`23.
`
`To a PHOSITA, “support” can be achieved by various structural elements. For
`
`example, one may “support” a machine element by welding it to the side of another element;
`
`bolting it to the underside of another machine element, laying it on top of a machine element;
`
`coupling it to another machine element; placing the machine element on the floor, and so on.
`
`Without clarification as to the structural nature of the “support”, there is no viable way of
`
`narrowing the possibilities with reasonable certainty.
`
`24.
`
`The claims, read in light of the specification delineating the patents in suit, and the
`
`prosecution history, fail to inform, with reasonable certainty, a PHOSITA, already familiar with
`
`machinery design and exercise equipment, about the scope of the invention because a PHOSITA
`
`would not be able to determine whether two structures are required to be in physical contact,
`
`directly joined, or whether intervening structural elements are necessary in order for one structure
`
`to “support” another, i.e. whether these “support” terms define the existence of a pair of structures
`
`wherein one structure captures the corresponding structure in a pair or whether the one structural
`
`element transmits the entire or partial load directly from the corresponding structure in the required
`
`pair.
`
`A.
`
`Invalidity
`
`1.
`
`Anticipation
`
`25.
`
`I have been informed and understand that in order to demonstrate invalidity of a
`
`patent claim based on anticipation under 35 U.S.C. § 102, there must be clear and convincing
`
`evidence that (a) the invention was known or used by others in this country, or patented or
`
`described in a printed publication in this or a foreign country, before the invention thereof by the
`
`applicant for a patent, or (b) the invention was patented or described in a printed publication in
`
`10
`
`12
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`EX2008
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`IPR2023-00836
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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 13 of 67
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`this or a foreign country or in public use or on sale in this country, more than one year prior to the
`
`date of the application for patent in the United States. 35 U.S.C. § 102(a), (b). The Bayerlein ‘580
`
`patent priority date is March 17, 2009. The Bayerlein ‘169 patent priority date is also March 17,
`
`2009.
`
`26.
`
`I have been informed and understand that if every element in a claim is found—
`
`expressly or inherently—in a single prior art reference, then the claim is anticipated and invalid.6
`
`This is also true even where the prior art reference did not appreciate or recognize the “inventive
`
`concept” of the invention claimed in the challenged patent (“Our cases have consistently held that
`
`a reference may anticipate even when the relevant properties of the thing disclosed were not
`
`appreciated at the time.”). 7
`
`
`
`2.
`
`Obviousness
`
`27.
`
`I have been informed and understand that a patent claim is invalid if it can be shown
`
`by clear and convincing evidence that “the differences between the subject matters sought to be
`
`patented and the prior art are such that the subject matter as a whole would have been obvious at
`
`the time the invention was made to a person having ordinary skill in the art to which said subject
`
`matter pertains.” 35 U.S.C. § 103(a).
`
`28.
`
`I understand obviousness is a question of law that considers (1) the scope and
`
`content of the prior art; (2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill of one in the art; and (4) where in evidence, so-called secondary
`
`considerations, such as commercial success, long-felt but unsolved needs, and the failures of
`
`others.8
`
`
`6 See Planet Bingo, LLC v. Gametech Int’l, Inc., 472 F.3d 1338, 1346 (Fed. Cir. 2006)
`
`7 Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 633 (Fed. Cir. 1987); see also
`Abbott Labs. v. Baxter Pharm. Prods. Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006)
`
`8 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
`
`11
`
`13
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`EX2008
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`IPR2023-00836
`
`

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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 14 of 67
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`
`B.
`
`Combining References
`
`1.
`
`Reason to Combine
`
`29.
`
`I have been informed that in order to combine prior art references in an obviousness
`
`analysis, motivation or reason to combine them must be articulated and made explicit. (“It is well
`
`established that “[t]he normal desire of artisans to improve upon what is already generally known
`
`can provide the motivation to optimize variables.”);9 (“[A]n implicit motivation to combine exists
`
`. . . when the ‘improvement’ is technology-independent and the combination of references results
`
`in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner,
`
`faster, lighter, smaller, more durable, or more efficient.”).10
`
`30.
`
`An effort that merely makes a slight modification to the prior art using the same
`
`elements, performing the same functions, and achieving the same result is not novel.11 “In
`
`determining whether the subject matter of a patent claim is obvious, neither the particular
`
`motivation nor the avowed purpose of the patentee controls.”12 Rather, “if a person of ordinary
`
`skill can implement a predictable variation [of a work], § 103 likely bars its patentability.”13
`
`31.
`
`I understand that it is improper to use hindsight as a reason to combine prior art
`
`references. In other words, it is improper to look to the patented invention, or references that post-
`
`date the patented invention, to find a reason to combine various references that pre-date the
`
`patented invention.
`
`
`
`
`9 In re Ethicon, 844 F.3d 1344, 1351 (Fed. Cir. 2017).
`
`10 See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
`1356, 1368 (Fed. Cir. 2006).
`
`11 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
`
`12 KSR, 550 U.S. at 419.
`
`13 KSR, 550 U.S. at 401
`
`12
`
`14
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`EX2008
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`IPR2023-00836
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`

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`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 15 of 67
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`2.
`
`All Elements
`
`32.
`
`I understand that, even if a reason to combine prior art references were adequately
`
`articulated, the combination of prior art references must disclose every limitation of the claimed
`
`invention, in accordance with the Court’s interpretations of the claim language, the plain and
`
`ordinary meaning of the terms, and/or the parties’ agreed upon constructions.
`
`
`C.
`
`33.
`
`Indefiniteness
`
`I understand that a patent must conclude with one or more claims particularly
`
`pointing out and distinctly claiming the subject matter that the applicant regards as his invention.
`
`Counsel for Samsara and Chapco has informed me that claims are indefinite when “read in light
`
`of the specification delineating the patent, and the prosecution history,” they “fail to inform, with
`
`reasonable certainty, those skilled in the art about the scope of the invention.”14 Counsel for
`
`Samsara and Chapco has also informed me that even if a claim term’s definition can be put into
`
`words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the
`
`definition into meaningfully precise claim scope.15
`D.
`PHOSITA - Power Transmission Technology
`
`34.
`
`As stated above, the PHOSITA has a working knowledge of power transmission
`
`technology. Power transmission devices are at issue in the asserted patents and are also
`
`components of many different machines. Common mechanical power transmission elements are
`
`listed in resources publicly provided by the Federal Government16 and reference manuals, among
`
`other sources. These machine elements include:
`
`
`
`
`
`
`
`Flywheels
`Friction clutches
`Sprag clutches
`Wheels
`Bearings
`
`
`14 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014).
`
`15 Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (2008).
`
`16 For example, see Occupational Safety and Health Administration (OSHA) code 1926.307 or
`OSHA 1926.219 Mechanical power-transmission apparatus for a list.
`
`13
`
`15
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`EX2008
`Woodway USA, Inc.
`IPR2023-00836
`
`

`

`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 16 of 67
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`
`
`
`
`
`
`
`
`
`
`
`Ratchets and pawls
`Pulleys
`Belts
`Couplings
`Spindles and rollers
`Chains
`Cranks
`Gears
`Connecting rods
`Conveyors
`
`35.
`
`Because of their common usages across diverse types of machinery, terminology
`
`has been standardized, and their utility and limitations are well understood by a PHOSITA. A
`
`PHOSITA recognizes the relative merits of differing components, by virtue of education and/or
`
`design experience. The PHOSITA would also understand which components can be used in place
`
`of one another; selection of a suitable structure or mechanism may account for other selection
`
`factors such as durability, cost, reliability and other considerations that are not performance driven.
`
`VI.
`
`DESCRIPTION OF THE PRIOR ART
`
`A.
`
`36.
`
`Non-Motorized Treadmills
`
`The purpose of any treadmill is to provide a localized surface (or, “running
`
`surface”) upon which the user (whether human or animal) can exercise or generate power through
`
`a simulated act of locomotion, e.g. walking, jogging, running without gross body movement
`
`forward, rearward, or to the side relative to the running surface. Treadmills are sufficiently
`
`common that safety guidelines specific to their design/function have existed for some time and are
`
`standardized. For example, the International Standards Organization (“ISO”) and the European
`
`Standard Technical Committees (“EN”) defined what a treadmill is and set guidelines for the safety
`
`devices that should accompany treadmills years in advance of Bayerlein’s submission to the
`
`USPTO. ISO/EN define a treadmill as “training equipment with a unidirectional moving surface
`
`on which a walking or running activity can take place where the feet are free to leave the moving
`
`14
`
`16
`
`EX2008
`Woodway USA, Inc.
`IPR2023-00836
`
`

`

`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 17 of 67
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`surface.” ISO/EN also state that a treadmill shall be equipped with a handlebar (front, both sides,
`
`or both).17
`
`37.
`
`The asserted Bayerlein patents relate to non-motorized treadmills powered by the
`
`efforts of the user of the treadmill, instead of an electric motor or other power source. These
`
`treadmills are generally referred to as “self-powered” or “manual.”
`
`38. Manual treadmills have existed for hundreds of years, as evidenced, for example,
`
`by manual treadmills used by the Romans to power cranes:
`
`
`
`
`17 ISO 20957-6:2005/EN 957-6:2001
`
`15
`
`17
`
`EX2008
`Woodway USA, Inc.
`IPR2023-00836
`
`

`

`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 18 of 67
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`
`
`
`
`
`
`Figure 1. Top Left: “Hoisting machine with treadmill. Illustration from the Qiqi Tushuo, the
`earliest Chinese monograph on western mechanics (1627, the illustration is taken from the 1830
`edition).” Bottom: “Hoisting machine with treadmill. Mould of relief from the Theatre of Capua
`(Museo della Civià Romana, Rome).” Images and descriptions from the Max Planck Institute.18
`Top Right: relief from the Vatican museum showing humans powering a treadmill crane from
`the 2nd Century AD.19
`
`
`
`18 http://www.mpiwg-berlin.mpg.de/resrep00_01/Jahresbericht_2_2_section.html
`
`19 http://www.museivaticani.va/content/museivaticani/en/collezioni/musei/museo-gregoriano-
`profano/Mausoleo-degli-Haterii.html
`
`16
`
`18
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`EX2008
`Woodway USA, Inc.
`IPR2023-00836
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`

`

`Case 3:15-cv-01665-JCH Document 216-1 Filed 04/05/18 Page 19 of 67
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`39.
`
`In terms of filings with the USPTO, treadmill art is also well known and includes
`
`numerous self-powered treadmill patent applications dating from the 1800’s. For example, U.S.
`
`Patent 8308X granted to Eli Briggs (“Briggs”) in 1834 teaches a non-motorized treadmill for
`
`horses.20 Briggs’ Figure 1 (below) depicts a self-powered treadmill with a frame, a continuous
`
`belt disposed about a front and rear shaft that are each joined to the frame, the running belt is
`
`comprised of transverse slats held together by an endless chain-like structure on each side. Figure
`
`1 of Briggs also clearly shows a curved running surface.21
`
`Figure 2. Briggs Figure 1. The curved running surface of the running belt is constructed of a
`continuous belt disposed over a front and a rear shaft rotatably joined to a frame. The running
`belt is comprised of laterally extending slats connected by endless belts on each side that are
`comprised of elements that interact with wheels spaced apart on the front and rear shafts. The
`running surface has a curved profile. A flywheel is joined to the front shaft.
`
`20 This patent was not cited during the prosecution of the ‘169 patent or the ‘580 patent.
`
`21 It is my understanding that the specification is not available from the USPTO because it was
`dest