By Mark Engstrom, J.D.
The owner of a patent on a portable system for retrieving exercise programs from a remote communication system successfully challenged the rejection of 12 of 15 patent claims that the Patent Trial and Appeal Board had deemed obvious over prior art. Because the Board had erred as to some, but not all, of the asserted claims, the U.S. Court of Appeals for the Federal Circuit vacated in part and affirmed in part the decision of the Board, which had affirmed a patent examiner’s obviousness findings in an inter partes reexamination. Judge Kathleen O’Malley dissented in part (Icon Health and Fitness, Inc. v. Strava, Inc., February 27, 2017, Wallach, E.).
Strava Inc. and UA Connected Fitness Inc. requested an inter partes reexamination of several claims of U.S. Patent No. 7,789,800 ("Methods and Systems for Controlling an Exercise Apparatus Using a USB Compatible Portable Remote Device"). After a patent examiner found that several claims were obvious over various prior art, Icon Health & Fitness appealed, and the PTAB affirmed the examiner’s obviousness findings. Icon appealed the Board’s obviousness rejection of 15 patent claims.
Icon argued that the Board had erred in: (1) relying on "legal conclusions of obviousness" that Strava’s expert had proffered and (2) affirming the examiner’s rejection of the asserted claims, either for lack of substantial evidence or for legal error in its obviousness finding.
Expert declarations. Reversal of the patent examiner’s obviousness findings was necessary, Strava argued, because the examiner had cited large portions of the expert’s declarations, and the legal conclusions of the expert "appear to have supplanted" the examiner’s analysis. According to Icon, the examiner failed to form his own legal conclusions of obviousness; instead, he "adopted the legal conclusions" that were provided by Strava’s expert. To determine whether the expert’s statement was directed to factual findings or the legal conclusion of obviousness, the court considered the statement not in isolation, but in the context of the whole declaration.
Claims 57-62 and 65. Seven claims—Claims 57–62 and 65—recited a "cradle" that included electrical contacts and a "first computing device" with electrical contacts that were configured to mate with the cradle electrical contacts. Icon argued that the PTAB’s obviousness rejection of each of those claims was erroneous because the Board had never addressed them. Its decision on appeal was thus not supported by substantial evidence. The Federal Circuit agreed that the PTAB did not make the requisite factual findings and failed to provide an explanation.
According to the court, the Board was authorized to incorporate and adopt the examiner’s findings in his Right of Appeal Notice, and the incorporated material was identified with sufficient particularity. However, neither the examiner nor the PTAB had made any factual findings; instead, they incorporated by reference arguments that were drafted by Strava’s attorneys. Moreover, neither the PTAB’s adoption of Strava’s PTAB Response Brief nor the examiner’s adoption of Strava’s November 2013 Comments had transformed the attorneys’ arguments into factual findings or supply the requisite explanation for those findings.
Ultimately, the PTAB failed to: (1) make the necessary findings and provide an adequate evidentiary basis for them and (2) examine the relevant data and articulate a satisfactory explanation for its action, including a rational connection between the facts that were found and the choice that was made. For those reasons, the Board’s rejection of Claims 57–62 and 65 was vacated and the case was remanded for additional findings and explanation.
Claim 86. Claim 86 recited a "cradle" with an infrared (IR) interface and a "first computing device" with an IR interface that was configured to send activity-related information to the "interface module" through the IR interface. Icon argued that the PTAB’s obviousness finding on Claim 86 should be reversed because the Board failed to substantively address the elements in the claim’s limitation.
The court found, however, that the PTAB had made the requisite factual findings with an adequate evidentiary basis, and further found that the Board had satisfactorily explained its determination. Although the Board had adopted the examiner’s explanation, the examiner (and thus the PTAB) had considered the claim’s disclosure of "a cradle that includes an [IR] interface" to be the mere "combination of familiar elements," which was sufficient to explain the connection between the examiner’s factual findings and legal conclusion.
Claims 46 and 74. Claims 46 and 74 each recited an audio input device that included a microphone that was configured to gather audio inputs from the user—using a voice-activated controller—and a radio interface that was configured to send and receive audio signals. Because the PTAB failed to make the requisite factual findings or provide the attendant explanation, the Board vacated the obviousness findings as to both claims and remanded them for additional proceedings.
As with claims 57–62 and 65, the PTAB failed to make factual findings that were based in the record, and it failed to provide the requisite explanation to support its findings for claims 46 and 74, the court explained. Instead, the Board merely summarized Icon’s arguments and stated that the examiner’s rejection was "sufficiently supported by the record." That however, was insufficient. The PTAB could not make a factual finding and then explain itself by summarizing and rejecting arguments without explaining why it had accepted the prevailing argument.
Claims 98-100. Claims 98–100 each recited an "accelerometer" that was "integrally included in a portable first computing device." Although the PTAB had made a factual finding as to those claims, the finding lacked an adequate basis in the record, according to the court. Moreover, the Board failed to adequately explain its reasoning. The obviousness finding as to those claims was therefore vacated.
Claims 43 and 71. Claims 43 and 71 each recited a "portable first computing device" with an "electronic display" that was configured to function as a virtual reality display, and which included an electronic display that was configured to display data related to physical activity. As to those claims, the court found that the PTAB had made the requisite factual findings—with an adequate evidentiary basis—and had satisfactorily explained its determination.
Conclusion. In light of those findings, the court vacated the Board’s obviousness finding as to Claims 46, 57–62, 65, 74, and 98–100, and it remanded those claims for further proceedings. The Board’s findings with respect to Claims 43, 71, and 86 were affirmed.
Dissent. Circuit Judge Kathleen O’Malley wrote separately to opine that remand was an inappropriate remedy. In examination appeals in which the PTO fails to carry its burden of establishing unpatentability, the appropriate remedy is to "allow any claims for which the PTAB has not carried its burden of proof," Judge O’Malley wrote. For that reason, the judge would have reversed, rather than vacated, the erroneous findings of the Board.
The case is No. 2016-1475.
Attorneys: Larry R. Laycock, John T. Gadd, Mark W. Ford, and Robert Parrish Freeman Jr. (Maschoff, Brennan, Laycock, Gilmore, Israelsen & Wright) for Icon Health and Fitness, Inc. Glenn E. Forbis, Matthew L. Cutler, and Douglas Alan Robinson (Harness, Dickey & Pierce, PLC) for Strava Inc. and UA Connected Fitness, Inc.
Companies: Icon Health and Fitness, Inc.; Strava, Inc.; UA Connected Fitness, Inc.
MainStory: TopStory Patent FedCirNews
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