United States District Court, D. New Jersey
July 18, 2003
ICON HEALTH & FITNESS, INC., Plaintiff,
SPORTCRAFT, LTD., Defendant.
The opinion of the court was delivered by: ALFRED WOLIN, Senior District Judge.
The litigants before the Court are both manufacturers of
exercise equipment. At issue is whether the inclination assembly
of a home-use treadmill infringes a patent held by plaintiff,
Icon Health & Fitness, Inc. ("Icon"). Icon initiated this
action alleging that the incline mechanism of the TX350 Treadmill
("TX350"), manufactured by defendant, Sportcraft, Ltd.
("Sportcraft") infringes on United States Patent No. 5,672,140
(the "'140 patent").
[272 F. Supp.2d 386]
In its application for summary judgment, Sportcraft asserts
that the incline adjusters on the TX350 are structures that are
neither identical nor equivalent to the "inclination means"
limitation of the '140 patent. Icon alternatively seeks summary
judgment stating that the TX350 both literally infringes Claim 26
of the '140 patent and infringes based on the doctrine of
equivalents. This motion has been decided upon the written
submissions of the parties pursuant to the Federal Rules of Civil
Procedure 78. For the reasons stated herein, the Court will grant
Sportcraft's motion for summary judgment. In doing so, the Court
also denies Icon's motion for summary judgment.
Icon, a company with its principal place of business in Logan,
Utah, is a leading manufacturer of home exercise and sporting
equipment. Icon is the owner by assignment of the '140 patent.
Icon's '140 patent is directed to a reorienting treadmill, that
is, a treadmill that can be selectively moved between a first, or
operational position, and a second, or folded position. More
importantly, the '140 patent discloses treadmills that incline
and decline through various structures and using various
Sportcraft, a Delaware corporation with its principal place of
business in Mt. Olive, New Jersey, provides products for indoor
and outdoor games. In August 2001, Sportcraft entered the
treadmill market with the TX350 brand treadmill. The TX350 is a
reorienting treadmill with an inclination mechanism located near
the rear of the tread base. To adjust the incline of the tread
base on which the user runs, the user must manually rotate each
of the two triangular-shaped feet. Icon claims that the
inclination mechanism of the TX350 infringes Claim 26, ¶ 3 of
the '140 patent.
On November 19, 2001, Icon filed a complaint alleging that the
TX350 infringes the '140 patent. Icon thereafter filed a motion
for a preliminary injunction which the Court denied in a
Memorandum Opinion entered on March 13, 2002. (See Memorandum
Opinion and Order ("Memorandum Opinion")). In the Memorandum
Opinion, this Court acknowledged that the parties dispute only
Claim 26, ¶ 3 of the '140 patent which describes the
adjustable incline mechanism. In the current proceeding, the same
is true. Icon alleges that the incline adjusters of the TX350
infringe the '140 patent because they are either identical or
equivalent to an inclination embodiment of Claim 26, ¶ 3.
A. Summary Judgment Standard
Rule 56(c) of the Federal Rules of Civil Procedure provides
that summary judgment shall be granted if "the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law." Fed.R.Civ.P.
56(c); see Hersh v. Allen Prods. Co., 789 F.2d 230, 232 (3d Cir.
1986). A dispute involving a material fact is "genuine" only "if
the evidence is such that a reasonable jury could return a
verdict for the nonmoving party." Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
The Supreme Court also observed that "[o]nly disputes over facts
that might affect the outcome of the suit under governing law
will properly preclude an entry of summary judgment." Id.; see
also Ness v. Marshall, 660 F.2d 517, 519 (3d Cir. 1981) (holding
that the role of district court is to determine whether genuine
issue of material fact exists).
[272 F. Supp.2d 387]
Furthermore, when considering a summary judgment motion, a
Court must view all evidence submitted in a light most favorable
to the party opposing the motion. Matsushita Elec. Indus. Co.,
Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348,
89 L.Ed.2d 538 (1986); Meyer v. Riegel Prods. Corp., 720 F.2d 303,
307 n. 2 (3d Cir. 1983). Although the summary judgment hurdle is
a difficult one to meet, it is by no means insurmountable.
Accordingly, the Supreme Court concluded that "[o]ne of the,
principal purposes of the summary judgment rule is to isolate and
dispose of factually unsupported claims or defenses, and we think
it should be interpreted in a way that allows it to accomplish
this purpose." Celotex Corp. Catrett, 477 U.S. 317, 323-24,
106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
The fact that the lawsuit involves a non-infringement analysis
does not render this case unsuitable for summary judgment.
Summary judgment is "as appropriate in a patent case as any
other" case under Rule 56(c). Avia Group Int'l, Inc. v. L.A. Gear
Cal., Inc., 853 F.2d 1557, 1561 (Fed. Cir. 1988); Ciba-Geigy Corp.
v. Alza Corp., 864 F. Supp. 429, 432-33 (D.N.J. 1994). The
Federal Court has advised, "[w]here no issue of material fact is
present . . . courts should not hesitate to avoid an unnecessary
trial by proceeding under Fed.R.Civ.P. 56 without regard to the
particular type of suit involved." Chore-Time Equip., Inc. v.
Cumberland Corp., 713 F.2d 774, 778-79 (Fed. Cir. 1983).
It is with these tenets in mind that the Court considers
defendant's motion and plaintiff's cross-motion for summary
B. Patent Infringement
A trial court is not obliged "to interpret claim[s]
conclusively and finally during a preliminary injunction
proceeding." Sofamor Danek Group v. DePuy-Motech, 74 F.3d 1216,
1221 (Fed. Cir. 1996). Therefore, although the Court had an
opportunity to construe Claim 26 of the '140 patent in its
Memorandum Opinion, that construction need not be the final
An infringement analysis requires two separate steps. First, a
court must construe the claims asserted to be infringed as a
matter of law in order to establish their meaning and scope. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.
1995). Second, the claims as construed are then compared to the
allegedly infringing device. See id. In this latter step, patent
infringement may be found in either of two ways: literal
infringement or infringement under the doctrine of equivalents.
Since Markman, the interpretation of patent claim terms falls
within the exclusive province of the court. See id. at 967; see
also Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 1366
(Fed. Cir. 2000). The standard to be applied for claim
construction is what one of ordinary skill in the art at the time
of the invention would have understood the term to mean. Markman,
52 F.3d at 986. To ascertain the meaning of a patent claim, "the
court should first look to the intrinsic evidence of record,
i.e., the patent itself, including the claims, the specification
and, if in evidence, the prosecution history." Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also
Markman, 52 F.3d at 979-81.
The claims of the patent establish the limits and boundaries of
the patent while the specification, of which the claims are a
part, contains a written description of the invention that would
enable one of ordinary skill in the art to make and use the
invention. Markman, 52 F.3d at 979-80. "For claim construction
purposes, the description may act as a sort of dictionary,
[272 F. Supp.2d 388]
which explains the invention and may define terms used in the
claims." Id. (quoting In re Vogel, 57 C.C.P.A. 920, 422 F.2d 438,
441 (Cust. & Pat.App. 1970)); Vitronics, 90 F.3d at 1582. The
written description, however, "does not delimit the right to
exclude. That is the function and purpose of claims." Id.
Upon consideration of the above, the Court must determine, as a
matter of law, the meaning of the claim language at issue.
1. Claim Construction
The parties agree that the only claim in dispute is Claim 26,
¶ 3 of the '140 patent. That limitation describes an
inclination means connected to said frame and having
rear feet means movably attached to said frame
proximate said rear of said frame for positioning and
supporting said frame on a support surface in said
rear position, said inclination means being operable
to move said rear feet means relative to said frame
to vary the inclination of said tread base relative
to a support surface.
('140 patent, col. 22, l. 19-25).
In the Memorandum Opinion, this Court found that Claim 26,
¶ 3 describes a means-plus-function element because it uses
the term "means" without specifying sufficient structure for
performing the recited function. The parties do not dispute the
Court's finding. Therefore, as a means-plus-function element,
Claim 26, ¶ 3 must be interpreted under 35 U.S.C. § 112,
¶ 6, which provides that:
[a]n element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material or acts in support thereof, and such claim
shall be construed to cover the corresponding
structure, material or acts described in the
specification and equivalents thereof.
35 U.S.C. § 112, ¶ 6.
This statutory language limits the interpretation of the
means-plus-function element so that the element does not cover
every means for performing the identified function. Claim
construction of a means-plus-function element requires
identification of the function recited in the claim and
identification of the structure corresponding to that function as
disclosed in the specification. See Asyst Techs., Inc. v. Empak,
Inc., 268 F.3d 1364, 1369 (Fed. Cir. 2001); Budde v.
Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001).
2. The Function of Claim 26, ¶ 3
The Court defines the function of Claim 26, ¶ 3 as "the
treadmill's user may move the feet of the treadmill in order to
increase or decrease the inclination of the tread base."
(Memorandum Opinion at 12). Furthermore, the parties both agree
with the Court's finding that the TX350 performs the same
function as that identified in Claim 26.(Id.). Icon, however,
argues that the Court's determination of function connotes that
an "external source of force  moves the rear feet (i.e., `the
treadmill user')," rather than a "structure associated with the
inclination means that acts on the rear feet." (Plaintiff's Reply
Memorandum of Law ("Pl.Brief") at 6) (emphasis in original).
Plaintiff has misinterpreted the Court's findings. The Court
defined the function broadly to include, in one extreme, an
inclination mechanism in which a treadmill user must manually
adjust the feet to opcrate inclination. In the other extreme, the
function also encompasses an inclination mechanism that is
activated by a more complex series of structures, for example
feet of a tread base that are lifted or lowered by the push of a
[272 F. Supp.2d 389]
plaintiff is surely aware that the function encapsulates all five
of the embodiments of the '140 patent, which includes three
embodiments with motorized elements. The Court did not construe
the function to embrace only some of the means delineated in
Claim 26, ¶ 3.
With those issues in mind, the Court finds that the manual
incline adjusters of the TX350, as well as the more complex
inclination assemblies of Claim 26, ¶ 3 perform the same
3. Corresponding Structure
By writing a claim in a means-plus-function form, "a party is
limited to the corresponding structure disclosed in the
specification and its equivalents." Kahn v. General Motors Corp.,
135 F.3d 1472, 1476 (Fed. Cir. 1998) (citations omitted). "A
structure disclosed in the specification is only deemed to be
`corresponding structure' if the specification clearly links or
associates that structure to the function recited in the claim."
Id. (citing B. Braun Med., Inc. v. Abbott Lab., 124 F.3d 1419,
1424 (Fed. Cir. 1997)).
The '140 patent discloses five separate embodiments that
perform the inclination means function. The first three
embodiments of each involve a mechanical operation for varying
the inclination of the tread base, therefore, they are
undisputably not infringed by the TX350. Only the fourth and the
fifth embodiments contain nonmotorized inclination mechanisms.
The fourth embodiment requires the user to adjust the
treadmill's legs by insetting pins into apertures in the leg. The
user must slide the legs in and out of the casings and adjust the
pins. Plaintiff has not challenged defendant's position that the
TX350 does not either literally infringe the fourth embodiment of
Claim 26 nor is closely-related under the doctrine of
Thus, the Court looks only to the fifth embodiment in its
determination of whether the TX350 infringes the '140 patent. The
fifth embodiment describes an inclination assembly that consists
of a rectangular planar member [vertically] secured to the tread
base. Attached to the rectangular planar member, is a planar
support with one end "shaped to be an elongated finger-like
extension which functions as a stop for the pawl." The planar
support "is rotatably connected to the planar member  by means
of a pivot axle . . . and has a ratchet section having [three
distinct notches] along its perimeter. . . ." Additionally, the
"pawl [which is a locking means which engages the notches] is
also a planar member having a somewhat rectangular
configuration." Secured to the pawl and the rectangular planar
member is a "V-shaped spring" which "is constructed to exert a
force [and] therefore urges the pawl . . . to rotate clockwise
into abutment against the support  proximate the notches."
('140 patent col. 16 l. 39 to col. 17 l. 61).
Icon contends that the Court should not consider any structure
that does not perform the actual lifting or lowering
(specifically, the "V-shaped spring"), although the structure may
be integral to effectuate inclination. Icon argues that the Court
should be limited to the following structures of the inclination
assembly: (1) rectangular member secured to the tread base; (2) a
support foot with (3) an elongated end including (4) a series of
notches; (5) a pawl used as a locking means which engages the
notches; and (6) a pivot axis about which the support foot can
Icon reasons that the Court should only consider those
structures that moves the rear feet to vary the incline and not
consider the "V-shaped spring" which is a "structure that
produc[es] the force that acts to move the feet means relative to
[272 F. Supp.2d 390]
support surface." (Pl. Brief at 13). As such, Icon argues that
the "V-shaped spring" should not be included in the determination
of the corresponding structure because the spring is not integral
for the rear feet "to be operable" to move and vary inclination
of the tread base. (Id.).
By not including the spring and by limiting the corresponding
structures to the six listed above, Icon argues that a user can
manually adjust the assembly to achieve inclination. The Court
disagrees with plaintiff's attempts to limit the structures of
its inclination assembly to postulate that manual adjustment is
possible. The language of the '140 patent clearly requires a
force element or "V-shaped spring" component to act in
conjunction with the six elements listed above to achieve
As stated above, the Court's determination of the function
should be read broadly. Accordingly, in determining corresponding
structures the Court includes all elements of the disputed patent
claim, including structures that produce the force that act to
operate the feet.
The Court must now decide whether the inclination assembly of
the TX350 is either identical or equivalent to the inclination
assembly of the fifth embodiment. In its determination, the Court
need not go beyond the intrinsic evidence because the language
'140 patent is not ambiguous. Extrinsic evidence may only be
considered when the intrinsic evidence is ambiguous in its
description of the patented invention. Vitronics Corp., 90 F.3d
at 1582. Because one of ordinary skill in the art would
understand the meaning of the patent claims by looking to the
patent itself the Court need not refer to extrinsic evidence.
4. Literal Infringement
To establish literal infringement, a plaintiff must demonstrate
that the accused device "incorporates the structure disclosed in
the specification, or its substantial structural equivalent
. . ." Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384,
1388-89 (Fed. Cir. 1992). "To determine whether a claim limitation
is met literally, where expressed as a means for performing a
stated function, the court must compare the accused structure
with the disclosed structure, and must find equivalent structure
as well as identity of claimed function for that structure."
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc.,
145 F.3d 1303, 1308 (Fed. Cir. 1998) (quoting Pennwalt Corp. v.
Durand-Wayland, Inc., 833 F.2d 931, 934 (Fed. Cir. 1987)) (in
banc) (emphasis in original).
Once a court has determined that the accused device performs
the identical function, that device literally infringes under
§ 112, ¶ 6 if it is "insubstantially different from the
corresponding structure in the patent specification." Ishida Co.
v. Taylor, 221 F.3d 1310, 1317 (Fed. Cir. 2000) (citing
Chiuminatta Concrete Concepts, Inc., 145 F.3d at 1309). Because
the Court has determined that the TX350 and the '140 patent
perform the same function: movement of the rear feet of the
treadmill in order to increase or decrease the inclination of the
tread base, the Court must now determine if the corresponding
structures of the TX350 are insubstantially different from those
of the '140 patent.
To determine whether the structure is insubstantially
different, the Court must decide "whether the `way' the accused
structure performs the claimed function, and the `result' of that
performance, are substantially different from the `way the
claimed function is performed by the `corresponding structure
. . . described in the specification . . .'" Id. (quoting
Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267
(Fed. Cir. 1999)).
[272 F. Supp.2d 391]
Both the fifth embodiment and the TX350 adjust inclination
through the movement of the feet of the treadmill. Nevertheless,
each foot of the treadmill described in the '140 patent is
composed of a plane shaped as a finger-like extension with a
notched ratchet portion which rotares on a pivot axle. The
rotation is achieved through the force of a spring or other
urging element, then the ratchet foot is held in place by a pawl.
There are two feet, each on either side of the base. The way in
which the incline adjustment operates includes mechanisms beyond
manual force to urge the pawl into the notches. Although the
fifth embodiment may theoretically allow for manually
adjustability, the '140 patent does not describe manual
manipulation of the feet as the way to achieve variation in
In contrast, the feet of the TX350 are shaped as triangles and
each side of the triangle is a different length. There is one
triangular-shaped foot on either side of the rear of the tread
base. The TX350 requires the hands of the user to manually turn
the triangular-shaped feet to vary the inclination. Depending on
which of the three sides of the feet contacts the tread base,
determines the height of the incline.
An insubstantial change is one that "adds nothing of
significance to the structure, material or acts disclosed in the
patent specification." Chiuminatta Concrete Concepts, Inc., 145
F.3d at 1309 (quoting Valmont Indus., Inc. v. Reinke Mfg. Co.,
983 F.2d 1039, 1043 (Fed. Cir. 1993)). Plaintiff provides three
examples wherein the Federal Circuit found equivalence to exist
despite differences that were allegedly much greater than those
found in the present case. See e.g., Al-Site Corp. v. VSI Int'l,
174 F.3d 1308 (Fed. Cir. 1999) (finding the use of glue as an
adhesive, was equivalent to the use of a rivet or a button in a
device for displaying eye glasses); IMS Technology, Inc. v. Haas
Automation, Inc., 206 F.3d 1422 (Fed. Cir. 2000)(en banc)(finding
a tape cassette and floppy disk are insubstantially different as
interface means to transfer data); Odetics, 185 F.3d 1259
(finding a device that rotated by exerting force against cam
follower which turned a bin about a rod infringed a device that
rotated by exerting force against the teeth of a gear which
turned a bin about a rod).
The Court finds that the examples provided by plaintiff are not
dispositive in this inquiry. The cases cited by plaintiff do not
provide the Court with particularized evidence to demonstrate the
insubstantiality of differences between the inclination assembly
of the TX350 and that of the '140 patent. The cases show examples
of elements of a patent and offending device that differ, but do
not substantially affect the function, way or result of the claim
at issue. Or, as in the case of Odetics, the way to achieve
function: exerting force to achieve rotation, was identical in
both mechanisms. The differences present in this case affect the
way in which the TX350 inclines as opposed to the way in which
the assembly described in the fifth embodiment inclines.
To further support its claim that the differences between the
two inclination assemblies are insignificant, Icon asserts that
like the TX350, "the rotation of the rear feet [of the fifth
embodiment structure] varies the inclination of the tread base,
not the rotation of the pawl." (Plaintiff's Reply Brief at 8).
Nevertheless, the Court finds that the '140 patent clearly states
that the rear feet, with its finger-like end and the pawl operate
inseparably to achieve variable inclines. Additionally, both the
feet and pawl rotate around pivot axles (542 and 560 respectively
in Figure 15 of the '140 patent). Thus, providing further
evidence that rotating the feet alone, is not what is required to
[272 F. Supp.2d 392]
variations in incline according to the fifth embodiment.
Furthermore, the TX350 achieves inclination without the
addition of a spring or other mechanism of force, unlike the
assembly of the fifth embodiment. Therefore, not only are the
structures visually different, but a substantial difference
exists between the way the TX350 and the '140 patent inclination
assembly vary the inclination. The '140 patent adjusts
inclination through the movement of a pawl and notch structure,
wherein two parts revolve around a pivot axle. Whereas the
inclination adjustment of the TX350 is based on the length of the
sides of triangular feet that must be manually turned. The Court
also notes that the fifth embodiment incorporates a "V-shaped
spring" which forces the pawl to move at the same time as the
feet in order to secure the incline level of the feet. The TX350
incorporates no similar urging mechanism beyond the users'
The Court finds that the triangular feet of the TX350 are
substantially different from the inclination assembly of the
fifth embodiment. Therefore, the Court finds that Sportcraft did
not literally infringe the '140 patent through its manufacturing
of the TX350.
5. Doctrine of Equivalents
Under the doctrine of equivalents, an accused device "that does
not literally infringe upon the express terms of a patent claim
may nonetheless be found to infringe if there is `equivalence'
between the elements of the accused product or process and the
claimed elements of the patented invention." Warner-Jenkinson Co.
v. Hilton Davis Chem. Co., 520 U.S. 17, 21, 117 S.Ct. 1040,
137 L.Ed.2d 146 (1997) (citing Graver Tank & Mfg. v. Linde Air
Prods. Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097
(1950)). Although equivalency under the doctrine of equivalents
is a question of fact, it should not be employed to rewrite
claims or to rescue the patentee's claim from a determination of
non-infringement. Hence, "[a]pplication of the doctrine of
equivalents is the exception, [and] not the rule . . ." London v.
Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir.
In its literal infringement analysis, the Court discussed the
differences in the way that the between the '140 patent and the
allegedly offending structure perform the function at issue.
Notably, the Court found that the way the triangular feet of the
TX350 achieves inclination is substantially different from the
way the planar feet with the notched finger-like extension of the
'140 patent achieves the same function.
The test for infringement under § 112, ¶ 6 and the
doctrine of equivalents are closely related. Chiuminatta, 145
F.3d at 1310. The doctrine of equivalents, however, is broader
because it allows infringement to be found in equivalents that
"are beyond the literal scope of the claim." Id. Nevertheless, "a
finding of lack of literal infringement for lack of equivalent
structure under a means-plus-function limitation may preclude a
finding of equivalence under the doctrine of equivalents." Id.
Such is the case before this Court.
The Court acknowledges that the function and result of both the
inclination assembly of the fifth embodiment and the TX350 have
been adjudged as identical. The Court, nevertheless, finds
substantial differences in the way in which the two devices
perform that function. As the Court explored in detail when
discussing literal infringement, the way the rotating feet means
of the accused device and the claimed invention operates differs
exponentially, thus no equivalence exists. Therefore, the Court
finds that the TX350 is not an equivalent of the fifth embodiment
[272 F. Supp.2d 393]
of Claim 26 of the '140 patent and does not infringe under the
doctrine of equivalents.
Because the Court did not find that the TX350 infringed the
'140 patent based on literal infringement or the doctrine of
equivalents, the Court grants defendant's motion for summary
judgment. For those same reasons, the Court denies plaintiff's
motion for summary judgment.
An appropriate order is attached.
For the reasons set forth in the Opinion of the Court filed
IT IS this 18TH day of July 2003
ORDERED that defendant's motion for summary judgment is
granted; and it is. further
ORDERED that plaintiff's motion for summary judgment is
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