Defendant Cashes-In Bet on Prosecution History Estoppel
Judge Hilton, in a textbook case of Prosecution History Estoppel, granted a fitness equipment manufacturer summary judgment of non-infringement without breaking a sweat. The 24 page opinion in Fitness Gaming Corp. v. Icon Health & Fitness, Inc., Case No. 1:11CV200, 2011 U.S. Dist. LEXIS 90605 (E.D. VA. Aug. 12, 2011) is worth a read for patent prosecutors and litigators wishing to get results (or at least well-versed in the subject) in 30 minutes or less.
Fitness Gaming Corporation (FGC) sued ICON Health & Fitness (ICON) for infringement of its patent covering a combination exercise machine and “electronic game of chance device.” ICON manufactures the NordicTrack and ProForm brand exercise bikes, amongst other equipment, which include the capability to play Blackjack and Texas Hold ‘Em while exercising. While the claims, on their face, were broadly tied to these exercise bikes, Judge Hilton was quick to point out the contents of the patent’s specification and prosecution history, which fatally limited the claims.
FGC has, throughout the specification and during discourse with the Patent Office, analogized and defined an “electronic game of chance” as a “legalized gambling device.” In fact, the Court pointed to four different instances in the prosecution of FGC’s patent where FGC stated an “electronic game of chance” must “accept a wager from a user and permit a payout based on random events as governed by the controlling gaming and casino regulatory bodies.” The repetition and specificity of this language before the Patent Office, including FGC’s statement that it was “entitled to be [its] own lexicographer,” turned FGC’s legal gamble into a losing bet, as the entirety of these additional definitions were thrust into the interpretation of the claims.
The case should serve as a lesson in ambiguity to prosecutors looking to differentiate their clients’ inventions over prior art. It should also serve as a reminder for litigators to actually read the prosecution history of their claims prior to filing an action.
