Icon Health and Fitness, Inc. v. Strava, Inc.
849 F.3d 1034
| Fed. Cir. | 2017Background
- Strava sought inter partes reexamination of claims in U.S. Patent No. 7,789,800; several claims were canceled and claims 38–100 were added. An examiner rejected the pending claims as obvious; the PTAB affirmed.
- Icon Health & Fitness (Icon) appealed the PTAB’s affirmance of obviousness for specific Asserted Claims (43, 46, 57–62, 65, 71, 74, 86, 98–100).
- Strava submitted expert declarations (Frank Koperda) during prosecution; Icon argued those declarations contained impermissible legal conclusions on obviousness and that the PTAB improperly relied on them.
- The Federal Circuit reviewed the PTAB’s factual findings for substantial evidence and legal conclusions de novo under Graham/KSR standards for obviousness.
- The court considered whether Icon waived its challenge to the PTAB’s reliance on the expert, whether the PTAB properly incorporated examiner findings by reference, and whether the PTAB provided adequate factual findings and explanations for each challenged claim group.
Issues
| Issue | Plaintiff's Argument (Icon) | Defendant's Argument (Strava/PTAB) | Held |
|---|---|---|---|
| Whether PTAB erred by relying on Strava’s expert declarations that purportedly contain legal conclusions of obviousness | Koperda’s declarations opined that certain combinations “would have been obvious”; reliance on those legal conclusions tainted the record | Expert testimony may supply factual matters; PTAB can rely on declarations so long as factual bases exist and conclusions are not the sole basis | Court refused to find per se error; PTAB may rely on expert declarations if factual support exists and statements are considered in full context |
| Whether Icon waived its challenge to reliance on expert legal conclusions by not raising it before the PTAB | Icon did not raise the issue below but urged the Court to consider it on appeal | Strava urged waiver, but Court may exercise discretion to hear issues of general impact or when record is complete | Court exercised discretion to consider the argument (no waiver) because the issue was fully briefed and of general impact |
| Adequacy of PTAB’s factual findings/explanation for claims 57–62, 65; 46, 74; 98–100 (combination and limitation-specific issues) | PTAB failed to make independent findings and merely incorporated attorney arguments and examiner statements that themselves incorporated counsel’s briefs; attorney argument is not evidence | Strava: PTAB properly incorporated examiner’s findings and incorporated the record, including expert evidence (via layered references) | For claims 57–62, 65; 46, 74; and 98–100 the court vacated and remanded because the PTAB’s adopted findings lacked adequate evidentiary basis or explanation; remand required for further factfinding |
| Sufficiency of PTAB’s findings as to claims 43, 71, 86 (Poulton/Root/ Tellers issues, VR display and IR/cradle limitations) | Icon argued Poulton does not teach a portable VR display (teaches away); Root teaches portability so Poulton’s CRT/large displays are not combinable | PTAB found the ’800 patent disclosed remote/VR/CRT equivalence and that Root and Poulton are combinable; Examiner made supporting findings for claim 86 (Root + Teller + IR) | Affirmed as to claims 43 and 71 (Poulton combinable with Root) and claim 86 (Root + Teller support IR cradle); these findings were supported by substantial evidence and adequately explained |
Key Cases Cited
- Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir. 2015) (standard: PTAB factual findings reviewed for substantial evidence; legal conclusions de novo)
- In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) (agency must articulate satisfactory explanation and link facts to legal conclusion)
- Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (U.S. 1966) (Graham factors for obviousness)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (obviousness: combination of familiar elements may be obvious)
- Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371 (Fed. Cir. 2009) (unsworn attorney argument is not evidence)
- In re Brana, 51 F.3d 1560 (Fed. Cir. 1995) (PTAB may adopt examiner findings by reference if properly done)
- In re Cree, Inc., 818 F.3d 694 (Fed. Cir. 2016) (reviewing body may adopt fact-finding body’s findings; adopted material treated as part of the opinion)
- In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017) (vacatur and remand appropriate when PTO fails to meet its burden and further factfinding/explanation is warranted)