Nike Sues Lululemon: Is the Mirror Merely a Reflection of Nike’s Patents?
“New year, new me!” I thought as I tried to rationalize spending close to $1,500 on a mirror that just might get me to work out regularly, but reality quickly set in when I received my Spring tuition bill, and I did not make the purchase.[1] However, I learned that the masterminds behind 80% of my wardrobe are at war.
On January 5, 2022, Nike, Inc. filed suit Lululemon Athletica Inc. in the Southern District of New York, accusing the yoga pant wizard of patent infringement related to its Mirror Home Gym.[2] Here is a summary of what each titan will be attempting to prove before our courts.
Lululemon bought Mirror in the summer of 2020 when gyms were shut down because of the pandemic for about $500 million.[3] Mirror is a reflective display starting at $1,495 that allows users to stream live and on-demand workouts at home for a monthly subscription.[4] It also allows for real-time heart rate data when you pair your own monitor or smartwatch, calories burned, weight recommendations based on performance, in-class feedback from fitness experts via a camera during live workouts, and opportunities to challenge and compete with other users.[5]
Nike’s complaint alleges that the Mirror technology infringes six of their patents either literally or under the doctrine of equivalents.[6] These six patents entitled Nike to exclude others from making, using or selling inventions that make use of the claims in the patents without authorization for 20 years from the patent filing date.[7] These patents were issued between March 2016 and February 2021 and cover items such as a processor and memory system that determines a level of exertion for the exerciser based on their fitness level and current heart rate; methods to set up competitions between users, and methods to receive and record athletic data.[8]
Lululemon filed their answer on January 14th, raising two patent-related defenses; non-infringement and invalidity of the patents.[9]
Lululemon denies infringement of any of the claim in the six patents.[10] Nike will have to prove infringement by showing that Mirror literally infringed or infringed under the doctrine of equivalents every element of one of the claims in one of the six patents.[11] There is patent infringement under the doctrine of equivalents if the allegedly infringing patent claim performs substantially the (1) same function in substantially the (2) same way to obtain the (3) same result.[12] For example, claim 1 in the one of the patents Nike puts forward claims:
“An apparatus comprising: [1] a processor; and [2] a memory storing instructions that, when executed by the processor, cause the apparatus at least to: [3] prompt a user to exercise at a plurality of successive exertion levels, wherein an exertion level is based on a level of physical fitness of a user; [4] determine a plurality of heart rate zones based on first heart rate measurements received from a sensor while the user exercises at the plurality of Successive exertion levels; [5] generate a prompt instructing a user to exercise while maintaining heart rate within a particular one of the plurality of heart rate Zones: process second heart rate measurements received from the sensor subsequent to generating the prompt; and [6] determine whether the second heart rate measurements are within the particular heart rate zone.”[13]
Thus, Nike must prove that each of the six elements outlined above are present or present in an equivalent form in Mirror.[14] Nike will have the opportunity to attempt to prove this for each claim in each patent if and when the case goes to trial.
Lululemon also claims the six patents put forth by Nike are invalid.[15] Because Nike was granted these patents from the United States Patent and Trademark Office, the burden is on Lululemon to prove their invalidity.[16] The Answer lists four grounds for invalidity.[17] First, Lululemon claims the subject matter is not patentable.[18] Under 35 U.S.C. § 101, processes, machines, methods of manufacture, and compositions of matter, or improvements thereof are patentable.[19] Lululemon will have to prove that these patents represent something not patentable, like natural phenomena or abstract ideas in order to prevail on this ground.[20]
Second, Lululemon claims the inventions are not novel.[21] Under 35 U.S.C. 102, Lululemon must prove that Nike was not the first to invent the subject matter of their patents.[22]
Third, Lululemon claims the inventions are obvious.[23] Under 35 USC 103(a), an patented invention, must be nonobvious, meaning more ingenuity and skill are required to come up with the invention than that possessed by an ordinary person of skill in the art.[24] Here, Lululemon will explore other patents and inventions in the public domain and attempt to draw parallels that show that an individual skilled in developing fitness electronics would be able to create the invention on their own.[25]
Fourth, Lululemon claims the patents do not meeting the disclosure requirements laid out in 35 U.S.C. 112, meaning the patent contains an inadequate written disclosure and/or specification.[26] Here Lululemon must show that the claims are broader than the supporting disclosure and/or that the specification does not allow a person of ordinary skill in the art to make and use the invention.[27]
If Lululemon is able to prove any of these four grounds for a patent, that patent will be invalid, and Nike will not be able to exclude Lululemon or any others from making, using or selling the inventions claimed in the patents.
As the case progresses, we await further developments, asking “Mirror mirror on the wall, who shall prevail, if any at all?”
Footnotes
