Patent dispute between exercise bike manufacturers. FLYWHEEL v. PELOTON

An inventor can obtain a patent in the United States by filing a patent application with the United States Patent and Trademark Office. A patent application must detail all the aspects of an invention and demonstrate that the invention meets all the requirements to be granted patent protection. The basic requirements that an invention must been to be grant patent protection are that the invention is, new, useful and not obvious. A patent examiner is assigned to review the patent application by the United States Patent and Trademark Office. If the patent examiner determines that the invention described in the patent application meets all the requirements of United States patent law then the patent application will be granted. A patent gives its owner the exclusive right to make, use, sell and import the invention in the United States. If someone other than the patent owner attempts to exercise one of these exclusive rights that can be considered patent infringement.

The patent examination during the patent application is not the last time that an invention can be reviewed. Even after a patent is granted, the patent can be invalidated if it is discovered that the invention fails to meet one of the criteria for patentability. An inter partes review is an example of a time when a patent can be reviewed and potentially revoked. Inter partes reviews are frequently initiated by a defendant in a patent infringement lawsuit. One of the primary defenses to a claim of patent infringement is that the patent invalid. The America Invents Act introduced the inter partes review proceeding in 2012. Prior to inter partes review a defendant would be required to demonstrate to the judge overseeing the patent infringement case why the patent was invalid. This process could be time consuming for the court.

Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a person who is not the owner of the patent filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. When an inter partes review is initiated by a defendant in a patent infringement case, the district court can choose to stay the patent infringement case until the inter partes review is completed.

Inter partes review is a valuable tool to both the plaintiff and defendant in a patent dispute because it stream lines the question of whether a patent is valid. When an Inter partes review is initiated early in a patent dispute, both the parties and the courts time can be conserved by letting the Patent Trial and Appeal Board make the decision on whether the patent is valid.

A case which involves the user of inter partes review to resolve a patent dispute is PELOTON INTERACTIVE, INC. v. Flywheel Sports, Inc., 18-cv-00390 (E.D.TX 2018). The plaintiff in this case has several patents on type of a stationary exercise bicycle which connects to the internet. The plaintiff’s product encourages riders to exercise harder by streaming videos of instructors to a television mounted on the bicycle and by sharing how riders are exercising on a leader board. The plaintiff has created a quite successful business around its invention, the business is so successful the plaintiff plans to have an initial public offering in the near future.

The defendant in this case sells a product similar to the plaintiff’s patent invention, namely an exercise bicycle that has a television and the ability to track the user’s progress. The plaintiff sued the defendant for patent infringement in 2018. The defendant responded by requesting an inter partes of the plaintiff’s patents. The defendant offered several other patents which disclose inventions similar to the plaintiff’s patented invention. The prior art submitted by the defendant relates to networked treadmills which operate in a similar fashion as the plaintiff’s invention, but also discloses exercise bikes. The Patent Trial and Appeal Board deemed the prior art submitted by the defendant to be sufficient to institute an inter partes review. The patent infringement trial has been stayed until the conclusion of the inter partes review.

The plaintiff will have a difficult time preserving their patent. Inter partes review is often call the death squad because when a review is granted, the patent rarely survives. In this case the plaintiff will have to make a strong argument to distinguish its invention from the prior art submitted by the defendant.

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