Fitness Quest Works Out Of Infringement And Contract Claims

2008-1433 Fitness Quest v. Monti
ND/OH 06-CV-2691
Judge Sara Lioi

Defendant Jonathan Monti has appealed Judge Sara Lioi's opinion and order granting Fitness Quest's motion for summary judgment of noninfringement. 

Fitness Quest sells a host of home exercise products, including the Ab Lounge line of abdominal machines that it introduced in 2003.  A year earlier, Monti approached Fitness Quest about licensing an invention he dubbed "a multi-movement machine that one could do assistive or resisitive push-ups, sit-ups, leg lifts and back extensions on."  Monti and Fitness Quest entered into a confidentiality agreement to further those discussions, but Fitness Quest ultimately concluded it had no interest in Monti's invention.  Fitness Quest subsequently worked with other engineers and inventors to produce the Ab Lounge--the product Monti claimed was based on his invention.    

By 2005, a patent had issued for Monti's invention (No. 6,932,749 titled "Device and method for Kinesiologically Correct exercise and rehabilitation").  A warning letter to Fitness Quest followed, charging infringement and breach of the parties' confidentiality agreement.  Fitness Quest returned serve by seeking a declaration in the Northern District of Ohio that the Ab Lounge did not infringe the '749 patent, that the '749 patent was invalid, and that Fitness Quest had not breached its confidentiality agreement with Monti.   

Monti and Fitness Quest both filed motions for summary judgment, with Claim 15--for "back extensions"--as the battle ground.  Claim 15 reads (with the disputed portions highlighted): 

15.  A supportive back extension exercise apparatus adapted for providing an individual with support as a user moves between an upper first position and a lower second position during performance of back extensions, comprising:

an elongated user support having a horizontally oriented body pad with a first end and a second end, the body pad having a longitudinal axis and a lateral extent extending perpendicular to the longitudinal axis and between a first side of the body pad and a second side of the body pad;

a guide member pivotally secured to the user support for movement relative thereto between the first position and the second position wherein the first position is oriented above the second position and the guide member pivots about a substantially horizontal axis which is substantially adjacent to the first end of the body pad, the guide member including a transversely oriented support extending across the user support such that a user may rest their torso thereupon while performing back extensions, the transversely oriented support extending substantially across the entire lateral extent of the body pad; and

a force producing assembly mechanically linked between the user support the guide member, the force producing assembly selectively applying a force biasing the guide member toward the first position such that as a user bends upon the user support with the torso of the user supported upon the guide member and the lower body of the user supported upon the body pad the force producing assembly will apply supportive force urging the user toward the first position as the user performs back extensions moving from the first position to the second position and moving from the second position to the first position.

Before beginning her infringement analysis, Judge Lioi dropped a very telling footnote:  "Although the Court held its Markman hearing . . . and issued its ruling . . . the parties continue to argue the meaning of claim terms."  Indeed, much of the opinion deals with Monti's efforts to navigate around (1) his own claim construction arguments and (2) statements in the specification limiting his claim scope. 

Judge Lioi's analysis of "selectively applying a force" perfectly illustrates Monti's problem.  During Markman, Monti argued--and the Court agreed--that "selectively applying a force" meant the force needed during exercise.  And that "need" was based on user weight or other factors.  With that construction, Fitness Quest argued that the Ab Lounge could never infringe as its force was never based on user weight.  Instead, it argued that the Ab Lounge's force was determined by the "angular displacement" of bungee cords--i.e., how tightly the bungees are pulled.   

To counter, Monti apparently changed focus for summary judgment and argued that "selectively applying a force" was based on angular displacement, regardless of weight.  Invoking the doctrine of judicial estoppel, Judge Lioi rejected Monti's argument, citing his argument during claim construction:

Because what happens is, within the system there may be a 120 pound load on it, or maybe a 220 pound man. So what the system has to do in the force producing assembly is it has to be selective. How much energy am I going to absorb? How much energy do I need to have this person complete the exercise? That’s where the selective comes in. It’s the system itself, the assembly itself that’s selecting the amount of energy that’s needed to complete the exercise, to assist.

Judge Lioi also held that Monti could not show that the Ab Lounge performed back extensions by "urging the user to the first position" as claimed.  Indeed, Judge Lioi held that Monti had disclaimed the "pushing" motion used by the Ab Lounge when he described the "pulling" motion required in the '749 patent's specification:   

A back extension is the backward movement of the torso and upper body to straight posture. Kinesiologically, this is characterized by the pulling of the lower back and postural muscles to extend the torso so that a person can assume straight posture. Many Nautilus type machines have been constructed in the prior art to mimic this movement and add resistance to it, biomechanically, the core movement of this type of machine was a pushing movement. This is a distinct disadvantage of the prior art methods of back extension. Also, this does not fall within the scope of Kinesiologically Correct which has been stated already hereinbefore.

Monti ran into similar problems when attempting to argue that the Ab Lounge's one-piece fabric seat read on the claimed "body pad" and "transversely oriented support."  First, the Court held that the claimed "body pad"--requiring a first and second end and a first and second side--was not infringed by the Ab Lounge's one-piece chair back and seat.  Judge Lioi also held that Ab Lounge's one-piece construction did not include the claimed "transversely oriented support extending substantially across the lateral extent of the body pad."  While Monti argued that the claimed "support" need only be "at an elevation above the body pad," the Court found that the chair back of the Ab Lounge couldn't be at "an elevation above" itself--it was one piece.

Finally, Judge Lioi rejected Monti's doctrine of equivalents argument regarding the "horizontally oriented body pad" because the chair back of the one-piece Ab Lounge seat was eight degrees from vertical.  The Court further noted that Monti had raised his doctrine of equivalents argument for the first time in an affidavit supporting his summary judgment brief and concluded that he had introduced "an entirely new claim" contravening the Court's discovery orders.   

As for the contract claim, Judge Lioi sided with Monti--there was a valid confidentiality agreement between the parties.  The Court, however, declined to find a violation of that agreement.  The agreement contained standard language carving out both information properly received from third parties and information received prior to the agreement from any confidentiality obligation.  Judge Lioi held that Fitness Quest had distributed a machine in 2001, under a license from a third party, that contained both ideas Monti had claimed Fitness Quest copied. 

More Reading:

Judge Lioi's Summary Judgment Opinion and Order

Counsel:

For Fitness Quest:  Benesch, Friedlander, Coplan & Aronoff, Cleveland, OH (Steven M. Auvil, Bryan Schwartz, Bryan J. Jaketic, and Gregory S. Kolocouris)

For Jonathan Monti:  Hahn, Loeser, & Parks, Akron, Ohio (Arland T. Stein, R. Eric Gaum, Robert J. Diaz, John F. Marsh, and Shannon V. McCue)