Icon Health & Fitness, Inc. v. Octane Fitness, LLC

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
__________________________

ICON HEALTH & FITNESS, INC.,
Plaintiff-Appellant,
v.
OCTANE FITNESS, LLC,
Defendant-Cross-Appellant.
__________________________

2011-1521, -1636
__________________________

Appeals from the United States District Court for the
District of Minnesota in Case No. 09-CV-0319, Judge Ann
D. Montgomery.
____________________________

Decided: October 24, 2012
____________________________

LARRY R. LAYCOCK, Workman Nydegger, of Salt Lake
City, Utah, argued for plaintiff-appellant. On the brief
were DAVID R. WRIGHT, C.J. VEVERKA, and DAVID R. TODD.

RUDOLPH A. TELSCHER, JR., Harness, Dickey & Pierce,
PLC, of St. Louis, Missouri, argued for defendant-cross
appellant. With him on the brief was KARA R. FUSSNER.
__________________________
ICON HEALTH v. OCTANE FITNESS 2

Before RADER, Chief Judge, NEWMAN and LOURIE, Circuit
Judges.
LOURIE, Circuit Judge.
ICON Health & Fitness, Inc. (“ICON”) appeals from
the final judgment of the United States District Court for
the District of Minnesota, which granted summary judg-
ment of noninfringement of claims 1–5, 7, and 9–10 of
U.S. Patent 6,019,710 (the “’710 patent”). ICON Health &
Fitness, Inc. v. Octane Fitness, LLC, No. 09-319
ADM/SER, 2011 WL 2457914 (D. Minn. Jun. 17, 2011)
(the “Summary Judgment Op.”). Octane Fitness, LLC
(“Octane”) cross-appeals the court’s denial of a motion to
find the case exceptional under § 285. Because the court
did not err in its underlying claim construction, in grant-
ing summary judgment of noninfringement, and in deny-
ing the motion to find the case exceptional, we affirm.
BACKGROUND
The ’710 patent, owned by ICON, is directed to an el-
liptical machine that allows for adjustable stride length.
The patent claims at issue focus on the “linkage system”
connecting the foot rail to the frame via the “stroke rail.”
3 ICON HEALTH v. OCTANE FITNESS

As described in the specification and shown in Figure
5 above, the stroke rail (66) is attached to the frame in
three places: to the forward end of a foot rail (72, 50); to a
rotatable crank arm connected to an axle (90); and to the
frame via a pin mounted within a C-shaped channel,
encircling the pin (76, 84). The stride length is adjusted
by changing the length of the stroke rail using either
manual adjustment (slots and pins, e.g., 142) or a motor
with a gear as shown in Figure 6:
ICON HEALTH v. OCTANE FITNESS 4

ICON filed a complaint against Octane alleging that
Octane’s elliptical machines infringe claims 1, 2–5, 7, and
9–11 of the ’710 patent. Octane sells two families of
elliptical machines, the Q45 and Q47; those machines and
their linkage systems are licensed under U.S. Patent
5,707,321 (the “Maresh patent”), which is prior art to the
’710 patent. The primary differences between the Q45
and Q47 models and the ’710 patent that are relevant in
the current appeal are that (1) Octane’s machines do not
use a C-shaped channel and pin to attach to the frame,
instead using a “rocker link” (a lever-based design); and
(2) Octane’s alleged “stroke rail” has multiple parts,
including a motor, and is not a single rail.
Claim 1 is representative of the contested claims:
1. An exercise apparatus comprising:
(a) a frame configured for resting on a ground sur-
face;
5 ICON HEALTH v. OCTANE FITNESS

(b) a pair of spaced apart foot rails each having a
first end and an opposing second end, each
foot rail being configured to receive a corre-
sponding foot of a user;
(c) a pair of stroke rails each having a first end
and an opposing second end, the second end of
each stroke rail being hingedly attached to the
first end of a corresponding foot rail;
(d) means for connecting each stroke rail to the
frame such that linear reciprocating displace-
ment of the first end of each stroke rail results
in displacement of the second end of each
stroke rail in a substantially elliptical path;
and
(e) means for selectively varying the size of the
substantially elliptical path that the second
end of each stroke rail travels.
’710 patent col. 7 ll. 11–26 (emphases added).
The court construed “stroke rail” to be “a linear or
curved rail, which may be made to vary in length, extend-
ing from a foot rail to a frame on an elliptical machine,”
and which can be both a “unitary stroke rail and an
adjustable stroke rail” with multiple parts “used to vary
the length of the stroke rail.” ICON Health & Fitness,
Inc. v. Octane Fitness, LLC, No. 09-319 ADM/SER, 2010
WL 5376209, at *3 (D. Minn. Dec. 22, 2010) (the “Claim
Construction Op.”). The court construed “means for
connecting” as a means-plus-function limitation, identify-
ing the corresponding structure as including both the C-
shaped channel and pin structure as well as the crank
arm structure. Id. at *5–6 (adopting Octane’s proposed
list of structures). The court found no need to construe
the function of the means. Id. at *4.
ICON HEALTH v. OCTANE FITNESS 6

On summary judgment, the district court concluded
that the “stroke rail” and “means for connecting” limita-
tions were absent in the Q45 and Q47 machines and
granted summary judgment of noninfringement. The
court held that the Q45 and Q47 did not have a stroke rail
that “extends from a foot rail to the frame,” but instead
has an intervening rocker link. The court also held that
the accused devices could not infringe under the doctrine
of equivalents because the linkage system used was
present in the prior Maresh patent and ICON did not
propose a hypothetical claim that did not encompass
Maresh. As for the “means for connecting” limitation, the
court found that there was no evidence that the Q45 and
Q47 machines underwent linear displacement. The court
also found that there was no infringement by equivalence
because linear displacement was required by the claims
and was critical to the invention as stated both by the
examiner in the reasons for allowance and by ICON’s
expert, and also because the arc-like movement of the
rocker link was present in the prior Maresh patent. The
court also held that the rocker link was not an equivalent
structure to the C-shaped channel. The court denied a
subsequent motion to find the case exceptional. ICON
timely appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
I.
We review de novo the district court’s grant of sum-
mary judgment, drawing all reasonable inferences in
favor of the nonmovant. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255 (1986); Hologic, Inc. v. SenoRx, Inc., 639
F.3d 1329, 1334 (Fed. Cir. 2011). Summary judgment is
appropriate when there is “no genuine dispute as to any
material fact and the movant is entitled to judgment as a
7 ICON HEALTH v. OCTANE FITNESS

matter of law.” Fed. R. Civ. P. 56(a). Infringement,
whether literal or under the doctrine of equivalents, is a
question of fact, which we review on appeal from a grant
of summary judgment of non-infringement without defer-
ence. Schindler Elevator Corp. v. Otis Elevator Co., 593
F.3d 1275, 1281 (Fed. Cir. 2010). We address claim
construction as a matter of law, which we review without
formal deference on appeal, although we give respect to
the reasoning of the district courts. See Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en
banc).
A.
ICON argues that the district court erred in constru-
ing “means for connecting” and in its summary judgment
determination of noninfringement. According to ICON,
the phrase for “means for connecting” is a means-plus-
function limitation, where the function is “connecting,”
and the crank arm attached to the middle of the stroke
rail is the corresponding structure. As the accused de-
vices have both of these features, ICON argues that it was
error to grant summary judgment of noninfringement.
Alternatively, ICON argues that if the “means for con-
necting” includes the C-shaped channel and pin, then the
accused devices still have an equivalent structure: the
rocker link that moves in a substantially straight path.
Octane responds that the claim term “means for con-
necting” requires “linear reciprocating displacement” and
that the only structure disclosed in the patent that per-
forms that function is the C-shaped channel design.
Octane contends that the claim requires the motion to be
“linear” and notes that the rocker link in the accused
products moves in an arcuate manner. Because Octane’s
devices do not contain a structure similar to the C-shaped
channel and do not move in a linear manner, Octane
ICON HEALTH v. OCTANE FITNESS 8

argues that the district court properly granted summary
judgment of noninfringement.
Neither party disputes that “means for connecting” is
a means-plus-function limitation. Additionally, the claim
language makes clear that the function of the “means for
connecting” is to connect “each stroke rail to the frame
such that linear reciprocating displacement of the first
end of each stroke rail results in displacement of the
second end of each stroke rail in a substantially elliptical
path.” ’710 patent col. 7 ll. 19–23. To identify the proper
structure, we look for the structure disclosed in the speci-
fication that actually performs the recited function.
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d
1106, 1119 (Fed. Cir. 2002).
We agree with the district court that the correspond-
ing structure here must both connect the stroke rail to the
frame and allow the first end to undergo linear displace-
ment. There are two structures recited in the specifica-
tion that connect the stroke rail to the frame. First, the
specification clearly identifies the crank arm attached to
the middle of the stroke rail as part of that structure.
’710 patent col. 4 ll. 26–51. Second, the specification also
describes another attachment at the first end of the
stroke rail to the frame via the C-shaped channel and pin
structure. Id. at col. 4 ll. 3–17. While that second connec-
tion is not specifically identified as a “means for connect-
ing” in the specification, it is required to enable the
claimed function, including the linear displacement of the
first end. Indeed, the C-shaped channel and pin structure
attached to the first end is necessary “to simultaneously
enable annular rotation and linear displacement of the
first end 70,” as previously shown in Figure 5 above (76,
84). Id. at col. 4 ll. 3–6. These two connections work in
tandem both to connect the stroke rail to the frame and to
allow the linear displacement of the first end of the stroke
9 ICON HEALTH v. OCTANE FITNESS

rail to result in a substantially elliptical path of the
second end.
ICON argues that the C-shaped channel and pin can-
not constitute a connecting means because it is described
in the specification as the “attaching means.” ICON relies
on the specification’s lack of discussion of the C-shaped
channel and pin structure in the “connecting means”
paragraph to argue that the connecting means cannot
include the C-shaped channel and pin. However, that
argument is without merit. No claim uses the phrase
“attaching means” or “means for attaching” to describe
the C-shaped channel. Instead, the claim language uses
“attached” and “connected” interchangeably. For exam-
ple, claim 24 states that “the crank arm” is “attached to
the first stroke rail . . . being attached so as to enable
rotation of the crank arm.” Id. at col. 9 ll. 6–9. That is
the same crank arm that the specification states is part of
the “connecting means.” Regardless, it is the combination
of the C-shaped channel and pin, and the crank arm, that
performs the recited function. That the C-shaped channel
is also described as the “attaching means” does not
change that fact for the purposes of section 112(6). Ac-
cordingly, the district court did not err in construing the
term “means for connecting.”
Applying that construction, it is undisputed that the
accused products do not contain the C-shaped channel
and pin structure. Octane’s products instead employ a
“rocker link” that is a bar pivotally attached at one end to
the end of the stroke rail and pivotally attached at the
other end to the frame. When in motion, the rocker link
rotates around its frame-anchored end in an arcuate
motion. ICON argues that the slightly arcuate motion of
the rocker link is equivalent to the linear motion of the C-
shaped channel. However, arcuate motion, at least in this
case, is not equivalent to linear motion.
ICON HEALTH v. OCTANE FITNESS 10

ICON’s expert testified at his deposition that the
linkage system was patentable in part because it “con-
vert[s] the reciprocating motion of one end along a linear
path to [an] essentially elliptical path . . . .” J.A. 1729
(emphasis added). Indeed, the examiner, in his reasons
for allowance, made a similar statement in distinguishing
prior art:
The prior art fails to show or teach applicant’s
claimed exercise apparatus comprising . . . a pair
of stroke rails each having one end hingedly con-
nected to a respective foot rail and having the op-
posite end connected to the frame for linear
reciprocating movement and for producing an el-
liptical path.
J.A. 1697 (emphasis added). If ICON had wanted the
claim to cover other types of nonlinear motion, such as an
arcuate path, it could have simply omitted the term
“linear” to broaden the claims. In the context of these
claims, the structure of a lever design that moves in an
arcuate pattern is not equivalent to a C-shaped channel
design that locks in a pin to move in a straight line.
ICON also argues that because claims 8 and 22 state
that the first end of a stroke rail is “slidably attached” to
the frame, the “means for connecting” in claim 1 cannot
also include the same slidably attached structure under
the theory of claim differentiation. That supposition is
incorrect. In Laitram Corp., the plaintiff argued that a
means-plus-function limitation, “means for joining,” could
not include a structure of a “cross member” because
another dependent claim specifically required such a cross
member. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533,
1538 (Fed. Cir. 1991). We disagreed and stated:
A means-plus-function limitation is not made
open-ended by the presence of another claim spe-
11 ICON HEALTH v. OCTANE FITNESS

cifically claiming the disclosed structure which
underlies the means clause or an equivalent of
that structure. If [plaintiff’s] argument were
adopted, it would provide a convenient way of
avoiding the express mandate of section 112(6).
Id. In other words, claim differentiation cannot override
the effect of section 112(6). As noted in Laitram Corp.,
the scope of the limitation literally covers structures
described in the specification and equivalents thereof not
withstanding the existence of dependent claims.
In summary, as the supposed equivalents in the ac-
cused products do not perform the same function by
moving in a linear fashion and do not contain a structure
equivalent to the C-shaped channel and pin, the accused
products cannot literally infringe the claims. See Odetics,
Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir.
1999). Moreover, the lack of equivalent structure for the
“means for connecting” limitation for literal infringement
also precludes finding equivalence under the doctrine of
equivalents. See Chiuminatta Concrete Concepts, Inc. v.
Cardinal Indus., Inc., 145 F.3d 1303, 1311 (Fed. Cir.
1998) (“[A] finding of non-equivalence for § 112, ¶ 6,
purposes should preclude a contrary finding under the
doctrine of equivalents.”).
B.
ICON also argues that the court erred in its construc-
tion of “stroke rail” and thus in its determination that the
accused devices do not infringe the ’710 patent. Specifi-
cally, ICON contends that “stroke rail” does not require
extension “from a foot rail to a frame” and can include
additional parts, such as a motor or a rocker link on the
accused products. ICON proposes an alternative con-
struction that requires, at most, that the stroke rail be
ICON HEALTH v. OCTANE FITNESS 12

“attached to a foot rail” and “connected to the frame”
without regard to the number of intervening parts.
Octane responds, noting that the specification and
claim language both describe the stroke rail as extending
from the foot rail to the frame. In particular, Octane
contends that every time the word “stroke rail” is used in
the specification, it references number 66 or 68 in the
figures, a bar that is shown extending from the foot rail to
the frame. Octane also notes that in allowing the claims
the examiner stated that the stroke rails each have one
end connected to the foot rail and to the opposite end
connected to the frame. Finally, Octane points out that
ICON’s definition would broaden the scope of the ’710
patent to an infinite combination of parts between the
stroke rail and frame. We agree with Octane that the
district court did not err in its construction of “stroke rail”
or its subsequent grant of summary judgment of nonin-
fringement.
Starting with the language of the claims themselves,
the stroke rails “each hav[e] a first end and an opposing
second end, the second end of each stroke rail being
hingedly attached to the first end of a corresponding foot
rail.” ’710 patent col. 7 ll. 16–19. That claim language
requires a direct attachment of one end of the stroke rail
to the foot rail.
The other end (the “first” end) of the stroke rail is de-
scribed in the next limitation via a “means for connect-
ing”: “means for connecting each stroke rail to the frame”
in such a way that allows for “linear reciprocating dis-
placement of the first end.” Id. at col. 7 ll. 19–23. The
specification describes only one such location and type of
connection to the frame that allows linear reciprocating
displacement of the first end of the stroke rail. The
specification states that “[e]ach stroke rail also has a first
13 ICON HEALTH v. OCTANE FITNESS

end slidably attached to the support stand of the frame.”
E.g., id. at col. 2 ll. 10–13. That connection is depicted in
each figure as the C-shaped channel and pin. Consistent
with that understanding, the examiner found the claims
novel over the prior art in his reasons for allowance in
part because the stroke rails have “one end hingedly
connected to a respective foot rail and having the opposite
end connected to the frame.” J.A. 1697. Thus, the claims,
when read in light of the specification, require that a
stroke rail extend from the foot rail to the frame, with
each end attached to the frame using a hinge on one end
and a C-shaped channel on the other. The district court
was therefore correct to require that the stroke rail ex-
tend from the foot rail to the frame.
The accused products, to the extent they have a stroke
rail, connect one end of that stroke rail to the frame using
a number of parts including a motor, an integrated screw,
a swing arm, a bracket holding the motor, and other
pieces. The other end is connected to the frame using the
previously discussed rocker link. We agree with the
district court that the rocker link “is a separate, inde-
pendently moving, intervening element of the linkage
system interposed between the frame and the proposed
stroke rail, and its presence prevents the stroke rail from
extending to the frame.” Summary Judgment Op., 2011
WL 2457914, at *12. It is undisputed that the rocker link
is not part of the stroke rail and is not a means for con-
necting as discussed above. Thus, because the alleged
stroke rail extends from the rocker link, not the frame,
there was no genuine material issue of fact that the
accused products do not contain a stroke rail that extends
from the foot rail to the frame.
As for the doctrine of equivalents, we have previously
held that a patentee also cannot assert equivalents that
would encompass—or “ensnare”—the prior art. See
ICON HEALTH v. OCTANE FITNESS 14

Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1322 (Fed. Cir. 2009); Wilson Sporting Goods
Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684 (Fed.
Cir. 1990) (“[A] patentee should not be able to obtain,
under the doctrine of equivalents, coverage which he
could not lawfully have obtained from the PTO by literal
claims.”), overruled in part on other grounds by Cardinal
Chem. Co. v. Morton Intern., Inc., 508 U.S. 83 (1993).
Octane contends that its linkage system is covered by the
Maresh patent, and, as prior art, such a linkage system
lies beyond the reach of the doctrine of equivalents as a
matter of law.
In circumstances such as these, where there is evi-
dence that prior art would be included in an asserted
range of equivalents, the patentee must show that its
proposed equivalent does not encompass the prior art.
Streamfeeder, LLC v. Sure-Feed Sys., Inc., 175 F.3d 974,
983 (Fed. Cir. 1999). Here, Octane presented evidence
that ICON’s asserted range of equivalents would encom-
pass the Maresh patent, a conclusion with which the
district court agreed. Summary Judgment Op., 2011 WL
2457914, at *12. ICON, in response, argued that the
Maresh patent does not anticipate the ’710 patent because
it is missing the “means for selectively varying” limita-
tion. However, even a cursory read of the Maresh patent
shows a discussion of altering the elliptical path by chang-
ing the length of the linkage system parts. Maresh pat-
ent, col. 10 ll. 13–19 (“To change the shape of the elliptical
path . . . adjust and change the length of any or all of the
three dynamic links (cranks, connector links, and rock-
ers).”). Thus, ICON has failed to meet its burden of
persuasion. The district court was correct in determining
that the equivalents alleged by ICON are outside the
scope of the ’710 patent because they ensnare the prior
art; thus the accused products do not infringe the claims.
15 ICON HEALTH v. OCTANE FITNESS

II.
Octane argues in its cross-appeal that the court ap-
plied an overly restrictive standard in refusing to find the
case exceptional under § 285. Octane relies on ICON’s
allegedly unreasonable claim construction positions, its
privilege assertions over its pre-suit investigation, and e-
mails allegedly supporting bad faith litigation in an effort
to “go after” Octane. In addition, Octane seeks to lower
the standard for exceptionality to “objectively unreason-
able” to rebalance what it alleges as the power of large
companies over smaller companies in patent infringement
litigation. However, we have reviewed the record and
conclude that the court did not err in denying Octane’s
motion to find the case exceptional. We have no reason to
revisit the settled standard for exceptionality.
CONCLUSION
We have considered the parties’ remaining arguments
and conclude that they are without merit. For the forego-
ing reasons, the judgment of the district court is
AFFIRMED