Icon Health & Fitness v. Park City Entertainment

Filing 183

MEMORANDUM DECISION AND ORDER ON CLAIM CONSTRUCTION- SEE ORDER FOR DETAILS. Status Conference set for 11/19/2014 02:00 PM in Rm 7.300 before Judge Robert J. Shelby. Signed by Judge Robert J. Shelby on 11/13/2014. (las)

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
NORTHERN DIVISION

ICON HEALTH & FITNESS, INC., a
Delaware corporation,
Plaintiff,

MEMORANDUM DECISION AND
ORDER ON CLAIM CONSTRUCTION

v.

PARK CITY ENTERTAINMENT, INC.,
a Utah corporation,

Case No. 1:10-cv-195-RJS

Defendant.

Judge Robert J. Shelby

This is a patent infringement suit. Plaintiff ICON Health & Fitness alleges that
Defendant Park City Entertainment (PCE) infringed U.S. Patent 5,772,560 (the ‘560 Patent).
Before the court is the task of interpreting a number of disputed terms in several of the ‘560
Patent’s claims. The parties submitted briefing on the disputed terms and the court held a
Markman hearing. After careful consideration, the court issues this Order construing the terms.
BACKGROUND
ICON’s ‘560 Patent covers a folding treadmill. The patent defines the general nature of
the invention as relating “to treadmills and, more particularly, the treadmills of the type that
have a tread base that is rotatably attached to a structure and orientable from a first position for
performing exercises to a second stored position.”1 The treadmill is in first position when the
1

Dkt. 155-1, Exh. A, pg. 19, col. 1, lns. 6-10.
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tread base is extended for exercise and in second position when the tread base is collapsed for
storage. A latch secures the tread base when the treadmill is in second position.
At issue is the construction of claims 1, 14, 15, 17, 18, 19, 26, 29, 30, 31, 34, and 35 of
the ‘560 Patent. The parties dispute three terms: “lift means,” “an axis,” and “latch,” along with
five distinct phrases that contain these terms.
ANALYSIS
I. Legal Standard
A patent’s claims “define the invention to which the patentee is entitled the right to
exclude.”2 Construing the scope and meaning of a patent’s claims is a question of law.3 A
proper construction is “consistent with a patent’s internal logic,” “comports with the instrument
as a whole,” and “preserve[s] the patent’s internal coherence.”4 A claim’s terms are “generally
given their ordinary and customary meaning,” which is “the meaning that the term would have to
a person of ordinary skill in the art in question at the time of the invention.”5
Courts begin the analysis with the claim language.6 If ambiguity exists in the claim
language, courts also look to other intrinsic evidence: the specification and prosecution history.7
If further inquiry is needed, courts also look to extrinsic sources “regarding the relevant scientific
principles, the meaning of technical terms, and the state of the art.”8
After conducting the Markman hearing and carefully considering the parties’ arguments,
the court construes the claims as outlined below.

2

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004)
Markman v. Westview Instruments, Inc., 517 U.S. 370, 389- 90 (1996).
4
Id.
5
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
6
Id.
7
Id.
8
Am. Honda Motor Co. v. Coast Distribution Sys., Inc., 609 F. Supp. 2d 1032, 1036 (N.D. Cal. 2009).
2
3

II. Claim Construction
A. “Lift Means”
The parties dispute construction of the term “lift means,” which appears in a number of
claims. In a separate case, Judge Benson construed the term “lift means” in the ‘560 Patent to
accompany the function of “urge” or “to exert a driving or impelling force” and the
corresponding structure “to include a gas cylinder that applies a torque force in the direction
illustrated in diagram 13 to urge said tread base from said first position to said second position.”9
Judge Benson defined “gas cylinder” as “a cylinder structure that uses gas and/or fluid to exert a
torque on the tread base.”10 While these constructions are a useful guidepost, they are not
binding on the court.
i. Claims 1, 14, 26, 30, and 34
ICON and PCE dispute construction of the phrase “lift means interconnected between
said support structure and said tread base to urge said tread base from said first position to said
second position.” Below are the parties’ proposed constructions and the court’s construction.

Claims 1, 14, 26, 30, and
34
Disputed Element
lift means interconnected
between said support
structure and said tread
base to urge said tread
base from said first
position to said second
position

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ICON’s Proposed Claim
Construction
a cylinder structure that
uses a gas and/or fluid to
encourage the tread base to
move in the direction of
the second position from
the first position

PCE’s Proposed Claim
Construction
lift means interconnected
between said support
structure
and said tread base to
continuously urge said
tread base from said first
position to said second
position, which lift means
is a gas spring
cylinder or statutory
equivalents thereof

Court’s Claim
Construction
lift means comprised of a
cylinder structure that uses
gas to encourage the tread
base to move in the
direction of the second
position from the first
position

ICON Health and Fitness, Inc. v. Spirit Manufacturing, Inc., No. 1:97-cv-114B, at 38 (D. Utah Dec. 30, 1999).
Id. at 41.
3

10

In claims 1, 14, 26, 30, and 34, “lift means” is used as part of a means-plus-function
clause. To construe means-plus-function clauses, courts follow a two-step process: (1) identify
the claimed function and (2) identify the structure disclosed in the specification corresponding to
the claimed function.11 First, the claim identifies the function as “to urge said tread base from
said first position to said second position.” Second, the only structure disclosed as a “lift means”
in the specification is a “gas cylinder.”
ICON proposes that “gas cylinder” means “a cylinder structure that uses a gas and/or
fluid.” In the court’s view, “gas cylinder” is unambiguous as understood by a person of ordinary
skill in the art: a cylinder structure filled with or utilizing gas. This unambiguous meaning
precludes ICON’s proposed construction that the cylinder is filled with “gas and/or fluid.” Gas
is a type of fluid. Construing “gas cylinder” as a cylinder filled with fluid broadens the term
“gas” to include all types of fluid, including liquids. Such a construction would conflate a subset
of a category (gas) with its entire category (fluid). This result would render “gas” meaningless.12
PCE argues that ICON has disavowed a narrower meaning of “gas cylinder” during
prosecution. This argument is unavailing. A disavowal must be “clear and unambiguous”13 and
based on the “totality of the prosecution history.”14 Put differently, a disavowal occurs when
“the sum of the patentees’ statements during prosecution would lead a competitor to believe that
the patentee had disavowed coverage.”15

11

See, e.g., VW Enters., Inc. v. Interact Access. Inc., 424 F.3d 1324, 1329 (Fed. Cir. 2005); Cardiac Pacemakers,
Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002); York Prod., Inc. v. Cent. Tractor Farm & Family
Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996).
12
The Federal Circuit has repeatedly avoided constructions that would render claim terms meaningless. See, e.g.,
Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1379 (Fed. Cir. 2006); Merck & Co. v. Teva
Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).
13
Storage Tech. Corp. v. Cisco Sys. Inc., 329 F.3d 823, 833 (Fed. Cir. 2003).
14
Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1379 (Fed. Cir. 2008).
15
Id.
4

PCE points to references ICON made during patent prosecution contesting the patent
examiner’s conclusion that the prior art made the combination of a lift-assist device and a folding
treadmill obvious. ICON referenced other patents (Rulis, Teague, and Doetsch) in the
reexamination history and noted that “Rulis and Teague each disclose using gas cylinders” and
“Doetsch simply teaches construction of a gas cylinder.” The lift-assist structures in those three
patents are described as gas springs. Thus, PCE argues, ICON equated gas cylinder with gas
springs. But the court finds that ICON’s statements do not constitute a clear and definitive
disavowal. ICON referred to the patents to argue that no one had previously combined a liftassist structure with a folding treadmill. The context and apparent purpose of the statements
show that ICON did not clearly and unambiguously disavow a narrower meaning of gas cylinder.
Consequently, the file history does not limit the claim construction. The court construes the
claim as “lift means comprised of a cylinder structure that uses gas to encourage the tread base to
move in the direction of the second position from the first position.”
ii. Claims 18 and 30
Claims 18 and 30 both contain the term “wherein said lift means comprises a gas cylinder
with a first end attached to the feet means and with a second end attached to the tread base at a
point between said axis and the rear of said tread base.” Given the similarity in the operative
terms, the court construes these claims in the same manner as the claims discussed above.

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Claims 18 and 30

Disputed Element
wherein said lift means
comprises a gas cylinder
with a first end attached to
the feet means and with a
second end attached to the
tread base at a point
between said axis and
the rear of said tread base

ICON’s Proposed Claim
Construction
a cylinder structure that
uses a gas and/or fluid to
encourage the tread base to
move in the direction of
the second position from
the first position

PCE’s Proposed Claim
Construction
wherein said lift means
consists of a gas spring
cylinder with a first end
attached to the feet means
and with a second end
attached to the tread base
at a point between said
axis and the rear of said
tread base.

Court’s Claim
Construction
wherein said lift means
comprises a cylinder
structure that uses gas to
encourage the tread base to
move in the direction of
the second position from
the first position, with a
first end attached to the
feet means and with a
second end attached to the
tread base at a point
between said axis and the
rear of said tread base

iii. Claim 15
This claim also involves construction of the term “gas cylinder.” The court has already
construed the term as “a cylinder structure that uses gas” and declines PCE’s invitation to add
“spring” to the construction.
Claim 15

Disputed Element
wherein said lift means
comprises a gas cylinder

ICON’s Proposed Claim
Construction
a cylinder structure that
uses a gas and/or fluid to
encourage the tread base to
move in the direction of
the second position from
the first position

PCE’s Proposed Claim
Construction
wherein said lift means
consists of a gas spring
cylinder

Court’s Claim
Construction
wherein said lift means
comprises a cylinder
structure that uses gas

B. “Rotates About an Axis Between”
The parties dispute construction of the phrase “wherein the tread base rotates about an
axis between the first position and the second position,” which is contained in Claims 14, 18, 26,
30, and 34. The table below reflects the proposed constructions and the court’s construction.

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Claims 14, 18, 26, 30, 34

Disputed Element
wherein the tread base
rotates about an axis
between the first position
and the second position

ICON’s Proposed Claim
Construction
wherein the tread base
rotates about one or more
axis between the first
position and the second
position

PCE’s Proposed Claim
Construction
wherein the tread base
rotates from the first
position or the second
position to the other
position about a single
base axis that is between
the first position and the
second position

Court’s Claim
Construction
wherein the tread base
rotates between the first
and second position about
a single axis that may
move

The dispute over these terms in the briefing concerned two issues. The first was whether
“an axis” should be construed as a single axis or multiple axes. But ICON conceded during the
Markman hearing that the claim term “an axis” in the context of the ‘560 Patent meant a single
axis. The second and sole remaining issue is whether that single axis is fixed in place.
The specification notes that the axis “may be located above the tread base” when the
tread base is in the first position.16 The specification further notes that adjusting the straps
running alongside the tread base “may be selected to position the center of gravity of the tread
base relative to the base axis.”17 These descriptions in the specification indicate that the axis
may move. The court therefore construes this phrase as “wherein the tread base rotates between
the first and second position about a single axis that may move.”
C. “Latch”
The parties dispute construction of the phrase “latch for stably retaining the tread base in
the second position relative to the support structure.” This phrase appears in Claims 17, 19, 29,
31, and 35. The court finds the phrase to be clear and declines to further construe it.

16
17

Dkt. 155-1, Exh. A, col 5, lns 8-10.
Id. at col. 5, lns. 11-15.
7

Claims 17, 19, 29, 31, 35

Disputed Element
latch for stably retaining
the tread base in the
second position relative
to the support structure

ICON’s Proposed Claim
Construction
a latch for stably retaining
the tread base in the
second position relative to
the support structure

PCE’s Proposed Claim
Construction
a latch for stably retaining the
tread base in the second
position relative to the support
structure, wherein the latch
connects the tread base to the
upright structure using a bar
attached to the tread base that
is releasably inserted into a
receiving mechanism attached
to the upright structure

Court’s Claim
Construction
latch for stably retaining
the tread base in the
second position relative
to the support structure

PCE argues that the claim term “latch” is ambiguous because it does not “particularly
point[] out and distinctly claim[] the subject matter” as 35 U.S.C. § 112(b) requires. PCE thus
urges the court to look beyond the claim language to the specification and prosecution history to
construe the terms. But the claim language is clear. Put differently, “the ordinary meaning of
claim language as understood by a person of ordinary skill in the art” is “immediately
apparent.”18 The court declines to consider prosecution history or import limitations from the
specifications into the claims’ construction.19
The court construes Claims 17, 19, 29, 31, 32, and 35 as they are unambiguously written:
“latch for stably retaining the tread base in the second position relative to the support structure.”
CONCLUSION
For the reasons stated, the court adopts the constructions set out above. A status conference is
set for November 19, 2014 at 2:00 p.m. in Room 7.300 of the federal courthouse.

18

Phillips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005)
See id. at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have
repeatedly warned against confining the claims to those embodiments.”)
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SO ORDERED this 13 day of November, 2014:
BY THE COURT

____________________________
ROBERT J. SHELBY
United States District Judge

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