United States District Court, D. Utah
MEMORANDUM OPINION & ORDER REGARDED POLAR ELECTRO
OY AND POLAR ELECTRO INC'S MOTION FOR JUDGMENT ON THE
HONORABLE BRACE S. JENKINS, UNITED STATES DISTRICT JUDGE
before the Court is Defendants', Polar Electro Oy and
Polar Electro Inc. (collectively, "Polar"), Motion
for Judgment on the Pleadings filed pursuant to Federal Rule
of Civil Procedure 12(c). (Dkt. No. 147)
("Motion"). Polar contends that certain claims of
U.S. Patent No. 6, 701, 271 ('"271 patent") are
directed to patent-ineligible subject matter and are,
therefore, invalid under 35 U.S.C. § 101 ("Section
101"). For the reasons discussed below, the Court grants
November 18, 2011, ICON Health & Fitness, Inc.
("Icon") filed a Complaint against Polar Electro Oy
("Polar Oy") asserting infringement of U.S. Patent
No. 7, 789, 800 ('"800 patent") and the
'271 patent. (Dkt. No. 1). On June 8, 2012, Icon filed an
amended complaint adding Polar Electro, Inc. ("Polar
Inc.") and asserting infringement of an additional
patent, U.S. Patent No. 6, 921, 351 ('"351 patent).
(Dkt. No. 9). The case was stayed with respect to the
'800 patent and the '271 patent pending finalization
of reexamination proceedings for those patents. (Dkt. No.
51). The Court entered a scheduling order for the case
concerning the '271 patent after finalization of the
'271 patent reexamination. (Dkt. No. 141).
entry of the scheduling order, Polar filed its Motion,
requesting that the Court find that claims 15, 42, 49, 51,
54, 80, 81, 82, 90, and 91 of the '271 patent are
directed to patent- ineligible subject matter and thus
invalid under 35 U.S.C. § 101. (Dkt. No. 147). Icon
filed an opposition ("Opposition") (Dkt. No. 166)
together with two declarations: (1) a Declaration of Tyson K.
Hottinger (Dkt. No. 167), along with three letters related to
alleged discovery disputes between the parties; and (2) a
Declaration of Dr. David Brienza. (Dkt. No. 168). With its
Opposition, Icon also filed a Request that the Court take
judicial notice of two groups of documents. The first group
consists of the prosecution history of two patents that are
unrelated to the asserted '271 patent: (1) the
prosecution history file wrapper of U.S. Patent Application
No. 11/545, 018, which issued as U.S. Patent No. 8, 512, 238;
and (2) the prosecution history file wrapper of U.S. Patent
Application No. 13/418, 781, which issued as U.S. Patent No.
9, 149, 213. The second group of documents includes portions
of the two separate reexaminations of the '271 patent:
(1) the ex parte reexamination of U.S. Patent No. 6,
701, 271 that was assigned Control No. 90/013, 409; and (2)
the inter partes reexamination of U.S. Patent No. 6,
701, 271 that was assigned Control No. 95/002, 337. (Dkt. No.
169). Polar filed a reply brief in support of its Motion
(Dkt. No. 171) and shortly thereafter a Notice of Errata.
(Dkt. No. 174).
January 19, 2017, the Court held a hearing during which Icon
presented arguments based on new cases it had not previously
cited. The Court allowed Polar to file a short response to
Icon's arguments related to the new cases, which Polar
filed shortly after the hearing. (Dkt. No. 178). In response,
Icon filed a Supplemental Opposition Brief. (Dkt. No. 180).
Neither party sought construction of any claim terms in its
briefing on the Motion.
on a review of the '271 patent and the parties'
briefing, the Court arrives at the following conclusions
concerning the '271 patent. First, the '271 patent
generally discloses a method and system:
for providing feedback [that] includes receiving data
indicative of a physical characteristic of a first subject
and a physical characteristic of a second subject;
determining an evaluation of the data [or course of action];
and providing a notification regarding the evaluation [or
course of action] to a device"
(See e.g., Dkt. No. 147, Ex. A, '271 patent col.
disclosed method reflects three fundamental actions: (1)
receiving information regarding physical characteristic(s) of
subjects; (2) evaluating, or determining a course of action
based on, the characteristic(s); and (3) providing a
notification of the evaluation/course of action.
(See Dkt. No. 147, Ex. A, Figs, land 2).
the '271 patent broadly defines the terms used to
describe and to claim the disclosed method via examples. With
respect to "physical characteristic, " the '271
patent gives examples, stating that it "might be or
include the subject's heart rate, blood pressure, blood
sugar level, posture, temperature, respiration rate, facial
response or position, weight, height, galvanic skin response,
pheromone emission, brain wave pattern or rhythm, odor,
motion, etc., or a change in any one or more of them."
(See e.g. Dkt. No. 147, Ex. A, '271 patent
Abstract; col. 1:57-64; col. 4:22-23, 53-58).
the '271 patent gives examples of the "determining
an evaluation" such that it "may be or include
summarizing, tabulating, charting, collecting, aggregating,
averaging, comparing, correlating, etc. some or all of the
raw physical characteristic data received." (See
e.g., Dkt. No. 147, Ex. A, col. 6:56-66).
with respect to "determining a course of action, "
the '271 patent shows that the course of action can be
either of an actor such as a teacher or entertainer, or of a
subject such as a student or an audience member. (See
e.g., Dkt. No. 147, Ex. A, col. 7:27-30; col. 8:14-23,
26-29, 51-55, and col. 9:13-17). The '271 patent gives
examples of aperson reading stories or giving a lecture. In
those examples, the person is provided with feedback on the
stories or on the parts of the lecture that the audience
liked best, or on what story ending they might prefer.
Id. Another example provided by the '271 patent
is a course of action to get subjects to do something, or to
improve the chances of the subjects actually doing something.
Id. In the Background of the Invention, the '271
patent provides examples of situations where it might be
"desirable to have information regarding how a subject
or a group of subjects feels about information being
delivered or presented to them or how the subjects react
while information is being delivered or presented to
them." (Dkt. No. 147, Ex. A, col. 1:17-21). For example,
the "Background of the Invention, states:
[A] teacher may wish to know if the students in her class
understand the material the teacher is discussing. A lecturer
may wish to know what portions of his lecture the audience
members find most interesting. Alternatively, the lecturer
may want to have a better idea of when to take a break. An
entertainer may wish to know what ending to provide to a
story or song medley being presented to an audience.
(Dkt. No. 147, Ex. A, col. 1:22-29).
'271 patent gives another example in the context of a
person giving a presentation:
[A]ssume a speaker is giving a presentation to an audience
often people and that the speaker may want to direct the
presentation along one of several potential themes depending
on the interest of the audience. In the method of the present
invention, information regarding each of the audience
member's heart rates, posture, etc. may be obtained and
used to help determine which of the themes the audience
members are the most interested in. Once the information is
communicated to the speaker, the speaker can direct the
(Dkt. No. 147, Ex. A, col. 4:2-11).
speaker receives feedback information regarding the audience,
such as posture (e.g., they are slumping in their seats) or
facial response (e.g., they are yawning); the speaker can
then make a decision based upon the information. For example,
it might be time for the speaker to take a break, speak up,
or move to a more rousing topic.
the '271 patent gives examples of a
"notification" such that it "may be or include
an email message, instant message communication, electronic
signal or other communication (e.g., radio or wireless
transmission, FTP, HTTP or FITML transmission, XML feed), an
audible sound, a visual display, a voice message, etc."
(See e.g., Dkt. No. 147, Ex. A, col. 7:11-16). The
notification can be any format. (See e.g., Dkt. No.
147, Ex. A, col. 8:37-45).
the '271 patent discloses that no unique or specific
hardware or software is needed to implement the disclosed
method, stating, for example, that "embodiments of the
present invention are not limited to any specific combination
of hardware and software." (See e.g., Dkt. No.
147, Ex. A, col. 12:25-27). Indeed, the '271 patent
discloses that implementation of the disclosed method could
implemented in many different ways using a wide range of
programming techniques as well as general-purpose hardware or
dedicated controllers. In addition, many, if not all, of the
steps for the methods described above are optional or can be
combined or performed in one or more alternative orders or
(Dkt. No. 147, Ex. A, col. 14:22-28). Thus, implementation of
the disclosed method can be via conventional technology ...