By: Zach Finn
The move to integrate physical activity with rapidly changing technology is not a new endeavor. In the last ten years, gadgets such as smartwatches and smart mirrors, and companies like Peloton have advanced the ways we exercise and track our personal fitness. With this emerging field combining technology and exercise, a new market space has opened, causing companies to quickly create innovative equipment or fall behind to more inventive competitors. With the downfall of Peloton starting in March of 2021, the cycling industry has seen an uproar of technological innovation ranging from E-bikes to online virtual reality racing and exercising. With all the excitement and novelty that this brings, comes a battle for market dominance in this developing smart biking space. This has produced an exhilarating and dramatic patent war.
Wahoo Fitness (“Wahoo”) is a fitness technology company based in Atlanta, Georgia. In April 2022, the hardware developer acquired RGT Cycling, a virtual cycling platform, thus acquiring new software to help develop an indoor cycling and gaming program through a subscription service known as Wahoo X. Using Wahoo’s KICKR and KICKR CORE trainers, hardware that one attaches to the rear of a cycling bike making it stationary while connecting it to virtual software, Wahoo transformed its company to produce smart bike trainers that deliver a “realistic, accurate, and quiet indoor cycling experience.” Wahoo acquired patents for their hardware.
Zwift, a software company, owns and operates a multiplayer online cycling and running physical training program, enabling users to interact, train, and compete in a virtual world. In an effort to capitalize on the booming indoor cycling frenzy, Zwift partnered with JetBlack, a hardware developer, to develop its own bike trainer. This trainer, known as the Zwift Hub, became available in the United Kingdom and the United States on Oct. 3rd, 2022, and on that same day, Wahoo filed suit against both Zwift and JetBlack for patent infringement.
35 U.S. Code § 271, “Infringement of a Patent”, states that “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” The U.S. Patent system is founded on protection which incentivizes businesses and people to continue to innovate and develop new products and ideas, with less threat from copycats. Wahoo alleges that Zwift has rebranded the JetBlack Volt Trainer, which they believe, in layman’s terms, is a rip-off of their KICKR CORE trainer. Wahoo has filed three patent infringement claims.
United States Patent No. 10.046.222, entitled “System and Method for Controlling a Bicycle Trainer” was issued by the United States Patent and Trademark Office on August 14, 2018. United States Patent No. 10.933.290, entitled “Bicycle Trainer” was issued on March 2, 2021. United States Patent No. 11.090.542, entitled “System and Method for Controlling a Bicycle Trainer”, was issued on August 17, 2021. Wahoo owns all rights and interests for each patent, including the sole and exclusive right to prosecute and enforce the patent against infringers. They have the right to collect damages against those who have infringed upon the patents. The KICKR and KICKR CORE practice the invention claimed by all three patents. Pursuant to 35 U.S.C § 287, Wahoo gives notice of the patent by listing them on its website.
Should the court find that Zwift has infringed upon Wahoo’s patent, Wahoo is seeking injunctive relief. This means Wahoo is pushing the courts to forbid Zwift from releasing the Hub in the United States retail space. Wahoo is also seeking compensatory damages for any harm the company endured from the release. Winter v NRDL (2008) is the leading case for requirements for preliminary injunctive relief. To obtain a preliminary injunction as Wahoo is currently seeking, the company will need to show 1) the likelihood of success of a permanent injunction based on the merits of the claim, 2) irreparable harm caused by Zwift, 3) a balance of equities (what would be fair), and 4) what is in the interest of the public. We should expect to see how the court rules on a temporary injunction very soon, and a permanent injunction down the line. It seems plausible for Wahoo to get a preliminary injunction against Zwift, if they establish the requisite likelihood of success on the merits, demonstrate an irreparable harm like monetary loss caused by Zwift, articulate the dangers of patent infringement, and portray how an injunction is to the betterment of public interest.
To thicken the patent war drama even more, in June 2015, Wahoo was sued for patent infringement over the very same stationary trainer that the company is suing Zwift and JetBlack for using. Powerbahn, another hardware company, sued Wahoo for patent infringement, seeking at least $1 million in lost royalties. Powerbahn licensed its patented hardware to a company called Nautilus Inc. In Powerbahn’s filed claim, Nautilus Inc.’s executive took the technology when he left the company to join another. The company he joined then licensed the patent to none other than Wahoo. The case was dismissed in April 2021, but it illustrates the theatrical and dramatic timeline of the trainer patent.
In summary, it is an exciting time at the intersection of the technological, cycling, and legal communities. As this new development in the patent war over biker trainers ensues, one must wonder the means and reasons for patent litigation today. In my opinion, as an avid cyclist enthusiast and law student, I question the motives behind Wahoo’s patent infringement claims against Zwift. If the JetBlack Volt Trainer, the hardware Wahoo believes Zwift developed and used for their Hub, was released in 2020, why did Wahoo wait until Zwift partnered with JetBlack, acquired the hardware, produced, and released it to the public? My thought is that Wahoo wanted to strategically undercut one of its biggest rivals, hoping that this patent infringement will lead to an injunction, which would severely destabilize Zwift’s success in the technological exercise market space. If this is the case, those who have interest in antitrust might also want to follow this development. Until then, we can only sit back and watch as this patent war unfolds like a soap opera, as Zwift had until October 24, 2022, to respond to Wahoo’s complaint.