Background
Nike owned U.S. Patent No. 8,620,413, which concerns a portable electronic device that can connect to remote devices, display fitness information, establish heart-rate zones, and prompt a user to exercise at particular exertion levels. Lululemon challenged claims 1–5, 7, 9, 12–14, and 17–19 through inter partes review.
The Patent Trial and Appeal Board found claims 1, 5, 7, 12, and 17 anticipated by the Amano patent. It found the remaining challenged claims obvious based on Amano combined with either Gorman or Flach. Nike appealed, disputing the Board’s treatment of the “level of physical fitness” limitation, its anticipation findings, and its findings that a skilled artisan would have been motivated to combine the references.
The Court’s Holding
The Federal Circuit affirmed the Board’s final written decision. It agreed that the phrase “based on a level of physical fitness” was broadly worded and was not narrowed by the patent’s specification or prosecution history. The court therefore rejected Nike’s contention that physical characteristics such as stride length and body weight could not be considered when evaluating a user’s fitness level.
Substantial evidence supported the Board’s findings that Amano disclosed prompts tied to exercise intensity and satisfied the disputed claim limitations. The court also rejected Nike’s argument that the Board improperly combined separate Amano embodiments because the relevant embodiments incorporated earlier-described methods and the credited expert testimony supported reading Amano as a unified disclosure.
Finally, substantial evidence supported the Board’s findings that a skilled artisan would have been motivated to combine Amano with Gorman and Flach. The court concluded that none of Nike’s remaining arguments justified reversal and awarded costs to Lululemon.
Key Takeaways
- Broad claim language may encompass physical characteristics that the specification does not expressly exclude.
- A prior-art reference may anticipate a claim when it teaches that disclosed features can be combined and a skilled artisan could implement the combination.
- Credited expert testimony supplied substantial evidence for both the anticipation and motivation-to-combine findings.
Why It Matters
The nonprecedential decision underscores the difficulty of overturning PTAB factual findings on appeal when those findings are supported by expert testimony and a developed evidentiary record. It also illustrates the risk of relying on a narrow interpretation of broadly drafted claim language when neither the specification nor the prosecution history clearly imposes the proposed limitation.