Peloton’s Online Exercise Class Patents: Past, Present and Future

By Dr. Shuo Liu
May 4, 2021

“Patents that have been thoroughly examined during prosecution are more likely to withstand validity challenges during IPR. To this end, it might be beneficial for practitioners to work closely with examiners to make sure that close prior art references…are substantively considered during prosecution.”

Peloton, exercise bikes - https://depositphotos.com/50053785/stock-photo-spin-class-working-out-in.htmlPeloton Interactive, Inc. is a popular fitness company that offers high-end stationary bikes, treadmills, and online exercise classes. The demand for online exercise classes increased significantly during the pandemic, and so did Peloton’s market cap. With over 4 million members and quarterly revenue over $1 billion, Peloton has become a leader in the online fitness industry. Peloton secured certain patent rights in the United States with respect to online exercise classes during the early years of its development and has continuously expanded its patent portfolio. Its online exercise patents claim methods and systems that enable users to virtually compare with and compete against other users. This article explores the prosecution history of these patents, their current challenges under inter partes review (IPR) proceedings, and possible future developments.

The Evolution of Peloton’s Online Exercise Patents

Peloton has two patent families related to online exercise classes, both named “Exercise System and Method.” One patent family relates to online cycling classes (9,174,085; 9,233,276; 9,861,855; 10,022,590; 10,322,315; 10,486,026; and 10,639,521), and the other relates to online treadmill classes (10,864,406 and 10,974,094). This article focuses on the patents on remote cycling classes which appear to be Peloton’s most asserted and litigated patents.

The ‘085 patent is the first patent issued in this patent family, and later patents in this patent family gradually broadened the claim scope and/or added more features.  During prosecution of the ‘085 patent, the claims were amended to include limitations that significantly narrowed the claim scope. To infringe this patent, a competitor must perform a series of steps, including at least the following: 1) providing information about available live and archived cycling classes, 2) providing an interface that includes a display screen associated with a stationary bike, 3) receiving a selection from a user, 4) sending a selected cycling class to a computer associated with the stationary bike for display on the display screen associated with the stationary bike, 5) detecting multiple performance parameters from at least two users’ stationary bikes at the same point in the selected cycling class, and 6) displaying a performance parameter from the two users on the display screen associated with a user’s stationary bike, such that the two users’ performance parameter at the same point in the selected cycling class can be compared with each other.

Due to the narrowed claim scope (e.g., on the display screen associated with a user’s stationary bike), the ‘085 can be circumvented, for example, by displaying users’ performance parameters on a large screen in the instructor’s studio, or by displaying the cycling class on a TV screen in a user’s living room. To close these loopholes, the ‘276 patent broadens the claim scope to recite that the cycling classes and the performance parameters are displayed on a display screen at a user’s remote location.

Another issue with the ‘085 patent is that the patent is only infringed when a competitor both makes the bikes and offers remote cycling classes. A bike manufacturer alone would not infringe this patent because it does not provide information about the cycling classes. An online cycling class provider alone would not infringe because it does not provide an interface or detect the performance parameters. An entity can be held responsible for others’ performance of method steps, but only under limited circumstances (e.g., the entity directs or controls others’ performance, or where the actors form a joint enterprise). See Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015).

The ‘855 patent tries to solve this problem by claiming a method for displaying live and archived cycling classes, including displaying information about available live and archived cycling classes and displaying performance parameters on a display screen at a user’s location. The ‘590 patent solves the problem by claiming a system having a user interface to display live and archived cycling class content, sensors to detect a user’s activity and to generate performance parameters, and a local processing system to perform similar functions as described in the method claims in the ‘855 patent.

The ‘315 further broadens the claim scope to cover not only cycling classes, but also other exercise classes. In the ‘026 patent, a ranked list is dynamically updated based on performance parameters of previous users which are synchronized with a user’s performance parameter. Patent No. 10,639,521 includes additional claim limitations that each of the available archived exercise classes comprise content for an entire exercise class, and that performance parameters displayed on the dynamically updated ranked list are synchronized to one another.

Challenges to Peloton’s Online Exercise Patents

Currently, three of Peloton’s online exercise patents (No. 10,022,590; 10,322,315; 10,486,026) are being challenged by Echelon Fitness Multimedia, LLC in IPR proceedings (IPR2020-01186, IPR2020-01187, and IPR2020-01541). These challenges are as a result of Peloton’s lawsuit asserting these three patents and patent No. 10,639,521 against Echelon.

In one of the IPR proceedings (IPR2020-01541), Peloton argued that the Patent Trial and Appeal Board (PTAB) should exercise discretion to deny institution because the Examiner already considered substantially the same prior art during prosecution. The PTAB disagreed and found that the prior art references cited in the IPR proceeding provided additional detail. The PTAB also found that Echelon has adequately shown that the Examiner overlooked teachings of a prior art reference and erred in a manner material to patentability. Although most of the prior art references relied upon in the IPR were identified on an Information Disclosure Statement (IDS) during prosecution and thus known to the Examiner, the Examiner allowed the application without substantively discussing the relevance of these prior art references.

In early 2021, the PTAB instituted trials for all three IPR petitions, finding that Echelon has demonstrated a reasonable likelihood of prevailing.

Possible Future Developments

Although the PTAB has instituted IPR proceedings against three of Peloton’s patents, it does not necessarily mean that they will be invalidated. Previously, Flywheel Sports, Inc. challenged Peloton’s patents (9,174,085; 9,233,276; 9,861,855; and 10,322,315) in IPR proceedings (IPR2019-00294, IPR2019-00295, IPR2019-00564, and IPR2019-01411). Three petitions were instituted. Before the PTAB could reach a decision on the fourth petition (IPR2019-01411), the parties settled with FlyWheel admitting to infringement and agreeing to terminate its online cycling classes. In the end, Peloton effectively acquired FlyWheel’s online class business, since FlyWheel’s customers could trade in their Flywheel Home Bike for a refurbished Peloton Bike and convert to Peloton’s class subscription.

This time, it is uncertain whether Echelon would settle like FlyWheel did. If Echelon wants to settle, it could certainly use the instituted IPR trials as leverage in settlement negotiations. It appears that it is in Peloton’s best interest to settle, given the PTAB’s unfavorable opinion in the IPR institution decisions. Moreover, the outcome of these IPR proceedings would likely impact Peloton’s other litigation efforts. In May 2020, Peloton asserted the ‘026 and ‘521 patents against ICON Health & Fitness, Inc. Peloton is also being sued for patent infringement by ICON, Mad Dogg Athletics, Inc., and Dish Technologies LLC.

If Echelon does not wish to settle, it is possible that these three patents could become invalidated. Fortunately, Peloton has continuation applications (16/866,499; 16/902,195; 17/220,839; 17/220,867; and 17/220,876) pending in this patent family. Peloton also has other patents (e.g., No. 10,898,760 claiming a method of coordinating workouts across remote exercise machines) and new applications (e.g., 16/188,172; 16/874,453; 16/217,548; 16/510,619; 16/251,023; 16/359,969; and 16/359,972) that may result in other patents. In addition, Peloton has recently acquired Precor Inc. and presumably acquired hundreds of patents owned by Precor that could be used for both offensive and defensive purposes.

Promoting Thorough Examination During Prosecution

To succeed in today’s highly competitive and unpredictable business world, it is critical to have a high-quality and diversified patent portfolio. Patents that have been thoroughly examined during prosecution are more likely to withstand validity challenges during IPR. To this end, it might be beneficial for practitioners to work closely with examiners to make sure that close prior art references, especially those that could potentially invalidate the patent, are substantively considered during prosecution. For example, practitioners can help direct the examiner’s attention to those references during an examiner interview or by discussing them in an office action response, which could be more effective than simply citing the references in a lengthy IDS.

The Author

Dr. Shuo Liu

Dr. Shuo Liu is an associate in the San Diego office of Wilson Sonsini Goodrich & Rosati, where his practice focuses on biotech and pharmaceutical patent prosecution and intellectual property counseling including freedom to operate and validity analysis.

For more information or to contact Shuo, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments.

  1. George May 4, 2021 6:15 pm

    “Patents that have been thoroughly examined during prosecution are more likely to withstand validity challenges during IPR. To this end, it might be beneficial for practitioners to work closely with examiners to make sure that close prior art references…are substantively considered during prosecution.” – Shuo Liu

    100% Agree! Because SOMEONE will find those references when ‘push comes to shove’, anyway. What good is a ‘fantasy patent’ that’s worth nothing – but maybe millions in legal fees?!

    Gene Quinn and others here have strongly advocated that one should disclose as little as possible (and maybe even nothing) in the background section of a patent application. Yes, your chances of obtaining a patent might be ‘slightly’ improved, but only ‘very slightly’, since the Examiner (and/or PTO search contractors) WILL probably find the relevant prior art anyway – and then what? It’ll look like you were TRYING to hide ‘easily discoverable’ art. How long would a patent like that remain valid, even if allowed? And, if it’s not, then it’ll be entirely worthless won’t it (except maybe to lawyers)? Competitors will be able to quickly determine that it’s worthless and won’t worry about infringing anything at all. They’ll just laugh all the way to the bank and bar (and not THAT ‘bar’).

    https://www.ipwatchdog.com/2020/01/25/background-pitfalls-drafting-patent-application/id=118203/

    https://www.ipwatchdog.com/2018/08/11/how-to-write-a-patent-application/id=97223/

    https://www.ipwatchdog.com/2015/09/12/beware-background-pitfalls-when-drafting-a-patent-application/id=61650/

    In my opinion, if you have nothing to worry about from prior art yu are able to find, then you just PROVE that to the Examiner (if necessary – since often it’s not). That’s how I do things, anyway. I use that section to ‘prove the deficiencies’ of the prior art and ‘make obvious’ why something better is needed to solve a problem. Sure, it can take a lot longer, require a little more thought, and probably will cost more, but the results will also be a LOT better, much more robust, and basically ‘bullet proof’! Your patent will then come with a suit of ‘impenetrable armor’ against ANY future IPR’s or IPR threats! What else could anyone possibly throw at you? A whole lot less anyway! When those who might at first think about challenging your ‘bulletproof’ patent, and realize they’ll likely not have much success, then they’ll also be much less likely to EVEN ATTEMPT IT!

    Nevertheless I do agree that one should never ‘suggest combinations’ of prior art or admit anything that could indicate any weaknesses or suggest an invention might need additional work or might not work at all in certain situations (like the HUGE MISTAKE they made in the first CRISPER patent), which was obviously prepared by ‘professionals’. despite that, they SOMEHOW allowed the inventor to ‘admit it was unlikely’ the method would work in eukaryotic cells the way it did in prokaryotic cells, leaving a huge opening for the Broad Institute. The resulting lawsuits could likely have been totally avoided, had such a ‘newbie’ mistake not been made! Who were those lawyers anyway (remind me not to hire them)?! That may have been the IP mistake of the 21st century! Luckily Europe doesn’t seem to see things the same way the U.S. does – in this case!

    https://www.sciencemag.org/news/2020/09/latest-round-crispr-patent-battle-has-apparent-victor-fight-continues

  2. George May 4, 2021 7:51 pm

    Sorry, ‘CRISPR’ not ‘CRISPER’ (always seem to make that mistake).

  3. George May 4, 2021 10:52 pm

    What happened to my first comment? The one mentioning the CRISPR patent and how it got unnecessarily ‘messed up’?

  4. Anon May 5, 2021 2:49 pm

    The empty wagon has found a new sidewalk…

    But please do discuss how something admitted to being prior art (in a background section) is de facto held against the applicant — whether or not that admission is actually true.

    This is LESS about “proving” anything, and more about merely recognizing traps for the unwary and minimizing patent profanity.

  5. George May 6, 2021 1:34 am

    “The empty wagon has found a new sidewalk…”

    You mean Dr. Shuo Liu??? Gene Quinn??? Where’s one of your ‘brilliant’ articles, Anon?!

  6. George May 6, 2021 2:00 am

    “. . . recognizing traps for the unwary and minimizing patent profanity.”

    Except that will be of ZERO help in an IPR (or multiple ones). So, ‘proving’ you have a superior invention that’s ready to go, up front, is usually the best strategy if you actually want to get a ‘real’ and ‘valid’ patent that STAYS valid (unlike just a ‘vanity patent’ has has no value at all)!

    I say ‘take the hits’ and play ‘rope a dope’ by exhausting all possible Examiner challenges, from the start, and you’ll be good to go for the long haul (i.e., for the life of the patent). If you actually have a ‘good invention’, that shouldn’t be a problem (unless you run into something like the secret SAWS program – in which case ‘you’re toast’ anyway). Moral of the story: Great inventions will always withstand the test of time (whether the PTO might want to admit it or not). Besides, if the U.S. doesn’t care about protecting its inventors and inventions, the Chinese sure won’t mind!

  7. George May 6, 2021 2:17 am

    @Anon

    I think Dr. Liu knows what he’s talking about (because he was a top-notch student of both science and the law)!

    “To succeed in today’s highly competitive and unpredictable business world, it is critical to have a high-quality and diversified patent portfolio. Patents that have been thoroughly examined during prosecution are more likely to withstand validity challenges during IPR.”

    I’ll take HIS advice over yours, any day (even if yours is free)! Also, he doesn’t appear to be ‘paranoid’ (or go around insulting everyone) – that’s a plus!

  8. Anon May 6, 2021 10:30 am

    George – way to be inane and prove my point yet again – CLEARLY the empty wagon comment is directed at you (as I have used that metaphor for you previously, and include in THIS comment the word, “new” – indicating a past person is employing that ‘mindset’ to a new situation).

    Your three replies only feed the notion that you react out of emotion, rather than reason. You entirely miss the point as to why Background sections have been slimmed down. NOTHING of what I stated indicated ANY of either not having a great invention, not having that great invention undergo a thorough examination, NOR having the OFFICE provide the most on point art possible (including having the patentee pay for and provide the most diligent prior art search possible — an item that I have in the past well indicated is a Best Practice).

    Instead, you – yet again – fly off the handle and make up points to attribute to me only to try to knock down these made up points without regard to what I have actually stated.

    ANY “insults” that you see as directed to you are well-earned.

  9. George May 6, 2021 3:02 pm

    @Anon

    Except I 100% agree with Dr. Liu! LOL!

    This shows just how hypocritical and ‘clueless’ you appear to be! You can’t even admit that both Dr. Liu and I are right and you are wrong!

    You are giving bad advice anytime you suggest ‘withholding information’, by being intentionally ‘information stingy’ regarding the prior art, particularly as it relates to the background section of a patent, or when ‘refusing’ to disclose the prior art in an IDS as required by law (but NEVER enforced). By not doing that you all but ensure that a patent WILL BE challenged at some later time (at least if the invention has any real value).

    Sure, playing ‘hide and seek’ with regard to the (relevant) prior art probably does result in more (garbage) patents being issued which then generates more revenue for patent attorneys (who both prepare and then are asked to ‘try’ to defend them), but it also clogs up the ‘innovation pipeline’ (just like ‘flushable wipes’ are now clogging up our sewer lines). Playing hide & seek with the PTO examiners just delays the inevitable – at huge costs in both UNPRODUCTIVE time and money! Yeah, just think of bad and mediocre patents as being society’s ‘flushable IP’ (that costs a fortune to ‘unclog’).

    Patents should be ‘golden’ on issuance. Like I said before, they should be pretty much ‘bulletproof’ on issuance and every inventor should demand that for their money! Who wants ‘half-ass’ surgery just because it might be faster, easier to do, or a ‘little’ cheaper?! At least Dr. Liu understands that’s not a good idea or value in the long run.

    The goal should always be to get ‘enforceable’ patents, rather than a bunch of official looking but entirely worthless documents! One of the biggest problems with our current patent system is the emphasis on quantity over quality (and actual merit). Nobel Prizes are awarded for ‘merit’ not who presents the best and ‘cleverest’ legal arguments for why they should win! The same should be done for patents!

  10. George May 6, 2021 4:31 pm

    @Anon

    “. . . the United States Patent and Trademark Office (USPTO) imposes an affirmative duty on a patent applicant to disclose known and material prior art during the life of a patent application”

    “There is no duty to actively search for and find prior art, and filing of an IDS is not construed as a representation that a search has been made (37 C.F.R § 1.97). Indeed, some practitioners do not file an IDS at the time of filing an application because they do not know of any particular and material prior art based upon the state of the claims as filed. However, one must disclose what one knows. Failure to advise the USPTO of material prior art known to the inventor, assignee, or patent attorney can result in unenforceability of the patent for “inequitable conduct”, rendering the entire patent useless.”

    https://www.mondaq.com/unitedstates/patent/574416/the-duty-of-disclosure-before-the-uspto

    Do you always disclose (and maybe even ‘briefly’ discuss) – obviously relevant – prior art in your applications as (supposedly) required by MPEP 2001? More and more applicants aren’t doing that! When they don’t it, may be ”penny wise, but pound foolish”! If IDS’s aren’t submitted by applicants, then a great disservice may be done to them that can cost them much, much, more in the end (including their life’s savings if they are independent inventors). On the other hand, corporations might not care about HOW they get their patents, or even about their quality. They might just care about how fast they can get them and how many they can get (like Elizabeth Holmes and Theranos did).

  11. George May 6, 2021 4:48 pm

    By the way, the case of Elizabeth Holmes and Theranos still needs to be investigated for ‘patent fraud’ – especially since she ‘claimed under oath’ to have been one of the inventors on over 200 of now likely bogus (and hastily issued) patents. It’s not realistically possible that she had anything at all to do with most of those ‘inventions’, much less all of them! In which case she might have lied under oath on maybe 150 or more such applications! EACH SUCH LIE can result in up to 5 years in prison (18 U.S.C. § 1001)! In the case of Elizabeth Holmes, I guess that could mean as much as 750 YEARS then?! LOL! Like to see her start another company after that! Hey, FBI, time to look into that too! She might get a much longer sentence that way (just like Al Capone did for ‘tax evasion’). There are lots of ways to ‘cheat’ with patents too (especially with our present USPTO)!

  12. George May 6, 2021 5:09 pm

    “George – way to be inane and prove my point yet again – CLEARLY the empty wagon comment is directed at you (as I have used that metaphor for you previously, and include in THIS comment the word, “new” – indicating a past person is employing that ‘mindset’ to a new situation).”

    Anon, this just ‘further proves’ how CLUELESS you seem to be! You don’t think I KNEW that when I made that comment?! You don’t think I knew you would use any excuse possible to insult (and/or defame) me?

    But then of necessity, you must also think that Dr. Liu’s ‘wagon is empty’ – since I am in 100% agreement with him! To say otherwise would be totally illogical (as Spock would say)! Ever study ‘logic’ Anon? For that matter, ever learn to do a rigorous and valid mathematical proof? I’ve done many of them!

  13. Anon May 6, 2021 6:54 pm

    Four more emotional posts – while simply ignoring the position I actually presented and CONTINUING to make up things that I have not said.

    Yes George, the word for you is inane.

  14. George May 7, 2021 2:25 pm

    @Anon

    Inventors are DRIVEN by emotions (especially the desire to create new things)! Why not get some?! Might even help you with your insults.

  15. Anon May 7, 2021 3:34 pm

    Driven by emotions?

    No.

    Driven by reason with some emotion?

    Sure.

    But emotion alone, or even emotion to the point that reason is compromised — pretty much a unicorn.

  16. Anon May 7, 2021 3:36 pm

    As for any insults — YOU are the one generating them (I just merely state them after you have supplied the material). Need an example? How about the one that you exclaimed that you never said something – and I replied with the explicit word count of the post that I directly copied your words from?

  17. George May 12, 2021 12:13 pm

    @Anon

    “How about the one that you exclaimed that you never said something – and I replied with the explicit word count of the post that I directly copied your words from?”

    What does a WORD COUNT have to do with anything???!!!

    Anon, you seem to need some help with this ‘obsession’ of yours to always be right and to just insult people rather than actually debate them, when you are probably wrong! How long have you had this problem? I have much better things to do!

    P.S. Why don’t I have this problem with others here, including other attorneys and why don’t you have the guts to ‘attack them’ sometimes? You don’t have the guts to do that, do you?

  18. Anon May 12, 2021 2:05 pm

    this ‘obsession’ of yours to always be right and to just insult people rather than actually debate them

    You are doing this “debate” thing wrong if you think it to be error for the other side to want to be right.

    As for the word count, that was in direct reply to YOUR assertion that you never said the words that I quoted.

    Quite clearly, by being precise in exactly what words you DID use and precise at what point you DID use them, your assertion was shown to be false.

    Here’s a tip for you – debate-wise: when your assertions are shown to be false, the other side wins the debate.

    And here as well, you slide into more (of the already attempted) inanity of me supposedly not attacking others.

    How very odd of you.

    I speak my mind often and directly — and it does not matter to me all that much** whom I am addressing. As I have already put to you, I have “attacked” (which is to say, disagree) with Gene Quinn on occasion. Your assertion is false.

    ** I will on occasion cut some commentators some slack if they appear to be new or not attorneys, and appear to be earnestly trying to appreciate an issue. Others — like you — who errantly pride themselves on their ego and think that perhaps their being ‘good’ in one area somehow automatically makes themselves to be experts in other areas, I simply have less tolerance for.