TONAL SYSTEMS, INC., Plaintiff, v. IFIT INC., Defendant.
Civil Action No. 20-1197-GBW-CJB CONSOLIDATED
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
April 26, 2023
PageID #: 6144
In this consolidated patent action filed by Plaintiff Tonal Systems, Inc. (“Tonal” or “Plaintiff“) against Defendant iFIT Inc. (“iFIT” or “Defendant“), iFIT alleges that Tonal infringes United States Patent Nos. 10,709,925 (the “‘925 patent“), 10,953,268 (the “‘268 patent“), 10,758,767 (the “‘767 patent“), and 10,967,214 (the “‘214 patent” and collectively with the other patents, “the asserted patents” or the “patents-in-suit“). Presently before the Court is the matter of claim construction. (D.I. 191; D.I. 192) The Court recommends that the District Court adopt the constructions set forth below.
I. BACKGROUND
Tonal commenced Civil Action No. 20-1197 against iFIT on September 8, 2020, seeking a declaratory judgment of non-infringement as to the ‘925 patent and the ‘767 patent. (D.I. 1) On May 5, 2021, iFIT1 brought Civil Action No. 21-652, asserting that Tonal infringes the ‘268
The cases were stayed for a time at the parties’ joint request. (D.I. 140) But after that stay expired, (D.I. 142), and after the Court denied Tonal‘s request for an additional stay, (D.I. 188), the previously-delayed claim construction process moved forward. The Court conducted a Markman hearing on February 14, 2023. (D.I. 212 (hereinafter, “Tr.“))
The patents-in-suit relate to exercise machines that have various claimed aspects, including electromagnetic or magnetic components. To the extent that particular facts regarding these claimed devices and the patents-in-suit are relevant to claim construction, the Court will set those out in Section III.
II. STANDARD OF REVIEW
The Court has previously set out the law regarding claim construction in many opinions, including in Virco Mfg. Corp. v. SSI Liquidating, Inc., Civil Action No. 20-906-LPS-CJB, 2022 WL 1184060, at *1-2 (D. Del. Apr. 21, 2022). The Court hereby incorporates by reference its discussion in Virco of these legal standards and will follow them herein. To the extent that consideration of the disputed terms necessitates discussion of other, related legal principles, the Court will discuss those principles in Section III below.
By the time of the claim construction hearing, the parties had disputes over five claim terms found in one or more of the patents-in-suit. The Court considers the disputes over four of those terms to be live and ready for decision here. It will take up the four terms in the order in which they were argued.3
A. “electromagnetic unit” (‘767 patent and ‘214 patent) and “magnetic mechanism” (‘925 patent and ‘268 patent)
The parties agree that first two disputed terms, “electromagnetic unit” and “magnetic mechanism[,]” should be taken up together.
“Electromagnetic unit” is found in various claims of the ‘767 patent and ‘214 patent, including independent claim 1 of the ‘767 patent, which is representative for our purposes here. Claim 1 of the ‘767 patent is a claim to a cable exercise machine, and it states that the machine has “an electromagnetic unit linked to the first pull cable and to the second pull cable, the electromagnetic unit configured to apply one or more levels of resistance to a user pulling on the first pull cable and/or the second pull cable[.]” (‘767 patent, col. 13:8-12 (emphasis added))
“Magnetic mechanism” is found in various claims of the ‘925 patent and ‘268 patent, including representative independent claim 1 of the ‘925 patent. There the claimed strength
The parties’ competing proposed constructions for “electromagnetic unit” and “magnetic mechanism” are set out in the chart below:
| Term | iFIT‘s Proposed Construction | Tonal‘s Proposed Construction |
|---|---|---|
| “electromagnetic unit” | Not subject to | A means-plus-function term under Section 112. Function: applying one or more levels of resistance to a user pulling on the [] cable. Corresponding structure: a flywheel with an electromagnetic eddy current brake. |
| “magnetic mechanism” | Not subject to Section 112. To the extent a plain and ordinary meaning is needed, “a mechanism having at least one magnetic element.” | A means-plus-function term under Section 112. Function: providing multiple levels of resistance to the user pulling on the [] cable. Corresponding structure: a flywheel with an eddy current brake. |
(D.I. 119 at 18, 36)
As the parties did during the Markman hearing, the Court will use the “electromagnetic unit” term as the primary driver for the arguments here, since the issues and disputes relating to that term and the “magnetic mechanism” term are very similar. (Tr. at 42) The key threshold
Given that the claims do not use the traditional “means” language often found in means-plus-function claims, “there is a rebuttable presumption that [
For the following reasons, the Court concludes that Tonal has not met its burden to demonstrate, by a preponderance of the evidence, that the claims fail to recite sufficiently definite structure for “electromagnetic unit.” The Court does so for the following reasons:
- iFIT‘s expert Scott Ganaja opined that a POSITA would have understood “electromagnetic unit” to be referring to a sufficiently definite structure—that is, a unitary structure that contains at least one electromagnet. (D.I. 120 at JA007)5 Mr. Ganaja goes on to list two contemporaneous patents that use the term “electromagnetic unit” as having this meaning—one that describes it as an “electromagnetic coil and a magnet” and another that defines it as a unit that “includes an electromagnet.” (Id. (internal quotation marks omitted); see also id. at JA144; id. at JA182)
- The term “electromagnetic unit” is also not used in a vacuum. In claim 1 of the ‘767 patent, for example, the “electromagnetic unit” must be, inter alia, linked to the first pull cable and to the second pull cable of a cable exercise machine. The location of the unit in question, then, also provides some additional description of the type of structure required—i.e., not just any unit containing an electromagnet, but one that can be linked to multiple pull cables so as to provide the requisite levels of resistance. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (concluding that the use of the term “perforation means . . . for tearing” did not implicate means-plus-function claiming, in part because the claim not only described the structure that supported the tearing function, but it also described its location—i.e., that it had to extend “from the leg band to the waist band“); see also Tr. at 86-87)
- And though Tonal‘s expert, Harvey Voris, disagrees that a POSITA would understand the term to be a name for a sufficiently definite structure, he was able to list various types of structures (including electromagnetic eddy current brakes, electromagnetic particle breaks, and electric motors or generators) that would fall within the relevant category. (D.I. 120 at JA311) Mr. Voris’ main concern seems to be that the types of structures that that would qualify as “electromagnetic units” “var[y] widely.” (Id.; see also Tr. at 60 (Tonal‘s counsel noting that a “wildly broad set of different structures” would fall into iFIT‘s definition of “electromagnetic unit“)) Yet as the Court noted above, a term can recite sufficiently definite structure even if it covers a very broad class of structures. So this is surely no hinderance here. (D.I. 119 at 40-41 (citing cases)); see also Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1361 (Fed. Cir. 2004) (“While the terms ‘connector’ and ‘connector assembly’ are certainly broad, and may in the end include any structure that performs the role of connecting, the same could be said of numerous other terms, such as ‘clamp,’ or ‘clip[.]‘“), overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“It is true that the term ‘detent’ does not call to mind a single well-defined structure, but the same could be said of other commonplace structural terms, such as ‘clamp’ or ‘container.‘“).6
The analysis for “magnetic mechanism” follows essentially the same path as that for “electromagnetic unit.” Although “mechanism” is generally understood to be a nonce word, Media Rights Techs., Inc. v. Cap. One Fin. Corp., 800 F.3d 1366, 1373 (Fed. Cir. 2015), Tonal has not met its burden to demonstrate that the term “magnetic mechanism” fails to identify sufficiently definite structure. This is so for many reasons, including: (1) iFIT‘s expert Mr. Ganaja stated that a POSITA would have understood the term to be referring to a sufficiently definite structure, that is, a “mechanism having at least one magnetic element“; (2) the claims provide some additional indication of structure, in that they require the mechanism to be of a type such that it could be coupled to two different cables, in order to provide levels of resistance to people pulling on the cables; (3) the specification underscores the applicability of these guideposts, as it notes that a “magnetic mechanism” may include a “plurality of magnets arranged to provide [] desired magnetic flux“; and (4) contemporaneous patents use the term to describe similar structures, such as a magnetic arch, a u-bar magnet, magnetic plates, a magnetic roller, or a magnetic clip. (‘925 patent, col. 5:4-8; D.I. 120 at JA005, JA087) Though the form of elements making up the claimed “magnetic mechanism” might “var[y] widely[,]” (D.I. 120 at JA304), again, that is not necessarily a barrier to avoiding application of
B. “tower” (‘925 patent and ‘767 patent)
The next disputed term, “tower,” appears in various claims of the ‘925 patent and the ‘767 patent. Even though those two patents belong to different families, the parties agree that a single construction of “tower” is appropriate. The term‘s use in claim 1 of the ‘925 patent is representative; there the claimed strength training apparatus comprises “a tower” that includes various other components (i.e., arms, pulleys, cables, a control panel and more). (‘925 patent, col. 14:17-43) The parties’ proposed constructions are as follows:
| Term | iFIT‘s Proposed Construction | Tonal‘s Proposed Construction |
|---|---|---|
| “tower” | “an upright structure that helps support various components of the exercise apparatus” | “an upright structure that is supported by a base” |
(D.I. 119 at 42; D.I. 131 at 2)
The key dispute here is over whether, as Tonal argues, a “tower” must be supported by a base. (D.I. 119 at 44-45; Tr. at 94) According to Tonal, a tower must be connected to a base such that it is “supported from the bottom“; iFIT, in contrast, argues that a tower could be supported in other ways, including via “flat relief” that comes from a “wall or doorway[.]” (Tr. at 94)7
- It is true, as Tonal notes, (id. at 96), that the patents’ specifications describe and depict all of the identified embodiments of the claimed apparatus as having a “tower” that extends “upward from[] the base member” and thus is supported by that base member, (‘925 patent, col. 4:24-27; see, e.g., id., FIGS. 1-3; D.I. 119 at 48; Tr. at 100-01, 123). But the United States Court of Appeals for the Federal Circuit has “repeatedly warned against confining the claims to [the specific] embodiments” set out in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005); see also Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1345 (Fed. Cir. 2009).
- More importantly, it is the claims that claim. Here, the patentee made a choice not to claim an apparatus that had a “tower” that must be supported by a “base.” (Tr. at 96 (Tonal‘s counsel noting that the claims “do not include a base member, and they do not include any limitation as to how a tower needs to be supported“)) Indeed, the relevant claims do not mention the word “base” at all. (Id. at 97, 102) This seems to have been a conscious choice by the patentee, since, as noted above, the specification at times discusses the utilization of a separate “base member” that is connected to a “tower” in certain embodiments. (See, e.g., ‘925 patent, col. 4:24-27) So the patentee knew how a base could be utilized as part of an invention like this one. And it surely knew how to claim a base that supports a tower if it had wanted to do so. It simply chose not to do so. It would be strange for the Court to now require that the claimed apparatus must in fact be supported by a base (via the construction of “tower“) in light of how these claims were actually drafted. (Tr. at 102-03)8
- The part of Tonal‘s proposal construction at issue here seems a bit less desirable, in the sense that it seeks to define a “tower” not by reference to what a tower is, but instead by reference to some other piece of equipment that a tower is connected to (a “base“). Tonal acknowledges that a base is a separate piece of equipment that is distinct from a tower. (Id. at 118-19) As a general matter (though there can certainly be exceptions), it seems more appropriate to the Court to define a thing by what it comprises or what it is, not in terms of its relationship to some other thing.
- Tonal argued that if iFIT‘s construction was adopted, then this would render a dependent claim like claim 14 of the ‘214 patent superfluous. (D.I. 119 at 46) But the Court does not see why that is necessarily so. Claim 14 of the ‘214 patent recites the “cable exercise machine of claim 13, wherein the frame comprises a tower.” (‘214 patent, col. 14:53-54) Tonal‘s argument seems to be that if there were no requirement that a “tower” be supported by a base, then “tower” and “frame” would not have any different meaning, rendering claim 14‘s use of both terms superfluous. (Tr. at 113) But as iFIT‘s counsel noted, the meaning of “tower” might well differ from that of “frame” in another way: “in that a frame doesn‘t necessarily have to be upright” or “have a height to it” (in the sense that a “frame” could be “sticking down on the floor“), whereas with a “tower,” there “is an idea of extending vertically or going upwards[.]” (Id. at 105)
- The Court acknowledges that Tonal‘s expert Mr. Voris submitted a declaration stating that a POSITA would understand that a “‘tower’ is a commonly understood structure in exercise equipment” and that it, inter alia, “has a base that typically sits on the floor[.]” (D.I. 120 at JA313) Yet in explaining why this was so, Mr. Voris suggested that the use of “tower” in that field is “similar to the way the term [] is used in architecture[,]” and noted that some examples of famous towers that have a base “include the Eiffel [T]ower, the Leaning Tower of Pisa, and Big Ben.” (Id.; see also D.I. 119 at 46) But the physics involved in crafting the Eiffel Tower seem pretty far afield from the particulars of how a home gym works. (D.I. 119 at 50) And iFIT‘s expert Mr. Ganaja disagreed with Mr. Voris’ view, noting persuasively that while
“[b]uildings are very large structures [wherein it] is not feasible to support the weight of a building without being supported by the ground” the “same is not true for exercise equipment [in that] it is common for [such] equipment to be attached to a wall, rather than supported by the floor.” (D.I. 120 at JA453) For these reasons, the Court did not find Mr. Voris’ view on this issue to be persuasive. - The patents say that one of the purposes of a “tower” is to allow the “ability to position the ends of the pull cables at a location above the user‘s head[.]” (‘767 patent, col. 12:49-51) And as iFIT noted, it does seem that a “tower” without a base (i.e., one attached to a wall) could provide such support and fulfill such a function. (D.I. 119 at 48; Tr. at 122)
In sum, Tonal is the party seeking the narrower construction here, but the cumulative effect of the intrinsic and extrinsic evidence does not strongly support that reading. (Tr. at 116) The patentee should thus be entitled to the full breadth of its claims. See TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C., 375 F.3d 1126, 1138 (Fed. Cir. 2004); Intellectual Ventures I LLC v. AT&T Mobility LLC, C.A. No. 13-1631-LPS, 2015 WL 1393386, at *27 (D. Del. Mar. 24, 2015). Therefore, the Court will construe “tower” to mean “an upright structure that helps support various components of the exercise apparatus.”
C. “a dial” (‘767 patent and ‘214 patent)
The term “a dial” is found in claims of the ‘767 patent and the ‘214 patent. Exemplary claim 16 of the ‘767 patent includes the term. Claim 16 is dependent on claim 15, which states that the claimed cable exercise machine includes a control panel that receives input from the user allowing the user to adjust the level of resistance applied by an electromagnetic unit. (‘767 patent, col. 14:50-54) Claim 16, in turn, requires that “the input from the user to adjust the level of resistance is received via a dial[.]” (Id., col. 14:60-61 (emphasis added))
The parties’ competing proposed constructions for the term are set out in the chart below:
| Term | iFIT‘s Proposed Construction | Tonal‘s Proposed Construction |
|---|---|---|
| “a dial” | “a physical or digital representation of a plate or disk that is rotated to select a setting” | “a plate or disk that is rotated to select a setting” |
(D.I. 119 at 6; D.I. 131 at 1) The key dispute regarding this term is whether “a dial” must be limited to a physical dial (as Tonal proposes) or whether it can include a digital representation of a dial (as iFIT suggests). (Tr. at 148-50)
As with the prior term “tower,” not much in the patent sheds light on what “a dial” is or can be. And as it did with “tower,” Tonal makes some good arguments in support of its proposed construction. But here again, the Court agrees with iFIT that its broader construction is more appropriate. The Court does so for the following reasons:
- As an initial matter, the few places in the patent where a dial is mentioned or depicted do not clearly show that only a physical dial can qualify. For example, Tonal points for support to column 8 of the specification of the ‘767 patent, which states that the cable exercise machine described in one embodiment has a control panel that “may include various input devices (e.g., buttons, switches, dials, etc.) and output devices (e.g., LED lights, displays, alarms, etc.” (‘767 patent, col. 8:25-30 (emphasis added); see also Tr. at 151) During the Markman hearing, Tonal argued that in column 8, an output device such as a “display[]” (which would presumably include digital representations of items) is being contrasted with an input device like a “dial“—such that a dial cannot be represented by a digital display item.9 However, the Court disagrees that this is the message that should be gleaned from this part of the specification. Column 8 never flatly states that an input device cannot be represented digitally on a control panel. (Tr. at 160)
- Tonal also pointed for support to Figure 1 of the ‘925 patent. (D.I. 119 at 8-9; Tr. at 153-54)10 There, an input device is depicted (at 132) being located on a control panel (130), just underneath what is clearly a digital display (134). (‘925 patent, FIG. 1 & col. 5:42-45) Tonal suggests that the depicted input device is a physical dial. (D.I. 119 at 8-9; Tr. at 153-54) But iFIT disagreed that this is so, (Tr. at 168-69), and the Court sees iFIT‘s point. Even assuming that what is depicted at 132 is a dial, because the image is not shown in a three-dimensional perspective, the Court cannot say for sure that this is a picture of a physical dial (as opposed to a digital representation of a dial). The drawing is just not very clear in this respect. So again here, when the patents-in-suit are discussing input devices like dials, they do not emphatically wall off the possibility that “a dial” could be a digital representation.11
So if the patents do not clearly state that a dial cannot be digitally represented, what else do we know about whether, in the relevant time period (i.e., 2013), a dial on an exercise machine could have been displayed in digital form? Here, there is no dispute that it could have been. (D.I. 119 at 15, 17) iFIT notes, for example, that Peloton had incorporated a large touchscreen on an exercise bike at this time (though that version of the Peloton bike had a manually-controlled physical dial for adjusting resistance). (Id. at 15 (citing D.I. 120 at JA469); id. at 17 (citing D.I. 120 at JA524))12 Thus, in 2013, digital versions of dials could well have been in use on exercise machines like the one claimed here.13 And while Tonal‘s expert Mr. Voris disagrees that a POSITA in 2013 would have understood a “dial” to include a digital representation, he does not claim that it would have been impossible, or even difficult, to include such a digital representation in an exercise bike at that time. (D.I. 120 at JA302-03) Instead, he notes that in the relevant time period, touchscreens were far more expensive to implement on such machines than they are today, and that only a very pricey version of a touch sensor would have allowed a user in 2013 to manipulate a digital “dial” with ease. (Id.) To the Court, this all indicates that, at the relevant time, it might well have made sense for a patentee to allow its claimed exercise bike to potentially have either physical or digital dials. Both types of such dials could have been helpful to a user (depending on the cost of the particular product that read on the patents-at-issue).
Again, a patentee is entitled to the full breadth of the claimed invention. And here, with the relevant patents seeming to allow for “a dial” to be a digital representation of a dial—or, at
IV. CONCLUSION
For the foregoing reasons, the Court recommends that the District Court adopt the following constructions:
- “electromagnetic unit” means “a unit having at least one electromagnet,” and “magnetic mechanism” means “a mechanism having at least one magnetic element.” These terms do not implicate
Section 112(f) . - “tower” means “an upright structure that helps support various components of the exercise apparatus.”
- “a dial” means “a physical or digital representation of a plate or disk that is rotated to select a setting.”
This Report and Recommendation is filed pursuant to
The parties are directed to the Court‘s Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated March 7, 2022, a copy of which is available on the District Court‘s website, located at http://www.ded.uscourts.gov.
Dated: April 26, 2023
Christopher J. Burke
UNITED STATES MAGISTRATE JUDGE