Woodway USA, Inc. v. LifeCORE Fitness, Inc.

Filing 59

Claim Construction Order. Signed by Judge Jinsook Ohta on 11/14/2023.(exs)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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WOODWAY USA, INC.,

Case No.: 22-cv-00492-JO-BLM
Plaintiff,

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v.

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LIFECORE FITNESS INC. d/b/a Assault

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Fitness,

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CLAIM CONSTRUCTION ORDER

Defendant.

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Plaintiff Woodway USA, Inc. (“Woodway”) filed a patent infringement suit against

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Defendant LifeCORE Fitness, Inc. (“LifeCore”) alleging that Defendant’s treadmill

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products infringed its patents. Plaintiff and Defendant requested that the Court construe

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certain claim terms in the patents at issue. Dkts. 42, 43, 44. After considering the parties’

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briefing and the arguments presented during oral argument, the Court issues the following

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claim construction order.

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I.

BACKGROUND

A. Factual Background

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Plaintiff Woodway, a manufacturer of treadmills and other fitness, health, and

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rehabilitation equipment, is the owner of four patents for a manual, non-motorized

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treadmill. Plaintiff alleges that its CURVE® manual treadmills contain the technology

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protected by these four patents: (1) U.S. Patent No. 9,039,580 (“the ’580 Patent”); (2) U.S.

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Patent No. 10,561,884 (“the ’884 Patent”); (3) U.S. Patent No. 10,799,745 (“the ’745

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Patent”); and (4) U.S. Patent No. 11,465,005 (“the ’005 Patent”). Dkt. 34 (First Amended

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Complaint, “FAC”) ¶ 10.

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Plaintiff accuses Defendant LifeCore, also a manufacturer of manual treadmills, of

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infringing the four patents at issue in this case (the “asserted patents”). Plaintiff alleges

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that Defendant’s manual treadmills not only compete with Plaintiff’s CURVE® treadmills

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in the marketplace, but also infringe the patents upon which its CURVE treadmills were

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built. Specifically, Plaintiff alleges that Defendant’s AirRunner, AssaultRunner Elite,

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AssaultRunner Pro, and AssaultRunner treadmills infringe its four patents as follows: (1)

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claims 1-3, 5-6, 10, and 25 of the ’580 Patent; (2) claims 30-34, 37-54, 57, and 59 of the

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’884 Patent; (3) claims 1, 4, 7-12, 14, 17, 18, and 20-26 of the ’745 Patent; and (4) claims

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1-4, 6-13, and 15-16 of the ’005 Patent. See Dkt. 46 (“Pl.’s Opening CC Br.”) at 2; FAC

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¶¶ 13-14, 21-22, 29-30, 37-38.

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B. The Asserted Patents

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The four patents at issue in this case contain inventions related to manual treadmills

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and share substantially similar specifications. ’580 Patent at [54]; ’884 Patent at [54]; ’745

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Patent at [54]; ’005 Patent at [54]. While drawn from the specification of the ’580 Patent,

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below is a description of the manual treadmill featured in all four of the patents at issue:

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Similar to a treadmill powered by a motor, a manual treadmill . . .

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incorporate[s] some system or means to absorb or counteract the forward

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velocity generated by a user so that the user may generally maintain a

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substantially static position on the running surface of the treadmill. The
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counteracting force driving the belt of a manual treadmill is desirably

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sufficient to move the belt at substantially the same speed as the user so that

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the user stays in roughly the same static position on the running surface.

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Unlike motor-driven treadmills, however, this force is not generated by a

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motor.

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Id. at col. 1 l. 61-col. 2 l. 3. All four patents feature a “manual powered treadmill,”

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including a “frame” with a front end and a rear end; a “running belt” where at least a portion

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of the “running surface” is “curved;” and a “safety device” that permits the running belt to

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“freely rotate” in one direction while “substantially prevent[ing]” rotation in the other

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direction. ’884 Patent col. 30 l. 51-col. 36 l. 8; see ’580 Patent col. 32 ll. 48-67; ’745 Patent

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col. 32 l. 60-col. 33 l. 20; ’005 Patent col. 32 l. 60-col. 33 l. 16.

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An “exemplary embodiment” of the manual-powered treadmills covered by
Plaintiff’s four patents is depicted below:

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’580 Patent fig. 1.
The following sets forth the independent claims from each of the four patents that
Plaintiff claims Defendant infringes:

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Independent Claim 1 of the ’580 Patent

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A manually powered treadmill comprising:

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a frame having a front end and a rear end positioned opposite the front end;

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a front shaft rotatably coupled to the frame at the front end;

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a rear shaft rotatably coupled to the frame at the rear end;

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a first bearing rail having a plurality of bearings, the first bearing rail attached

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to a left side of the frame;

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a second bearing rail having a plurality of bearings, the second bearing rail

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attached to a right side of the frame;
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a running belt supported by the first bearing rail and the second bearing rail

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and disposed about the front shaft and the rear shaft, wherein the running belt

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follows a curved running surface; and

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a safety device coupled to at least one of the front shaft and the rear shaft,

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wherein the safety device is structured to substantially prevent rotation of at

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least one of the front shaft and the rear shaft in a first rotational direction while

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permitting rotation of the at least one of the front shaft and the rear shaft in a

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second rotational direction opposite the first rotational direction.

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’580 Patent col. 32 ll. 48-67.

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Independent Claim 30 of the ‘884 Patent

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A manually powered treadmill, comprising:

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a frame having a front end and a rear end positioned opposite the front end;

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a front shaft coupled to the frame proximate the front end;

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a rear shaft coupled to the frame proximate the rear end;

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a plurality of bearings coupled to the frame;

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a running belt at least partially supported by the plurality of bearings, wherein

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the running belt comprises a curved running surface; and

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a safety device coupled to the frame and the running belt, the safety device

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having a first rotatable element and a second rotatable element, wherein at

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least one of the first and second rotatable elements are adapted for rotation

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relative to the frame;

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wherein the running belt and one of the first and second rotatable elements of

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the safety device freely rotate in a first direction of rotation relative to the

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other of the first and second rotatable elements of the safety device, but

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interference between the safety device and at least one of the first and second

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rotatable elements substantially prevents rotation in a second direction of

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rotation, opposite the first direction of rotation, of the running belt and the one

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of the first and second rotatable elements relative to the other of the one of the

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first and second rotatable elements.

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’884 Patent col. 35 l. 30-col. 36 l. 8.

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Independent Claim 1 of the ’745 Patent

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1. A treadmill, comprising:

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a frame;

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a front running belt pulley coupled to the frame;

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a rear running belt pulley coupled to the frame and spaced a distance from the

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front running belt pulley;

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a plurality of bearings coupled to the frame;

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a running belt at least partially supported by at least one of the front running

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belt pulley and the rear running belt pulley, wherein the running belt includes

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a running surface, at least a portion of which is curved;

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a support element coupled to the frame; and

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a safety device coupled to the running belt, the safety device at least partially

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supported by the support element, wherein the safety device includes a first

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safety race element and a second safety race element, wherein at least one of

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the first and second safety race elements is adapted for rotation relative to the

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frame, and wherein one of the first and second safety race elements

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substantially surrounds the other of the one of the first and second safety race

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elements;

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wherein one of the first and second safety race elements and the running belt

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freely rotates in a first direction of rotation relative to the frame, however, in

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a second direction of rotation, opposite the first direction of rotation, the one

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of the first and second safety race elements is substantially prevented from

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rotation relative to the frame to substantially prevent rotation of the running

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belt relative to the frame.

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’745 Patent col. 32 l. 60-col. 33 l. 20.
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Independent Claim 1 of the ’005 Patent

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1. A manually powered treadmill, comprising:

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a frame;

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at least one front running belt pulley coupled to the frame;

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at least one rear running belt pulley coupled to the frame and spaced a distance

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from the at least one front running belt pulley;

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a running belt at least partially supported by at least one of the at least one

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front running belt pulley and the at least one rear running belt pulley, wherein

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the running belt includes a running surface, at least a portion of which is

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curved;

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a safety device coupled to the frame and the running belt, the safety device

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having a first element and a second element, the first element substantially

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surrounding the second element or the second element substantially

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surrounding the first element;

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wherein one of the first and second elements of the safety device and the

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running belt freely rotate in a first direction of rotation relative to the frame,

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however, in a second direction of rotation, opposite the first direction of

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rotation, the one of the first and second elements is substantially prevented

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from rotation relative to the frame to substantially prevent or resist rotation of

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the running belt relative to the frame.

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’005 Patent col. 32 l. 60 to col. 33 l. 16.

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C. Procedural History

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Plaintiff filed its initial complaint on April 11, 2022, alleging that Defendant’s

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manual treadmills infringe the ’580 Patent, the ’884 Patent, and the ’745 Patent. Dkt. 1

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(“Compl.”). On October 24, 2022, Plaintiff filed a First Amended Complaint to add the

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allegation that Defendant’s treadmills also infringe the ’005 Patent. FAC. The parties now

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request that the Court construe the meaning of various claims terms in these four patents.

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In their claim construction briefing, the parties agreed on the proper construction for two
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claim terms 1 and requested that the Court construe the following six disputed claim terms:

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(1) “substantially prevent;” (2) “safety device;” (3) “shaft;” (4) “element;” (5) “race

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element;” and (6) “interference between the safety device and at least one of the first and

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second rotatable elements.” See Dkts. 42, 43, 44, 45, 46, 47, 48.

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II.

LEGAL STANDARD

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“It is a ‘bedrock principle’ of patent law that the claims of a patent ‘define the

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invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp.,

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415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation omitted). “The purpose of claim

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construction is to ‘determin[e] the meaning and scope of the patent claims’” that one party

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accuses the other of infringing. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521

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F.3d 1351, 1360 (Fed. Cir. 2008) (citation omitted).

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Courts should give claim terms “their ordinary and customary meaning”—i.e., “the

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meaning that the term would have to a person of ordinary skill in the art in question at the

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time of the invention.” Phillips, 415 F.3d at 1312–13. “In some cases, the ordinary

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meaning of claim language as understood by a person of ordinary skill in the art may be

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readily apparent even to lay judges, and claim construction in such cases involves little

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more than the application of the widely accepted meaning of commonly understood

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words.” Id. at 1314. “However, in many cases, the meaning of a claim term as understood

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by persons of skill in the art is not readily apparent.” O2 Micro, 521 F.3d at 1360. In such

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cases, the court must look to sources like “‘the words of the claims themselves, the

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remainder of the specification, the prosecution history, and extrinsic evidence.’” Phillips,

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415 F.3d at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,

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The parties agree that the claim term “bearing rail[]” should be construed as “a rail with bearings.” Dkt.
44, (“Jt. CC Worksheet”) at 2. In addition, the parties agree that the claim term “coupled” should be
construed as “the joining of two members directly or indirectly to one another.” Jt. CC Worksheet at 3.
The Court finds that the parties’ joint proposed constructions are well supported by the language of the
claim and the specifications.
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381 F.3d 1111, 1116 (Fed. Cir. 2004)); see Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d

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1201, 1217–18 (Fed. Cir. 2014).

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In determining the ordinary and customary meaning of a claim, a court should first

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look to the language of the claims. See Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370,

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1373 (Fed. Cir. 2019) (“[C]laim construction must begin with the words of the claims

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themselves.”) (citation omitted); Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d

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1291, 1299 (Fed. Cir. 2014) (“[A] claim construction analysis must begin and remain

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centered on the claim language itself.”) (citation omitted). A court must also read claims

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“in view of the specification, of which they are a part.” Markman v. Westview Instruments,

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Inc., 52 F.3d 967, 979 (Fed. Cir. 1995); see 35 U.S.C. § 112(b) (“The specification shall

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conclude with one or more claims particularly pointing out and distinctly claiming the

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subject matter which the inventor or a joint inventor regards as the invention.”). “‘Apart

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from the claim language itself, the specification is the single best guide to the meaning of

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a claim term.’” Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014) (quoting

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AIA Eng’g Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264, 1272 (Fed. Cir. 2011)).

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In addition to the claim language and the specification, courts may consider the

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patent’s prosecution history if it is in evidence. Phillips, 415 F.3d at 1317. The prosecution

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history “consists of the complete record of the proceedings before the [Patent and

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Trademark Office (‘PTO’)] and includes the prior art cited during the examination of the

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patent.” Id. “Like the specification, the prosecution history provides evidence of how the

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PTO and the inventor understood the patent.” Id. A court should also consult the

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prosecution history “so that the court can exclude any interpretation that was disclaimed

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during prosecution.” Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1378 (Fed. Cir.

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2005) (citing Phillips, 415 F.3d at 1317).

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While analysis of the above intrinsic evidence will resolve claim construction

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disputes in most situations, courts may resort to extrinsic evidence when necessary. See

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Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); Teva Pharms.

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USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015); see also Seabed Geosolutions (US)
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Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (“If the meaning of a claim

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term is clear from the intrinsic evidence, there is no reason to resort to extrinsic evidence.”).

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“Where the intrinsic record is ambiguous, and when necessary,” district courts may “rely

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on extrinsic evidence, which ‘consists of all evidence external to the patent and prosecution

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history, including expert and inventor testimony, dictionaries, and learned treatises.’”

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Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1360 (Fed.

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Cir. 2013) (quoting Phillips, 415 F.3d at 1317). A court must evaluate all extrinsic

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evidence in light of the intrinsic evidence. Phillips, 415 F.3d at 1319.

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III.

DISCUSSION

A. Construction of “Substantially Prevents”

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The Court starts its claim construction with the phrase “substantially prevents.” The

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four asserted Patents feature a safety device that allows the running belt of the treadmill to

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move in one direction but “substantially prevent” that movement in the opposite direction.

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Defendant proposes that the Court construe this claim term as “prevent[s] any movement

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after allowing no or minimal movement.” Jt. CC Worksheet at 1. Plaintiff, on the other

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hand, proposes the construction “entirely / largely / mostly / generally though not

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necessarily entirely prevent[s].” Id. As seen in their respective proposed constructions,

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both parties agree that the patents’ safety devices limit movement of running belt in a

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second direction but dispute whether that movement is entirely restricted as opposed to

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mostly restricted.

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The four asserted Patents do not elaborate on the degree to which the safety device

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impedes rotation of the belt in the second direction. See ’884 Patent col. 35 l. 60-col. 36 l.

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8; ’580 Patent col. 32 ll. 61-64; ’745 Patent col. 33 ll. 4-20; and ’005 Patent col. 33 ll. 4-

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16. The claim language is, therefore, of little help in resolving the parties’ dispute which

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centers on the degree to which the safety device restricts movement. Because it finds little

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guidance in the language of the claim, the Court turns next to the prosecution history to

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determine the proper construction of “substantially prevents.”
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Defendant argues that Plaintiff, while prosecuting its patents, already disclaimed a

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definition of “substantially prevents” that allows for some rotation in the second direction;

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thus, its current proposed construction fails. Def.’s Opening CC Br. at 7–9; Dkt. 47,

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(“Def.’s Responsive CC Br.”) at 6–7. Under the doctrine of prosecution disclaimer, a

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patent owner cannot claim a meaning that they “clearly and unmistakably” disavowed

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during the process of prosecuting the patent application. Genuine Enabling Tech. LLC v.

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Nintendo Co., 29 F.4th 1365, 1374 (Fed. Cir. 2022); see also Computer Docking Station

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Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008) (“Prosecution disclaimer does not

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apply to an ambiguous disavowal.”). When patentees “unequivocally and unambiguously”

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disavow certain meanings in order to obtain a patent, they are precluded “‘from recapturing

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through claim interpretation specific meanings disclaimed during prosecution.’” Aylus

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Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017) (quoting Omega Eng’g,

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Inc, v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)). This doctrine “ensures that

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claims are not ‘construed one way in order to obtain their allowance and in a different way

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against accused infringers.’” Id. at 1360 (quoting Southwall Techs., Inc. v. Cardinal IG

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Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)). “The party seeking to invoke prosecution

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history disclaimer bears the burden of proving the existence of a clear and unmistakable

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disclaimer that would have been evident to one skilled in the art.” Genuine Enabling Tech.,

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29 F.4th at 1374 (citation omitted).

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Applying the above principles, the Court examines whether Plaintiff2 made

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statements during the prosecution history of these patents which contradict the construction

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While Plaintiff is distinct from the applicants, any potential disclaimer by the applicants during
the prosecution history will apply to Plaintiff as the current owner of the asserted patents. See Aylus, 856
F.3d at 1359 (“Prosecution disclaimer ‘preclud[es] [patent owners] from recapturing through claim
interpretation specific meanings disclaimed during prosecution.’” (quoting Omega, 334 F.3d at 1323));
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“[T]he prosecution history
(or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been
disclaimed or disavowed during prosecution in order to obtain claim allowance.”).
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that it now seeks. Plaintiff initially sought a patent for its inventions using the following

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claim language:

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a safety device coupled to at least one of the front shaft and the rear shaft,

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wherein the safety device is structured to restrict movement of at least one

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of the running belt, the front shaft, and the rear shaft in a first rotational

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direction while permitting movement of the at least one of the running belt,

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the front shaft, and the rear shaft in a second rotational direction opposite the

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first rotational direction.

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Dkt. 45-4, Def.’s Ex. 3 at p. 29 (emphasis added). As seen in the highlighted language, the

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original claim language proposed by Plaintiff was unclear on whether the safety device

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restricts the movement of the running belt in a second direction, as opposed to the

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movement of other components like the front shaft or rear shaft. By describing the

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invention as restricting movement of at least one of the above three components, the

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language left open the possibility that the safety device would not restrict the movement of

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the running belt at all. On July 19, 2018, the examiner for the PTO rejected this claim

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because previous inventions already contained a safety device with the same functionality.

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See Bostic, Cutter, and Schonenberger 3 at Dkt. 45-3, Def.’s Ex. 2 at p. 19. The examiner

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explained that Plaintiff’s patent was obvious in light of the following prior art: “Regarding

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claim 1, Bostic teaches a manually powered treadmill, comprising: . . . a safety device

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coupled to at least one of the front shaft and the rear shaft, wherein the safety device is

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structured to restrict movement of at least one of the running belt, the front shaft, and the

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rear shaft in a first rotational direction.” Id.

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A patent claim is obvious under 35 U.S.C. § 103 if “the differences between the subject matter 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.” TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1357 (Fed. Cir. 2019) (quoting 35 U.S.C.
§ 103(a)); accord KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “Obviousness can be proven
by combining existing prior art references.” Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364
(Fed. Cir. 2008).
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In response to the examiner’s rejection, Plaintiff sought to differentiate its

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technology from the prior art on the grounds that it only allowed one-directional movement

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of the running belt. In order to do so, it amended its proposed claim language to clarify

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that the running belt does not move in two directions:

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a safety device coupled to the running belt and to at least one of the front shaft

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and the rear shaft, so that a portion of the safety device, the running belt and

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the at least one of the front shaft and the rear shaft freely rotate when the

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portion of the safety device rotates in a first direction of rotation relative to

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the frame, however, in a second direction of rotation, opposite the first

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direction of rotation, the safety device substantially prevents rotation of the

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portion of the safety device, the running belt and the at least one of the front

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shaft and the rear shaft . . . .

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Dkt. 45-4, Def.’s Ex. 3 at p. 29 (emphasis in original); see also id. at p. 31, 33, 35, 36, 38.

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In addition to amending the language of the claim, applicants made further statements

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distinguishing their invention as only allowing for one-way rotation while Bostic allowed

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rotation of the treadmill belt in both directions. Id. at p. 46. During an interview with the

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examiner, the applicants explained that Bostic was different because “the one-way clutch

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of Bostic does not provide for rotation in only one direction”—as a result, “[Bostic’s]

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treadmill belt 10 is free to move in both directions.” Id. at p. 42, 45.

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In response to a second rejection on prior art grounds, Plaintiffs made further

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statements to clarify that its invention only allowed for one way rotation of the running

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belt. On August 5, 2019, the examiner again rejected the same claim as obvious, this time

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in light of the prior art references of Bostic, Cutter, Schonenberger, and Savettiere. See

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Dkt. 55-1, Ex. 1 at 2. In explaining the second rejection, the examiner pointed to the

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Savettiere, another treadmill including a safety device, and asserted that the combination

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of the prior art found in Bostic and Savetierre taught a mechanism that would render the

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pending claims obvious. The examiner asserted:

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Savettiere teaches a treadmill including a safety device (360) coupled to a
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frame and running belt such that a portion (364, 370) of the safety device is at

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least partially supported by housing (362, 368) of the safety device so that the

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portion of the safety device and the running belt freely rotate when the portion

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of the safety device rotates in a first direction relative to the frame, however,

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in a second direction of rotation, opposite the first direction of rotation,

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interference between the housing and the portion of the safety device

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substantially prevents rotation of the portion of the safety device and the

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running belt [0136]. It would have been obvious to one of ordinary skill in

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the art . . . to modify the device taught by Bostic by providing the safety

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mechanism taught by Savettiere in order to prevent accidental reverse

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movement of the [running] belt.”

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Id. at 3. Again, applicants distinguished their invention on the grounds that the prior art,

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including Savetierre, identified above allowed for two-way rotation of the treadmill belt.

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Applicants asserted:

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[T]he one-way clutch device of Savettiere does not teach enabling or

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allowing only one rotational direction of movement. Rather, the one-way

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clutch device 372 discloses enabling relative movement between the rollers

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354 and the belt 270 in one rotational direction and transmitting frictional

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force from the rollers 354 to the belt 270 in an opposite rotational directional

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direction. At no point are the rollers 354 used to restrict rotation of the

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treadmill belt 270 to move in only one rotational direction.

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Dkt. 46-1, Pl.’s Ex. F at p. 220 (italics in original). In other words, while Savetierre

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contains components that create friction to prevent accidental or unintended reverse

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movement, it did ultimately allow for intentional bi-directional movement of the running

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belt. In contrast to this prior art, Plaintiffs emphasized that its patents featured a running

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belt that moved in one rotational direction only. Id.

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After reviewing the above prosecution history statements, the Court concludes that

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Plaintiff clearly and unequivocally disclaimed an invention that allowed for bi-directional
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movement of its treadmill belt; a disclaimer that is at odds with the broad definition it now

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proposes. Throughout the prosecution history, the applicants pointed to the bi-directional

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rotation capabilities of Bostic and Savettiere to argue that its invention was different and

4

not covered by prior art. Thus, Plaintiff cannot now argue that the proper construction of

5

its patent should be broad enough to encompass some degree of bi-directional rotation.4

6

See Computer Docking Station, 519 F.3d at 1374 (“A patentee could [make a disclaimer],

7

for example, by clearly characterizing the invention in a way to try to overcome rejections

8

based on prior art.”); Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136,

9

1141 (Fed. Cir. 2021). On this ground, the Court rejects Plaintiff’s proposed definition of

10

“substantially prevents” as “entirely / largely / mostly / generally though not necessarily

11

entirely prevent[s]” because such a construction would be broad enough for Plaintiff to

12

“recapture through claim interpretation” the bi-directional movement it disavowed during

13

the prosecution history.

14

While the Court agrees with Defendant that Plaintiff disclaimed the scope of its

15

claims to the extent set forth above, it declines to adopt the precise construction proposed

16

by Defendant, which includes the specific requirement of “preventing any movement after

17

allowing no or minimal movement.” The Federal Circuit has explained that “even in the

18

case of an unequivocal disavowal of claim scope, the court must construe the claim

19

‘congruent with the scope of the surrender.’” Cordis Corp. v. Medtronic Ave, Inc., 511

20

F.3d 1157, 1177 (Fed. Cir. 2008) (quoting Omega, 334 F.3d at 1324); see Traxcell, 15

21

F.4th at 1141.

The Court finds Defendant’s proposed construction—“prevent any

22
23
24
25
26
27
28

4

Plaintiff argues that further prosecution history, specifically the understanding of the examiner
in allowing the patents at issue, demonstrates that no such disclaimer took place. Pl.’s Responsive CC Br.
at 6. Plaintiff’s argument is not persuasive because it is based on a misapprehension of the prosecution
disclaimer doctrine. Whether a patentee disclaimed certain meanings is dependent solely on the
applicants’ statements in distinguishing its claim, not the examiner’s decision-making process in allowing
claims. See Arendi S.A.R.L. v. Google LLC, 882 F.3d 1132, 1135 (Fed. Cir. 2018) (“‘[I]t is the applicant,
not the examiner, who must give up or disclaim subject matter that would otherwise fall within the scope
of the claims.’” (quoting Sorensen, 427 F.3d at 1379)).
15
22-cv-00492-JO-BLM

1

movement after allowing no or minimal movement”—oversteps the scope of Plaintiff’s

2

disclaimers during the prosecution history. During the prosecution history, applicants

3

distinguished prior art technology on the grounds that it did not “restrict rotation of the

4

treadmill belt . . . to move in only one rotational direction.” Dkt. 46-1, Pl.’s Ex. F at p. 220

5

(emphasis in original). In doing so, Plaintiff clearly asserted that its device does restrict

6

rotation of the belt such that the belt essentially moves in only one rotational direction. It

7

did not, however, make any statements or disclaimers about the degree of possible

8

movement in the second rotational direction (the possibility of an initial swing back of the

9

treadmill) before the safety device function locks in to allow for movement in one direction.

10

Defendants’ proposed construction that would call for no or minimal movement in the

11

second direction is, therefore, more restrictive than supported by the claim language and

12

the prosecution history. Instead, to better align with both, the Court construes the claim

13

term “substantially prevents” as “restricts rotation to allow for only one rotational direction

14

of movement.”5

15

The Court notes that its construction which requires that the running belt move only

16

in one direction is consistent with and supported by the asserted patents’ specifications.

17

Specifically, several passages in the specifications are consistent with the notion that the

18

protected inventions restrict movement of the running belt to allow for rotation in only

19

direction. For example, the specification describes a “one-way bearing assembly 1300

20

[that] is a motion restricting element that is configured to permit rotation of at least one of

21

the front and rear shaft assemblies 44, 46 (and hence the running belt 16) in only one

22

direction . . . .” ’580 Patent col. 27 ll. 11-15; see also id. at col. 28 ll. 1-5 (“The one-way

23

bearing assembly 1500 is a motion restricting element that is configured to permit rotation

24
25
26
27
28

5

The Court adopts Defendant’s proposed construction as modified because it is well supported by
the clear and unmistakable disclaimer in the prosecution history and the asserted patents’ specifications.
Moreover, at the claim construction hearing, Defendant represented that it accepted the Court’s
modification of its proposed construction. In light of the above, the Court declines to address the
additional grounds that Defendant advances for adopting its proposed construction for the claim term
“substantially prevents.”
16
22-cv-00492-JO-BLM

1

of at least one of the front and rear shaft assemblies 44, 46 (and hence the running belt 16)

2

in only one direction . . . .”); id. at col. 29 ll. 23-25 (“Other safety devices to help prevent

3

undesirable forward rotation of the running belt 16 . . . .”).

4

B. Disputed Construction: “Safety Device”

5
6

The Court now turns to the second disputed term, “safety device,” which appears in
all four of the patents that Plaintiff accuses Defendant of infringing.

7

i.

8

Defendant proposes that the Court construe the claim term “safety device” in the

9

’580 Patent as a means-plus-function limitation with corresponding structures disclosed at

10

27:7-29:28 of the ’580 Patent’s specification. Jt. CC Worksheet at 2. Plaintiff, on the other

11

hand, proposes the construction “a device that permits movement in substantially only one

12

direction.” Id. The Court will first consider whether the term “safety device” in the ’580

13

Patent should be construed as a means-plus-function limitation.

“Safety Device” in the ’580 Patent

14

An element in a claim that describes a function without describing the physical

15

structures for performing that function is a “means-plus-function” claim element. See

16

Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (a means-plus-function

17

limitation recites “a function without reciting structure for performing the function”).

18

Section 112 ¶ 6 of the Patent Act provides:

19

An element in a claim for a combination may be expressed as a means or step

20

for performing a specified function without the recital of structure, material,

21

or acts in support thereof, and such claim shall be construed to cover the

22

corresponding structure, material, or acts described in the specification and

23

equivalents thereof.

24
25
26
27
28
17
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1

35 U.S.C. § 112 ¶ 6 (pre-America Invents Act); accord 35 U.S.C. § 112(f) (current).6 In

2

enacting this provision, Congress “‘struck a balance in allowing patentees to express a

3

claim limitation by reciting a function to be performed rather than by reciting structure for

4

performing that function,’ while ‘placing specific constraints on how such a limitation is

5

to be construed’—that is, by restricting the ‘scope of coverage to only the structure,

6

materials, or acts described in the specification as corresponding to the claimed function

7

and equivalents thereof.’” Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291,

8

1297 (Fed. Cir. 2018) (quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347

9

(Fed. Cir. 2015) (en banc)).

10

“The overall means-plus-function analysis is a two-step process.” Dyfan, 28 F.4th

11

at 1365. “The first step is to determine whether a claim limitation is drafted in means-plus-

12

function format,” which requires a court to “determine whether [the claim] connotes

13

sufficiently definite structure to a person of ordinary skill in the art.” Id. “If the limitation

14

connotes sufficiently definite structure, it is not drafted in means-plus-function format, and

15

§ 112 ¶ 6 does not apply.” Id. If, however, the court concludes that the limitation describes

16

functions as opposed to physical structure, the court performs the second step of

17

“determining ‘what structure, if any, disclosed in the specification corresponds to the

18

claimed function.’” Id. (quoting Williamson, 792 F.3d at 1351).

19

“If the limitation uses the word ‘means,’ there is a rebuttable presumption that § 112

20

¶ 6 applies.” Rain Computing, Inc. v. Samsung Elecs. Am., Inc., 989 F.3d 1002, 1005 (Fed.

21

Cir. 2021). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce

22

words that reflect nothing more than verbal constructs may be used in a claim in a manner

23
24
25
26
27
28

6

Congress amended 35 U.S.C. § 112 when it enacted the Leahy–Smith America Invents Act
(“AIA”). In re Durance, 891 F.3d 991, 1002 n.9 (Fed. Cir. 2018). “However, the amended version of §
112 applies only to patent applications ‘filed on or after’ September 16, 2012.” Id. The parties agree that
the pre-AIA version of § 112 applies to the asserted patents. See Pl.’s Opening CC Br. at 8 n.4; Def.’s
Opening CC Br. at 12 n.5. In addition, the Court notes that the above language in paragraph 6 of the preAIA version of § 112 is identical to the language in subsection (f) of the current version of § 112. See 35
U.S.C. § 112(f).
18
22-cv-00492-JO-BLM

1

that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350. Like the

2

word “means”, the above “nonce” words “‘typically do not connote sufficiently definite

3

structure.’” Id. (citation omitted). Thus, their use can “presumptively bring the disputed

4

claims limitations within the ambit of § 112 ¶ 6.” Zeroclick, LLC v. Apple Inc., 891 F.3d

5

1003, 1008 (Fed. Cir. 2018); see also Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 1373

6

(Fed. Cir. 2020). The Federal Circuit has cautioned, however, that the use of a nonce word

7

is probative but not dispositive: “[E]ven if the claims recite a nonce term followed by

8

functional language, other language in the claim ‘might inform the structural character of

9

the limitation-in-question or otherwise impart structure’ to the claim term.” MTD Prod.

10

Inc. v. Iancu, 933 F.3d 1336, 1341–42 (quoting Williamson, 792 F.3d at 1351). “The

11

ultimate question [remains] whether the claim language, read in light of the specification,

12

recites sufficiently definite structure” to a person skilled in the art. Id. at 1342 (citation

13

omitted). 7

14

Here, the Court concludes that the term “safety device” is a means-plus-function

15

limitation because the claim language describes a function rather than a set of physical

16

structures. The Court begins with the claim language which describes the feature as

17

follows:

18

a safety device coupled to at least one of the front shaft and the rear shaft,

19

wherein the safety device is structured to substantially prevent rotation of at

20

least one of the front shaft and the rear shaft in a first rotational direction while

21
22
23
24
25
26
27
28

7

In its briefing, Plaintiff relies on the Federal Circuit’s decision in Inventio AG v. ThyssenKrupp
Elevator Americas Corp., 649 F.3d 1350 (Fed. Cir. 2011). See Pl.’s Responsive CC Br. at 11; Pl.’s
Opening CC Br. at 10. Inventio is no longer good law regarding means-plus-function limitations. In a
subsequent decision, the Federal Circuit sitting en banc in Williamson v. Citrix Online, LLC expressly
overruled the legal standard utilized by the Inventio court to evaluate the means-plus-function issues in
that case. Compare Inventio, 649 F.3d at 1356 (“[T]he presumption flowing from the absence of the term
‘means’ is a strong one that is not readily overcome.”) with Williamson, 792 F.3d at 1349 (“[W]e . . .
expressly overrule the characterization of that presumption as ‘strong.’ We also overrule the strict
requirement of a showing that the limitation essentially is devoid of anything that can be construed as
structure.”) (citation omitted).
19
22-cv-00492-JO-BLM

1

permitting rotation of the at least one of the front shaft and the rear shaft in a

2

second rotational direction opposite the first rotational direction.

3

’580 Patent col. 32 ll. 61-67. The claim term “safety device” contains the generic or nonce

4

word “device.” And while, in some instances, claim language may otherwise describe the

5

physical structure of a component despite the use of this generic word, here it does not.

6

The claim language explains what the “safety device” does—i.e., “substantially prevent[s]

7

rotation of at least one of the front shaft and the rear shaft in a first rotational direction”—

8

but not what it looks like. ’580 Patent col. 32 ll. 63-67. In other words, the claim language

9

does not describe the physical structure of the device such as the type or shape of the

10

components that perform this function. Unlike the “[m]any devices [that] take their names

11

from the functions they perform . . . such as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or

12

‘lock,’” but still convey a convey physical, structural meaning, the term “safety device”

13

does not. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996);

14

accord Zeroclick, 891 F.3d at 1008. Plaintiff has not provided the Court with any evidence

15

showing that, like the above examples, the term “safety device” would “convey[] a

16

particular structural meaning” to a person skilled in the art. See Diebold Nixdorf, 899 F.3d

17

at 1301.

18

Plaintiff argues that the claims contain some structural language by pointing to the

19

following claim language: the “safety device [is] coupled to at least one of the front shaft

20

and the rear shaft.” ’580 Patent col. 32 ll. 61-62; see Pl.’s Responsive CC Br. at 11. The

21

Federal Circuit’s decision in MTD is instructive here. In MTD, even though the claim

22

language at issue connoted some structure by “reciting that the mechanical control

23

assembly is ‘coupled to the left and right drive units,’” the Federal Circuit explained that

24

the claim language as a whole still favored application of § 112 ¶ 6 because the rest of the

25

claim language was primarily functional. See 933 F.3d at 1343. Here, as in MTD, although

26

the ’580 Patent’s claim language contains some structural language by specifying that the

27

“safety device” is coupled to one of the shafts, the claim language related to the term

28

“safety device” focuses on function rather than structure. Accordingly, the Court holds
20
22-cv-00492-JO-BLM

1

that the claim term “safety device” in the ’580 Patent is a means-plus-function limitation

2

under § 112 ¶ 6.

3

Plaintiff also asserts that “safety device” cannot be a means-plus-function limitation

4

because the specification contains a physical description of the “safety device.” Plaintiff

5

points to the following as specification language:

6

A number of safety devices may be used with the treadmill 10 to help prevent

7

undesirable forward rotation of the running belt 16. FIG. 36 illustrates a safety

8

device shown as a one-way bearing assembly 1300 according to an exemplary

9

embodiment.

10

’580 Patent col. 27 ll. 7-15. Plaintiff argues that the above physical description of the safety

11

device as a “one-way bearing assembly” would convey to a person skilled in the art a sense

12

of the physical structures comprising the “safety device.” Plaintiff’s reliance on this

13

passage in the specification is misplaced because this highlighted specification language

14

describes an “exemplary embodiment”—i.e., one example of what the safety device in the

15

claimed invention can look like as opposed to a description of what the invention must look

16

like. MTD, 933 F.3d at 1343 (“[A] preferred embodiment disclosed in the specification

17

cannot impart structure to a term that otherwise has none.”); id. at 1344 (“That the

18

specification discloses a structure corresponding to an asserted means-plus-function claim

19

term does not necessarily mean that the claim term is understood by persons of ordinary

20

skill in the art to connote a specific structure or a class of structures.”). As such, Plaintiff

21

reliance on an “exemplary embodiment” is insufficient to demonstrate that the term “safety

22

device” would connote a particular physical structure to persons skilled in the art.8

23

Because it concludes that the term “safety device” in the ’580 Patent is a means-

24

plus-function limitation, the Court must now perform the next step of “determining ‘what

25
26
27
28

8

Plaintiff also notes that the examiner never stated “safety device” was a means-plus-function
term during the prosecution of the patent, see Pl.’s Responsive CC Br. at 11; Pl.’s Opening CC Br. at 9,
No statute or regulation requires that all means-plus-function claims must be identified at the time of
prosecution in order for a Court to construe them as such.
21
22-cv-00492-JO-BLM

1

structure, if any, disclosed in the specification corresponds to the claimed function.’”

2

Dyfan, 28 F.4th at 1365 (quoting Williamson, 792 F.3d at 1351). Defendant correctly

3

identifies the corresponding structure as the embodiments described in specification from

4

column 27, line 7 to column 29, line 28. See Jt. CC Worksheet at 2; Def.’s Opening CC

5

Br. at 3-4, 14; Dkt. 47, Def.’s Responsive CC Br. at 4. In those passages, the specification

6

describes various devices, including one-way bearing assemblies, cam locking systems,

7

taper locks, user operated pin systems, and band brake systems with a lever. See ’580

8

Patent col. 27 ll. 7-15, col. 27 l. 66-col. 28 l. 1, col. 29 ll. 23-28. For the above reasons,

9

the Court construes the claim term “safety device” in the ’580 Patent as a means-plus-

10

function claim limitation with the corresponding structure as a one-way bearing assembly,

11

a cam locking system, a taper lock, a user operated pin system, or a band brake system with

12

a lever.

13

ii.

14

Defendant proposes that the claim term “safety device” in the ’884 Patent, the ’745

15

Patent, and the ’005 Patent be construed as “a device that includes the elements recited and

16

that prevents any movement after allowing no or minimal movement.” Jt. CC Worksheet

17

at 2. Plaintiff proposes that the claim term be construed as “a device that permits movement

18

in substantially only one direction.” Id. Unlike the dispute surrounding the ‘580 Patent,

19

neither party contends that the term “safety device” in these three patents should be

20

construed as a means-plus-function claim.

“Safety Device” in the ’884, ’745, and ’005 Patents

21

The crux of the dispute underlying the parties’ competing constructions centers on

22

whether the construction for the term “safety device” should incorporate and reflect the

23

prosecution disclaimer related to the claim term “substantially prevents.” The claim

24

language of the ’884 Patent and the ’745 Patent explains that the claimed “safety device”

25

“substantially prevent[s]” “rotation[] of the running belt” in one direction. See, e.g., ’884

26

Patent col. 35 l. 60-col. 36 l. 8; ’745 Patent col. 33 ll. 4-20. The claim language of the ’005

27

Patent is substantively similar, explaining that the claimed “safety device” “substantially

28

prevent[s] or resist[s] rotation of the running belt” in one direction “relative to the frame.”
22
22-cv-00492-JO-BLM

1

See, e.g., ’005 Patent col. 33 ll. 4-16. Because these claims all use the term “substantially

2

prevent” in describing the “safety device,” the Court applies and incorporates the

3

prosecution disclaimer it found regarding the term “substantially prevent” in construing the

4

term “safety device.” Accordingly, the Court construes the term “safety device” in the

5

’884 Patent and the ’745 Patent as “a device that includes the elements recited and restricts

6

rotation to allow for only one rotational direction of movement.” The Court construes the

7

term “safety device” in the ’005 Patent as “a device that includes the elements recited and

8

restricts rotation to allow for only one rotational direction of movement or resists rotation

9

in one direction of rotation.”

10

Despite the Court’s conclusion above that the identical claim term “safety device”

11

in the ‘580 Patent should be construed as a means-plus-function limitation, the Court agrees

12

with the parties that “safety device” as used in the ’884, ’745, and ’005 Patents is not a

13

means-plus-function limitation.9 While the Federal Circuit has cautioned that “[w]here

14

multiple patents derive from the same parent application and share many common terms,”

15

courts must generally “interpret the claims consistently across all asserted patents,” this is

16

not a hard and fast rule that applies in every instance. See, e.g., Samsung Elecs. Co. v. Elm

17

3DS Innovations, LLC, 925 F.3d 1373, 1378 (Fed. Cir. 2019). In fact, this presumption of

18

consistent interpretation only applies “unless otherwise compelled.” Omega, 334 F.3d at

19

1334. Here, as set forth below, the different claim language surrounding the term “safety

20

device” in the four patents warrants different constructions of the term “safety device.”

21

While all of the asserted claims recite a “safety device,” the four related patents use

22

different claim language and describe the physical components of the “safety device” to

23

different degrees. In contrast to the claim language of the ’580 Patent which only describes

24
25
26
27
28

9

While Plaintiff agrees that “safety device” in the ’884, ’745, and ’005 Patents is not a means plus
function claim, it argues that this conclusion means that the same term in the ‘580 Patent cannot be a
means-plus-function claim.
23
22-cv-00492-JO-BLM

1

“safety device” in terms of its function, the other three patents describe the physical form

2

and structure of the “safety device” as such.

3

Independent claim 1 of the ’745 Patent claims a “safety device” as follows:

4

a safety device coupled to the running belt, the safety device at least partially

5

supported by the support element, wherein the safety device includes a first

6

safety race element and a second safety race element, wherein at least one of

7

the first and second safety race elements is adapted for rotation relative to the

8

frame, and wherein one of the first and second safety race elements

9

substantially surrounds the other of the one of the first and second safety race

10

elements;

11

wherein one of the first and second safety race elements and the running belt

12

freely rotates in a first direction of rotation relative to the frame . . . .

13

’745 Patent col. 33 ll. 4-20 (emphasis added).

14

Independent claim 30 of the ’884 Patent claims a “safety device” as follows:

15

a safety device coupled to the frame and the running belt, the safety device

16

having a first rotatable element and a second rotatable element, wherein at

17

least one of the first and second rotatable elements are adapted for rotation

18

relative to the frame;

19

’884 Patent col. 35 l. 60-col. 36 l. 8 (emphasis added).

20

And independent claim 1 of the ’005 Patent claims a “safety device” as follows:

21

a safety device coupled to the frame and the running belt, the safety device

22

having a first element and a second element, the first element substantially

23

surrounding the second element or the second element substantially

24

surrounding the first element;

25

’005 Patent col. 33 ll. 4-16 (emphasis added).

26

Unlike the ’580 Patent, the other three patents—’745, ’884 Patent, and ’005—

27

include claim language that describes the physical structure and form of the safety device

28

justifying a non-means-plus-function construction for these three patents. The ’745 Patent
24
22-cv-00492-JO-BLM

1

claims a “safety device” that specifically includes “a first safety race element and a second

2

safety race element.” ’745 Patent col. 33 ll. 6-7. The ’884 Patent claims a “safety device”

3

that specifically includes “a first rotatable element and a second rotatable element.” ’884

4

Patent col. 35 ll. 60-62. The ’005 Patent claims a “safety device” that specifically includes

5

“a first element and a second element, the first element substantially surrounding the

6

second element.” ’005 Patent col. 33 ll. 4-6. Because the four different patents use

7

different claim language and describe the physical form and structure of the “safety device”

8

to varying degrees, different constructions of the same term are warranted under the

9

relevant standards for means-plus-function claiming and claim construction in general. See

10

MTD, 933 F.3d at 1341–42 (“[E]ven if the claims recite a nonce term followed by

11

functional language, other language in the claim ‘might inform the structural character of

12

the limitation-in-question or otherwise impart structure’ to the claim term.”) (citation

13

omitted); Omega, 334 F.3d at 1334 (explaining presumption of consistent interpretation

14

only applies “unless otherwise compelled”).

15

C. Disputed Construction: “Shaft”

16

The Court next turns to construing the disputed term, “shaft.” Defendant proposes

17

that the Court construe “shaft” as “a rotating element used to transmit power from one part

18

to another.” Jt. CC Worksheet at 2. Plaintiff, on the other hand, proposes that the word

19

“shaft” is an unambiguous, widely understood term and should thus be given its plain and

20

ordinary meaning, such as “hollow or solid element / part / rod / tube / member / piece.”

21

Id. The Court will therefore consider whether it is appropriate to import and incorporate

22

an element of rotation in construing the claim “shaft.”

23

The four patents at issue all contain the term “shaft.” Independent claim 1 of the

24

’580 Patent claims a manually powered treadmill containing “a front shaft rotatably

25

coupled to the frame at the front end” and “a rear shaft rotatably coupled to the frame at

26

the rear end.” ’580 Patent col. 32 ll. 51-52 (emphasis added). Independent claim 30 of the

27

’884 Patent claims a manually powered treadmill containing “a front shaft coupled to the

28

frame proximate the front end” and “a rear shaft coupled to the frame proximate the rear
25
22-cv-00492-JO-BLM

1

end. ’884 Patent col. 35 ll. 54-55 (emphasis added); see also id. col. 36 ll. 43-44, col. 38

2

ll. 14-20. Dependent claim 2 of the ’005 Patent claims a manually powered treadmill

3

containing “a front shaft coupled to the frame.” ’005 Patent col. 33 ll. 17-18 (emphasis

4

added); see also id. at col. 33 ll. 21-23. Dependent claim 23 of the ’745 Patent claims a

5

treadmill “wherein the rotatable element comprises at least one of a front rotatable shaft

6

coupled to the frame and a rear rotatable shaft coupled to the frame and spaced apart

7

from the front rotatable shaft.” ’745 Patent col. 36 ll. 1-4 (emphasis added).

8

The fact that the ’580 and ’745 Patents use the terms “rotatable” or “rotatably

9

coupled” to describe “shaft” militates against construing this element to have inherent

10

rotational properties; doing so would render the adjective “rotatable” repetitive and

11

superfluous. The Federal Circuit has “reinforced the importance of construing claim terms

12

in light of the surrounding claim language, such that words in a claim are not rendered

13

superfluous.” Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270,

14

1275 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1314); see Intel Corp. v. Qualcomm Inc.,

15

21 F.4th 801, 810 (Fed. Cir. 2021) (“It is highly disfavored to construe terms in a way that

16

renders them void, meaningless, or superfluous.”) (citation omitted). “For example, when

17

a claim refers to ‘steel baffles,’ this ‘strongly implies that the term “baffles” does not

18

inherently mean objects made of steel.’” Digital-Vending, 672 F.3d at 1275 (quoting

19

Phillips, 415 F.3d at 1314); see also, e.g., Intel, 21 F.4th at 810 (rejecting proposed

20

construction for the claim term “hardware buffer” that would render the word “buffer”

21

superfluous). Here, two of the four related patents use the terms “rotatable” or “rotatably

22

coupled” to modify the term “shaft.” If the term “shaft” had inherent rotational qualities

23

as Defendant contends, then there would be no need to use the word “rotatable” or

24

“rotatably coupled” to modify a term that already means rotatable. Defendant’s proposed

25

construction would thus render the terms “rotatable” and “rotatably coupled” in the ’580

26

and ’745 Patents entirely superfluous—a result that case law urges courts to avoid. See

27

Digital-Vending, 672 F.3d at 1275. As such, the claim language cuts against construing

28

shaft as a “rotatable element.”
26
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1

An examination of the extrinsic evidence offered by the parties further demonstrates

2

that shafts may, but do not necessarily, rotate. Plaintiff cites to a technical dictionary

3

defining the term “shaft” as simply being “[a] long slender, usually cylindrical part.”

4

MCGRAW-HILL DICTIONARY

5

Plaintiff cites to another dictionary that defines “shaft” as “[a] long, usu[ally] cylindrical

6

bar, esp[ecially] one that rotates and transmit power.” WEBSTER’S II NEW COLLEGE

7

DICTIONARY 1037 (3d ed. 2005). As the above divergent definitions demonstrate, a “shaft”

8

can take the form of an object that rotates and transmits power but such qualities are not

9

inherent in the definition. Despite their arguments to the contrary, even Defendant’s

10

submissions support this conclusion by pointing to an example of a shaft that does not

11

rotate: a technical article that it submitted explains that an “axle” is both “a type of shaft”

12

and “[a] non-rotating element.” Dkt. 45-6, Def.’s Ex. 5 at pp. 150-51.10 As such, the

13

extrinsic evidence also supports rejecting Defendant’s proposed construction that

14

improperly narrows the term “shaft” to only those that rotate.

OF

SCIENTIFIC

AND

TECHNICAL TERMS 804 (5th ed. 1994).

15

For the above reasons, the Court rejects Defendant’s proposed construction for the

16

term “shaft.” Because it agrees with Plaintiff that the term has a widely used and

17

unambiguous meaning, it adopts Plaintiff’s proposal that the term be given its plain and

18

ordinary meaning.

19

D. Disputed Construction: “Element”

20

The Court next examines the construction of the disputed term “element” in the ‘005

21

Patent. Defendants contends that “element” should be construed as an “annular-shaped

22

component.”

23

construction of this claim term is required; thus, it should just be given its plain and

24

ordinary meaning. Id. The Court therefore considers whether the claimed “element[s]” in

25

the ’005 Patent should be construed as annular, i.e., ring-shaped, components.

Jt. CC Worksheet at 3.

Plaintiff, on the other hand, asserts that no

26
27
28

10

Slidingmotion.com, What is a shaft? Types, Material
slidingmotion.com/what-is-shaft/. Dkt. 45-6, Def.’s Ex. 5 at pp. 148-65.

&

Design,

https://

27
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1

The Court begins its analysis of the parties’ dispute by analyzing the relevant claim

2

language. Independent claim 1 of the ’005 Patent claims “[a] manually powered treadmill,”

3

comprising among other things:

4

a safety device coupled to the frame and the running belt, the safety device

5

having a first element and a second element, the first element

6

substantially surrounding the second element or the second element

7

substantially surrounding the first element;

8

wherein one of the first and second elements of the safety device and the

9

running belt freely rotate in a first direction of rotation relative to the frame,

10

however, in a second direction of rotation, opposite the first direction of

11

rotation, the one of the first and second elements is substantially prevented

12

from rotation relative to the frame . . . .

13

’005 Patent col. 33 ll. 4-15 (emphasis added); see also id. at col. 33 ll. 46-52, col. 34 ll. 1-

14

5, col. 34 ll. 32-43. As seen above, the claim language does not prescribe a particular shape

15

for “element”—instead, it merely explains that one of the elements (1) “substantially

16

surrounds” the other and (2) is able to freely rotate in only one direction. Claim language

17

that fails to specify any particular shape for “element,” a fortiori, is insufficient to dictate

18

that the first and second “element” must both be annular (i.e., ring-shaped) components.

19

As such, the claim language does not support Defendant’s proposed construction.

20

Without providing any evidentiary support, Defendant argues that the Court cannot

21

avoid construing “element” as ring-shaped because that is the only shape that would allow

22

two “elements” to “surround and be able to rotate relative to each other.” Def.’s Opening

23

CC Br. at 19. Plaintiff contradicts this unsupported proposition by presenting the Court

24

with the following counterexample: an animation featuring a square-shaped outer

25

component surrounding a square-shaped inner component that freely rotates clockwise.

26

See Pl.’s Responsive CC Br. at 17 (citing Dkt. 48-1, (“Koley Decl.”) ¶ 5, Ex. D). As such,

27

the Court rejects Defendant’s argument that logical necessity renders its proposed

28

construction unavoidable.
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1

Defendant argues that if the Court rejects its contention that “element” connotes

2

ring-shaped structures, then “element” must be construed as a means-plus-function claim

3

because there is no other description of the physical structure of an “element.” Def.’s

4

Opening CC Br. at 19-20. The Court agrees with Defendant. Here, the claim language at

5

issue uses the generic or “nonce” word “element” creating a presumption that this is a

6

means-plus-function claim limitation unless accompanying language imparts sufficient

7

information about the physical structure of “element.” See ’005 Patent col. 33 ll. 4-15, col.

8

33 ll. 46-52, col. 34 ll. 1-5, col. 34 ll. 32-43; Zeroclick, 891 F.3d at 1008; MTD, 933 F.3d

9

at 1341–42.

10

Here, the generic term “element” is not accompanied by other language or

11

information that would provide a person skilled in the art a sense of its physical structure.

12

Nor does the Plaintiff provide evidence demonstrating that the word “element” is used in

13

common parlance or by persons skilled in the art to convey a sense of specific, physical

14

structures.11 The claim language itself primarily uses functional language to describe the

15

claimed “elements”: one of them “freely rotate[s]” in one direction of rotation relative to

16

the frame while being “substantially prevent[ed]” from rotating in the other direction. See

17

’005 Patent col. 33 ll. 9-15, col. 33 l. 51-col. 34 l. 5, col. 34 ll. 33-39. That one “element”

18
19
20
21
22
23
24
25
26
27
28

11

In arguing that the claim term “element” need not be construed, Plaintiff cites to several district
court claim construction orders involving the word “element.” Pl.’s Responsive CC Br. at 17 (citing
Peregrine Semiconductor Corp. v. RF Micro Devices, Inc., No. 313CV00725HWMC, 2014 WL
12577034, at *8 (S.D. Cal. Apr. 23, 2014); Gene Pool Techs., Inc. v. Coastal Harvest, LLC, Nos. 5:21cv-01328-JWH-SHK, 2022 U.S. Dist. LEXIS 198562, at *20 (C.D. Cal. Oct. 23, 2022); Xoft, Inc. v. Cytyc
Corp., No. C-05-05312 RMW, 2007 WL 1241990, at *10 (N.D. Cal. Apr. 27, 2007)). The Court does not
find Plaintiff’s reliance on any of these decisions persuasive as they are all distinguishable from the present
case. In each of the cited cases, the claim term at issue contained additional descriptive words that
modified the term “element.” See Peregrine, 2014 WL 12577034, at *8 (construing “switching element”);
Gene Pool, 2022 U.S. Dist. LEXIS 198562, at *20 (construing “heating element”); Xoft, 2007 WL
1241990, at *10 (construing “expandable surface element”). In contrast, here, the claims simply recite a
“first element” and a “second element” without any meaningful descriptive modifiers. See ’005 Patent
col. 33 ll. 4-15, col. 33 ll. 46-52, col. 34 ll. 1-5, col. 34 ll. 32-43. In addition, Plaintiff’s reliance on
Peregrine and Xoft is also not persuasive as both of those claim construction orders were issued prior to
the Federal Circuit’s en banc decision in Williamson, which changed the legal test for evaluating meansplus-function claim limitations.
29
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1

substantially surrounds the other element is the only physical structure information the

2

claim provides. See id. at col. 33 ll. 5-8, col. 33 ll. 47-50, col. 34 ll. 40-43. While stating

3

that one element surrounds the other explains their relative positioning, it does not elucidate

4

the actual structure of those elements. Without more, this is insufficient to connote a

5

“sufficiently definite structure.” See MTD, 933 F.3d at 1343. Accordingly, the Court holds

6

that the claim terms “first element and a second element,” “first and second elements,” and

7

“element,” in the ’005 Patent are means-plus-function claim limitations.

8

Because they are means-plus-function limitations, the Court now performs the

9

second step of “determining ‘what structure, if any, disclosed in the specification

10

corresponds to the claimed function.’” Dyfan, 28 F.4th at 1365 (quoting Williamson, 792

11

F.3d at 1351). As Defendant correctly notes, inner ring 1304, outer ring 1306, inner ring

12

1504, and outer ring 1506 are the only components of the safety device described in the

13

specification where one component surrounds the other and one of the two components

14

rotates. See ’005 Patent col. 27 ll. 22-29, col. 27 ll. 49-53, col. 28 ll. 14-32, figs. 2, 38.

15

Accordingly, these are the correct corresponding structures for performing the claimed

16

function. See Williamson, 792 F.3d at 1352.

17

In sum, the Court construes the claim terms “element,” “first element and a second

18

element,” and “first and second elements” in the ’005 Patent as means-plus-function claim

19

limitations under 35 U.S.C. § 112 ¶ 6. The claimed function of the terms is wherein one

20

of the elements freely rotates in a first direction of rotation relative to the frame while being

21

substantially prevented from rotating in a second direction of rotation relative to the frame,

22

opposite the first direction of rotation. The corresponding structure for this functional

23

claim is inner ring 1304 and outer ring 1306 or inner ring 1504 and outer ring 1506. 12

24
25
26
27
28

12

Although the parties’ briefing focused on the claim term “element” in the claims of the ’005
Patent, see Def.’s Opening CC Br. at 18; Jt. CC Worksheet at 3, the claim term “element” is also found in
the claims of the ’884 Patent. The Court’s analysis of the claim term “element” in the ’005 Patent applies
equally to the claim term “element” in the ’884 Patent. For the same reasons, the Court construes the
30
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1
2
3

E. Disputed Construction: “Race Element”
The Court next turns to construing “race element” which appears in the ’745 Patent
as follows:

4

a safety device coupled to the running belt, the safety device at least partially

5

supported by the support element, wherein the safety device includes a first

6

safety race element and a second safety race element, wherein at least one

7

of the first and second safety race elements is adapted for rotation relative

8

to the frame, and wherein one of the first and second safety race elements

9

substantially surrounds the other of the one of the first and second safety

10

race elements;

11

wherein one of the first and second safety race elements and the running

12

belt freely rotates in a first direction of rotation relative to the frame . . .

13

’745 Patent col. 33 ll. 4-20 (emphasis added). Defendant proposes that the claim term “race

14

element” in the ’745 Patent should be construed as “an annular-shaped component

15

separated by another annular-shaped component by rolling elements such that the annular-

16

shaped components can rotate relative to each other.” Jt. CC Worksheet at 3. Plaintiff

17

asserts that the claim term should be given its plain and ordinary meaning, such as “one of

18

the inner and outer rings of a bearing.”13 Id. From their respective proposed constructions,

19

it appears both parties agree that “race elements” are two ring-shaped components of a

20
21
22
23
24
25
26
27
28

claim terms “element,” “first rotatable element and a rotatable second element,” and “first and second
rotatable elements” in the ’884 Patent as means-plus-function claim limitations under 35 U.S.C. § 112 ¶
6. The claimed function of the terms is wherein one of the rotatable elements freely rotates in a first
direction of rotation relative to the frame while being substantially prevented from rotating in a second
direction of rotation relative to the frame, opposite the first direction of rotation. The corresponding
physical structure for the functional claim is inner ring 1304 and outer ring 1306 or inner ring 1504 and
outer ring 1506.
13
The Court notes that neither party contends that the claim term “race element” is a means-plusfunction claim term under 35 U.S.C. § 112 ¶ 6. See generally Def.’s Opening CC Br. at 20-23; Pl.’s
Opening CC Br. at 19-10.
31
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1

bearing14 but dispute whether they need to be separated by rolling elements that enable

2

their rotation.

3

Because the ’745 Patent’s specification describes examples of “race elements” that

4

are not separated by rolling elements, the Court must reject Defendant’s proposed

5

construction which imposes such a requirement. “‘A claim construction that excludes a

6

preferred embodiment is rarely, if ever correct and would require highly persuasive

7

evidentiary support.’” Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022)

8

(quoting Epos Technologies Ltd. v. Pegasus Technologies Ltd., 766 F.3d 1338, 1347 (Fed.

9

Cir. 2014)); see Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1364 (Fed.

10

Cir. 2019) (“[A] claim construction that excludes the preferred embodiment is highly

11

disfavored.”). Here, the specification includes an exemplary embodiment of race elements

12

where the inner ring and outer ring are separated by a “plurality of sprags” as opposed to

13

rolling elements. ’745 Patent col. 27 ll. 11-29. The specification further describes “another

14

exemplary embodiment” where “the one-way bearing may include rollers in addition to

15

sprags”— meaning that the two rings of the bearing are separated by both sprags and rolling

16

elements as opposed to only rolling elements. Id. col. 27 ll. 40-42. In sum, the specification

17

references exemplary embodiments that include either only sprags between the rings (i.e.,

18

between the races) or some sprags and some rollers. Defendant’s proposed construction

19

requiring that the race elements be separated by rolling elements would exclude the above

20

preferred embodiments. See Kaufman, 34 F.4th at 1372. Here, in the absence of highly

21
22
23
24
25
26
27
28

14

From the proposed constructions, the parties appear to agree that the claimed “race element”
must be annular, i.e., ring-shaped. The parties also appear to agree that a “race” is a component of a
bearing. Plaintiff’s proposed construction expressly states that a “race” is one of the rings in a bearing,
Jt. CC Worksheet at 3, while Defendant provides the Court with extrinsic sources supporting that
construction. See AN INTRODUCTION TO MECHANICAL ENGINEERING 145 (4th ed. 2017) (explaining that
a “roller contact bearing” is comprised of: “[a]n inner race;” “[a]n outer race;” “[r]olling elements in the
form of balls, cylinders, or cones;” and “[a] separator that prevents the rolling elements from rubbing up
against one another”); Dkt. 45-8, Def.’s Ex. 7 at p. 176 (explaining that a “bearing” is comprised of an
“Inner Ring,” an “Outer Ring,” “Rolling Element[s],” a “Cage (Retainer),” “Lubrication,” and “Other
Optional Bearing Components”). Thus, the parties agree that a “race” is one of the two rings in a bearing.
32
22-cv-00492-JO-BLM

1

persuasive support for Defendant’s proposal, the Court declines to accept a construction

2

that would exclude preferred embodiments from the scope of the claims. Instead, the Court

3

will adopt Plaintiff’s proposal that the claim term “race element” means “one of the inner

4

and outer rings of a bearing”—a construction which aligns with the agreement between the

5

parties that the race elements are ring-shaped.

6

F. Disputed Construction: “Interference Between the Safety Device and At Least One

7

of the First and Second Rotatable Elements”

8

The Court next addresses Defendant’s argument that claims 30, 37, 50, and 57 of the

9

’884 Patent are indefinite and, therefore, invalid due to the following claim language:

10

“interference between the safety device and at least one of the first rotatable element and

11

the second rotatable element.” Def.’s Opening CC Br. at 23-25. Defendant argues that

12

this language requires that an element (i.e. the “safety device”) interferes with an element

13

of itself (i.e., one of the “rotatable element[s]”)—a result that is nonsensical and renders

14

these patent claims indefinite and invalid. Id. at 24.

15

A claim is invalid for indefiniteness “if its language, when read in light of the

16

specification and the prosecution history, ‘fail[s] to inform, with reasonable certainty, those

17

skilled in the art about the scope of the invention.’” Interval Licensing LLC v. AOL, Inc.,

18

766 F.3d 1364, 1369–70 (Fed. Cir. 2014) (quoting Nautilus, Inc. v. Biosig Instruments,

19

Inc., 572 U.S. 898, 901 (2014)). The Federal Circuit has explained that “[o]ne circumstance

20

in which claims are indefinite is where the claims, as properly construed, are nonsensical.”

21

Horizon Pharma, Inc. v. Dr. Reddy’s Lab’ys Inc., 839 F. App’x 500, 505 (Fed. Cir. 2021);

22

see, e.g., Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d

23

1359, 1366–67 (Fed. Cir. 2016) (holding claims describing the extraction of machine code

24

instructions from something that did not have machine code instructions indefinite on the

25

grounds that the claims were “nonsensical in the way a claim to extracting orange juice

26

from apples would be”). The party asserting indefiniteness bears “the burden of proving

27

indefiniteness by clear and convincing evidence.” BASF Corp. v. Johnson Matthey Inc.,

28

875 F.3d 1360, 1365 (Fed. Cir. 2017) (citing Biosig Instruments, Inc. v. Nautilus, Inc., 783
33
22-cv-00492-JO-BLM

1

F.3d 1374, 1377 (Fed. Cir. 2015)).

2

The Court disagrees with Defendant’s position that the challenged claim language is

3

nonsensical and, therefore, invalid for indefiniteness. The challenged language appears in

4

independent claim 30 the ‘884 Patent as follows and in the other claims in a similar context:

5

wherein the running belt and one of the first and second rotatable elements of

6

the safety device freely rotate in a first direction of rotation relative to the

7

other of the first and second rotatable elements of the safety device, but

8

interference between the safety device and at least one of the first and

9

second rotatable elements substantially prevents rotation in a second

10

direction of rotation.

11

’884 Patent col. 35 l. 60-col. 36 l. 8 (emphasis added). Defendant argues that the above

12

claim language is nonsensical because a device as a whole cannot interfere with one of its

13

own components.

14

contradiction in terms when it describes the safety device as “interfering” with one of its

15

rotatable parts. After reviewing the challenged language in light of the specification, the

16

Court disagrees. To the contrary, it finds that the ’884 Patent features an invention where

17

a component of the safety device interferes with other rotatable components, thereby

18

restricting the rotation in one direction.

According to Defendant, the claim language embodies such a

19

The exemplary embodiments described in the ’884 Patent’s specification illustrates

20

this distinction. In these embodiments, the safety device takes the form of a “one-way

21

bearing assembly,” ’884 Patent col. 27 ll. 13-15, comprised of an inner ring and an outer

22

ring with a “plurality of sprags” between the two rings. This one-way bearing assembly

23

restricts motion via the plurality of sprags disposed between the two rings of the bearing:

24

“The sprags are asymmetric, and, thus, provide for motion in one direction and prevent

25

rotation in the opposite direction.” Id. at col. 27 ll. 27-29; see also id. at col. 28 ll. 5-23

26

(describing a similar exemplary safety device that is a “one-way bearing assembly” with

27

an inner ring, an outer ring, and a plurality of sprags, where the sprags provide for motion

28

in one direction). The specification explains that interference between the sprags and one
34
22-cv-00492-JO-BLM

1

of the rings (i.e. one of the rotatable elements) is what allows the treadmill belt to rotate in

2

only one direction. See ’884 Patent at col. 27 ll. 27-29, col. 28 ll. 21-23. This guidance

3

from the specification makes clear that it is not the entire safety device that interferes with

4

its rotatable elements, but, rather, one component of the safety device (for example, a

5

plurality of sprags) that interfere with the rotatable components to substantially prevent

6

rotation of the treadmill belt in one direction. Accordingly, the Court finds that Defendant

7

has not met its burden of proving by clear and convincing evidence that the claim term at

8

issue is nonsensical and, therefore, indefinite. The Court therefore rejects Defendant’s

9

indefiniteness challenge.

10
11
12

IV.

CONCLUSION

For the reasons discussed, the Court hereby adopts the constructions set forth above.

13
14
15

IT IS SO ORDERED.
Dated: November 14, 2023

16
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19
20
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25
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28
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