Icon Health and Fitness, Inc. v. Strava, Inc. , 849 F.3d 1034 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
ICON HEALTH AND FITNESS, INC.,
Appellant
v.
STRAVA, INC., UA CONNECTED FITNESS, INC.,
Appellees
______________________
2016-1475
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/002,359.
______________________
Decided: February 27, 2017
______________________
LARRY R. LAYCOCK, Maschoff Brennan Laycock Gil-
more Israelsen & Wright, Salt Lake City, UT, argued for
appellant. Also represented by JOHN T. GADD; MARK W.
FORD, ROBERT PARRISH FREEMAN, JR., Park City, UT.
GLENN E. FORBIS, Harness, Dickey & Pierce, PLC,
Troy, MI, argued for appellees. Also represented by
MATTHEW L. CUTLER, DOUGLAS ALAN ROBINSON, St. Louis,
MO.
______________________
Before O’MALLEY, REYNA, and WALLACH, Circuit Judges.
2 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
Opinion for the court filed by Circuit Judge WALLACH.
Concurring-in-part and dissenting-in-part opinion filed by
Circuit Judge O’MALLEY.
WALLACH, Circuit Judge.
Appellees Strava, Inc. and UA Connected Fitness, Inc.
(together, “Strava”) sought inter partes reexamination of
several claims of U.S. Patent No. 7,789,800 (“the ’800
patent”). During the reexamination, certain claims were
cancelled, and others (claims 38–100) were added. An
examiner at the U.S. Patent and Trademark Office
(“USPTO”) found certain claims obvious over various prior
art references. Appellant Icon Health & Fitness, Inc.
(“Icon”) appealed the Examiner’s findings to the USPTO’s
Patent Trial and Appeal Board (“PTAB”). In its decision
on appeal, the PTAB affirmed the Examiner’s rejection of
all the pending claims as obvious. See Strava, Inc. v. Icon
Health & Fitness, Inc., No. 95/002,359, 2015 WL 5723014,
at *1 (P.T.A.B. Sept. 28, 2015).
Icon appeals the PTAB’s rejection of claims 43, 46,
57–62, 65, 71, 74, 86, and 98–100 (“the Asserted Claims”).
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A) (2012). We vacate-in-part, affirm-in-part,
and remand for additional proceedings consistent with
this opinion.
DISCUSSION
Icon presents two arguments on appeal. First, Icon
contends that “[t]he principal error affecting all aspects of
the reexamination proceedings is Strava’s use of an expert
to supply legal conclusions of obviousness” and the
PTAB’s reliance on those conclusions. Appellant’s Br. 10.
Second, Icon avers that the PTAB erred in affirming the
Examiner’s rejection of the Asserted Claims, either for
lack of substantial evidence or for legal error in the con-
clusion of obviousness. Id. at 17–35. After summarizing
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 3
our standard of review and the applicable legal standard,
we address these arguments in turn.
I. Standard of Review and Legal Standard
for Obviousness
“We review the PTAB’s factual findings for substan-
tial evidence and its legal conclusions de novo.” Redline
Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449
(Fed. Cir. 2015) (citation omitted). “Substantial evidence
is something less than the weight of the evidence but
more than a mere scintilla of evidence.” In re NuVasive,
Inc., 842 F.3d 1376, 1379–80 (Fed. Cir. 2016) (internal
quotation marks and citations omitted).
A patent claim is invalid as obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the [relevant]
art [(‘PHOSITA’)] . . . .” 35 U.S.C. § 103(a) (2006). 1 The
ultimate determination of obviousness is a question of
law, but that determination is based on underlying factu-
al findings. See In re Gartside, 203 F.3d 1305, 1316 (Fed.
Cir. 2000). The underlying factual findings include
(1) “the scope and content of the prior art,” (2) “differences
between the prior art and the claims at issue,” (3) “the
1 Congress amended § 103 when it enacted the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the application that led to the ’800 patent has never
contained a claim having an effective filing date on or
after March 16, 2013 (the effective date of the statutory
changes enacted in 2011), or a reference under 35 U.S.C.
§§ 120, 121, or 365(c) to any patent or application that
ever contained such a claim, the pre-AIA § 103 applies.
See id. § 3(n)(1), 125 Stat. at 293.
4 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
level of ordinary skill in the pertinent art,” and (4) the
presence of secondary considerations of nonobviousness
such “as commercial success, long felt but unsolved needs,
failure of others,” and unexpected results. Graham v.
John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966);
United States v. Adams, 383 U.S. 39, 50–52 (1966).
II. The PTAB Did Not Err by Relying Upon Strava’s
Expert’s Declarations
Icon avers that the PTAB erred because it adopted
Examiner findings tainted by legal defect. Specifically,
Icon contends that the Examiner improperly “affirm[ed]
legal conclusions” in the declarations of Strava’s expert,
Frank Koperda. Appellant’s Br. 12; see J.A. 1173–87
(“First Koperda Decl.”), 1559–77 (“Second Koperda
Decl.”). According to Icon, Mr. Koperda’s Declarations “go
well beyond supplying opinions regarding factual mat-
ters” and, “instead[,] venture further, improperly opining
as to the legal conclusion of obviousness.” Appellant’s
Br. 12; see id. at 15–16 (listing instances where Mr.
Koperda stated something “would have been obvious” or
some variant thereof). Because the Examiner cited to
large portions of Mr. Koperda’s Declarations, Strava
argues, Mr. Koperda’s legal conclusions “appear[] to have
supplanted” the Examiner’s analysis, id. at 16, mandating
reversal, id. at 17. Before we address these arguments on
the merits, we first must determine whether we may
consider them.
A. Waiver Is Not Appropriate
It is uncontested that Icon failed to raise before the
PTAB arguments regarding the Examiner’s purported
reliance on Mr. Koperda’s Declarations. Therefore, we
must determine whether Icon waived these arguments on
appeal.
While we “retain[] case-by-case discretion over wheth-
er to apply waiver,” Harris Corp. v. Ericsson Inc., 417
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 5
F.3d 1241, 1251 (Fed. Cir. 2005), “[i]t is the general
rule . . . that a federal appellate court does not consider an
issue not passed upon below,” Singleton v. Wulff, 428 U.S.
106, 120 (1976). However, “[u]nder certain circumstanc-
es, we may consider issues not previously raised . . . .”
Automated Merch. Sys., Inc. v. Lee, 782 F.3d 1376, 1379
(Fed. Cir. 2015). Some of the relevant considerations
include whether (1) “the issue involves a pure question of
law and refusal to consider it would result in a miscar-
riage of justice”; (2) “the proper resolution is beyond any
doubt”; (3) “the appellant had no opportunity to raise the
objection” below; (4) “the issue presents significant ques-
tions of general impact or of great public concern”; or
(5) “the interest of substantial justice is at stake.” Id.(citations omitted). We also may consider, inter alia,
whether the issue has been fully briefed, a party will be
prejudiced by consideration of the issue, or no purpose
will be served by remand. See id. at 1380.
Certain considerations weigh in favor of finding waiv-
er: whether Mr. Koperda’s Declarations contained legal
conclusions is not a pure question of law; Strava had the
opportunity to raise its objections to Mr. Koperda’s Decla-
rations below; and the interest of substantial justice is not
at stake in that neither party will be deprived a legal
right or evade judicial review. See id. at 1379. However,
other considerations weigh in favor of exercising our
discretion and deciding the issue: the proper resolution is
clear, and the arguments raise an issue of general impact
in that the issue potentially could affect the weight af-
forded to a large number of expert declarations containing
similar statements. Cf. Broad. Innovation, L.L.C. v.
Charter Commc’ns, Inc., 420 F.3d 1364, 1366 (Fed. Cir.
2005) (stating that an “issue presents significant ques-
tions of general impact” when it “potentially impacts a
large number of patents” (citations omitted)). Because
the issue has been fully briefed, the record is complete,
there will be no prejudice to any party, and no purpose is
6 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
served by remand, we will consider Icon’s arguments. See
Automated Merch., 782 F.3d at 1379–80 (exercising
discretion to review in a case involving similar circum-
stances).
B. The PTAB Was Permitted to Rely on Mr. Koperda’s
Declarations in Support of Its Factual Findings
Having found waiver inapplicable, we must answer
whether the PTAB (by virtue of its adoption of some of the
Examiner’s findings) erred because it relied upon certain
aspects of Mr. Koperda’s Declarations to support its
conclusion. Icon acknowledges that “[i]t is not improper
for an expert to supply . . . factual information or to opine
as to factual matters,” Appellant’s Br. 13, and Icon does
not dispute that Mr. Koperda was qualified to supply
factual information to the Examiner, Oral Argument
8:09–8:26, http://oralarguments.cafc.uscourts.gov/default.
aspx?fl=2016-1475.mp3. Instead, Icon argues that the
Examiner erred because he extensively cited to state-
ments in the First and Second Koperda Declarations, one
of which Strava submitted with its April 5, 2013 Com-
ments After Non-Final Office Action (“Strava’s April 2013
Comments”) (J.A. 1204–66) and the other with its No-
vember 6, 2013 Comments After Non-Final Action Closing
Prosecution (“Strava’s November 2013 Comments”) (J.A.
1524–57). According to Icon, the Examiner “did not form
his own legal conclusions of obviousness” but rather
“adopted the legal conclusions provided to him by . . . Mr.
Koperda.” Appellant’s Br. 17.
Icon’s arguments ignore the standard against which
we review PTAB determinations. “We review the PTAB’s
factual findings for substantial evidence and its legal
conclusions de novo.” Redline, 811 F.3d at 449 (citation
omitted). To the extent Icon challenges the PTAB’s
factual findings, as adopted from the Examiner, the PTAB
is permitted to weigh expert testimony and other record
evidence and, in so doing, rely on certain portions of an
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 7
expert’s declaration while disregarding others. See Ve-
lander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
(“[W]hat the [PTAB] consistently did was accord little
weight to broad conclusory statements that it determined
were unsupported by corroborating references. It is
within the discretion of the trier of fact to give each item
of evidence such weight as it feels appropriate.” (citation
omitted)); see also In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled
to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions
expressed in the declarations . . . .” (citations omitted)).
To the extent Icon makes a legal argument, there is
no per se prohibition against relying on an expert’s decla-
ration in support of factual findings underlying a legal
conclusion of obviousness solely because the declaration
states that something “would have been obvious.” Indeed,
we frequently have affirmed PTAB determinations on
obviousness that rely on expert declarations that include
such statements, so long as other aspects of the declara-
tions contain statements related to factual findings. See
Veritas Techs. LLC v. Veeam Software Corp., 835 F.3d
1406, 1413 (Fed. Cir. 2016) (affirming the PTAB’s conclu-
sion of obviousness that relied on, inter alia, an expert’s
statements that “it would have been obvious that” a prior
art reference discloses a limitation in the disputed patent
application (emphasis added) (internal quotation marks
and citation omitted)); MCM Portfolio LLC v. Hewlett-
Packard Co., 812 F.3d 1284, 1293 (Fed. Cir. 2015) (affirm-
ing the PTAB’s conclusion of obviousness that was based,
in part, upon an expert’s statement that “it would have
been obvious . . . to incorporate” a prior art reference’s
capabilities into another prior art reference (emphasis
added) (citation omitted)). To determine if an expert’s
statement is directed to factual findings or the legal
conclusion of obviousness, we look to the statement not in
isolation, but in the context of the whole declaration. Cf.
8 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
VirnetX Inc. v. Apple Inc., Nos. 2015-1934, -1935, 2016
WL 7174130, at *4 (Fed. Cir. Dec. 9, 2016) (“We will not
find legal error based upon an isolated statement stripped
from its context.”). Therefore, we will review the PTAB’s
rejection of the Asserted Claims in accordance with the
operative standard of review.
III. The PTAB Erred as to Some, But Not All, of the
Asserted Claims
Icon challenges the PTAB’s determination that the
Asserted Claims would have been obvious over various
prior art references. Of those references, Icon contests the
PTAB’s determination as to: (1) claims 57–62 and 65 over
U.S. Patent No. 7,689,437 (“Teller”), Appellant’s Br. 17–
20; (2) claim 86 over Teller, id. at 21–22; (3) claims 46 and
74 over U.S. Patent No. 6,198,394 (“Jacobsen”), id. at 22–
28; (4) claims 98–100 over U.S. Patent Nos. 6,013,007
(“Root”) and 6,585,622 (“Shum”), id. at 28–32; and
(5) claims 43 and 71 over U.S. Patent No. 6,066,075(“Poulton”), id. at 32–35. After a brief discussion of the
’800 patent, we address the Asserted Claims in turn,
evaluating whether the PTAB made factual findings with
the requisite evidentiary basis and adequately explained
its findings.
A. The ’800 Patent
Entitled “Methods and Systems for Controlling an
Exercise Apparatus Using a USB Compatible Portable
Remote Device,” the ’800 patent generally discloses “[a]
portable system [that] retrieves one or more exercise
programs from a remote communication system that
provides motivational content for a user exercising upon
an exercise mechanism.” ’800 patent, Abstract. The
Asserted Claims of the ’800 patent are divided into five
groups for the purposes of this appeal. We address Icon’s
arguments on a group-by-group basis.
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 9
B. Claims 57–62 and 65
Claims 57–62 and 65 each recite “a cradle that in-
cludes electrical contacts” and a “first computing device
[with] electrical contacts configured to mate with the
cradle electrical contacts.” J.A. 1740 (claim 57), 1742–43
(claim 58), 1745 (claim 59), 1748 (claim 60), 1750 (claim
61), 1753 (claim 62), 1760 (claim 65). Icon argues that the
PTAB’s rejection of claims 57–62 and 65 as obvious must
be reversed because the PTAB’s failure to address these
claims meant that the PTAB’s Decision on Appeal “cannot
be said to be one supported by substantial evidence.”
Appellant’s Br. 18. We agree that the PTAB failed to
make the requisite factual findings or provide the at-
tendant explanation and, therefore, vacate and remand
for additional factual findings and explanation.
1. Neither the PTAB nor the Examiner Made the
Requisite Factual Findings or Provided the
Attendant Explanation
To determine whether the PTAB made the necessary
factual findings with an adequate evidentiary basis, we
must determine whether the PTAB incorporated by
reference the Examiner’s factual findings and whether
those findings were adequate, as Strava alleges. Appel-
lees’ Br. 24. The PTAB rejected Icon’s arguments as to
claims 57–62 and 65 by asserting only that Icon “merely
restates previous arguments regarding contacts of the
cradle as discussed above.” Strava, 2015 WL 5723014, at
*11. But, as Strava admits, the PTAB had never actually
addressed those arguments above. Oral Argument,
14:26–14:55, http://oralarguments.cafc.uscourts.gov/defau
lt.aspx?fl=2016-1475.mp3. In fact, that one sentence is
the PTAB’s only reference to the “cradle,” “contacts,” or
“electrical” limitations recited in claims 57–62 and 65.
See generally Strava, 2015 WL 5723014. The PTAB’s
Decision on Appeal thus contains no substantive discus-
sion of the limitations at issue for claims 57–62 and 65.
10 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
The PTAB, however, also stated that, “[t]o any extent
we do not specifically address any . . . remaining argu-
ments, we agree with [Strava’s] rebuttal of such . . . as
well as the Examiner’s response to the same . . . .” Id. at
*9 (citing to the Examiner’s Right of Appeal Notice (J.A.
1641–56) and Strava’s PTAB Response Brief (J.A. 2591–
98)). According to Strava, this catch-all statement incor-
porated by reference the Examiner’s Right of Appeal
Notice, which “in turn incorporated by reference [Strava’s
November 2013] Comments . . . , which rely upon the
Teller reference and Mr. Koperda’s Declarations, which
constitute substantial evidence.” Appellee’s Br. 24. This
multi-layered incorporation by reference does not satisfy
the substantial evidence standard of review.
As an initial matter, the PTAB was authorized to in-
corporate the Examiner’s findings. “It is commonplace in
administrative law for a reviewing body within an agency
to adopt a fact-finding body’s findings. On judicial review,
the adopted material is treated as if it were part of the
reviewing body’s opinion.” In re Cree, Inc., 818 F.3d 694,
698 n.2 (Fed. Cir. 2016) (emphases added) (citations
omitted). The PTAB is no exception. See In re Brana, 51
F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the
PTAB’s findings, although it “did not expressly make any
independent factual determinations or legal conclusions,”
because it had “expressly adopted” the examiner’s find-
ings by stating that it “agree[d] with the examiner’s well
reasoned, well stated[,] and fully supported by citation”
findings (alterations modified) (internal quotation marks
and citation omitted)). Therefore, the PTAB was author-
ized to adopt the Examiner’s findings in the Right of
Appeal Notice.
Moreover, the PTAB identified the incorporated mate-
rial with sufficient particularity. “To incorporate material
by reference, the host document must identify with de-
tailed particularity what specific material it incorporates
and clearly indicate where that material is found in the
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 11
various documents.” Advanced Display Sys., Inc. v. Kent
State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (empha-
ses added). The PTAB identified with detailed particular-
ity what specific material it incorporated—i.e., Strava’s
PTAB Response Brief and the Examiner’s Right of Appeal
Notice. See Strava, 2015 WL 5723014, at *9. By identify-
ing page ranges for those documents, see id. (citing J.A.
1641–56, 2591–98), the PTAB clearly indicated where
that material is found, see Advanced Display, 212 F.3d at
1282.
Nevertheless, the PTAB’s incorporation by reference
of the Examiner’s factual findings as to claims 57–62 and
65 gives us considerable pause. The PTAB purported to
incorporate portions of the Examiner’s Right of Appeal
Notice that address these claims. Strava, 2015 WL
5723014, at *9. In the Right of Appeal Notice, however,
the Examiner only stated that it “agree[d] with” and
“incorporated by reference” Strava’s November 2013
Comments as to claims 57–62 and 65. J.A. 1643. Neither
the PTAB nor the Examiner made any factual findings;
instead, both purported to incorporate by reference argu-
ments drafted by Strava’s attorneys. See Strava, 2015
WL 5723014, at *9 (citing Strava’s PTAB Response Brief
(J.A. 2591–98) and Examiner’s Right of Appeal Notice
(J.A. 1641–56), the latter of which cites Strava’s Novem-
ber 2013 Comments (J.A. 1541–42)).
Attorney argument is not evidence. See, e.g., Gemtron
Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed.
Cir. 2009) (“[U]nsworn attorney argument . . . is not
evidence and cannot rebut . . . other admitted evi-
dence . . . .”); see also Manual of Patent Examining Proce-
dure § 2145 (9th ed. Nov. 2015) (“Attorney argument is
not evidence unless it is an admission, in which case, an
examiner may use the admission in making a rejection.”).
Neither the PTAB’s adoption of Strava’s PTAB Response
Brief nor the Examiner’s adoption of Strava’s November
2013 Comments transform Strava’s attorney argument
12 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
into factual findings or supply the requisite explanation
that must accompany such findings. As we recently
explained,
[t]wo distinct yet related principles are relevant to
our review. First, the PTAB must make the nec-
essary findings and have an adequate evidentiary
basis for its findings. . . . Second, the PTAB must
examine the relevant data and articulate a satis-
factory explanation for its action including a ra-
tional connection between the facts found and the
choice made. . . .
This explanation enables the court to exercise its
duty to review the PTAB’s decision to assess
whether those decisions are arbitrary, capricious,
an abuse of discretion, or . . . unsupported by sub-
stantial evidence . . . .
NuVasive, 842 F.3d at 1382 (internal quotation marks
and citations omitted). Because the PTAB failed to com-
port with what these principles demand, the PTAB’s
rejection of these claims must be vacated and the case
remanded for additional PTAB findings and explanation.
See, e.g., In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir.
2017) (explaining that the court vacates and remands
when additional fact finding and explanation is warrant-
ed).
C. Claim 86
Claim 86 recites “a cradle that includes an [infrared
(‘IR’)] interface” and a “first computing device [with an] IR
wireless interface . . . configured to send the physical
activity related information to the interface module via
the IR interface.” J.A. 1787. Icon’s claim 86 arguments
are similar to those that it raises as to claims 57–62 and
65; that is, Icon avers that the PTAB “failed to substan-
tively address [the elements in] this limitation” and the
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 13
“conclusion that claim 86 is obvious must therefore be
reversed.” Appellant’s Br. 21, 22. We disagree.
1. The PTAB Made the Requisite Factual Findings with
an Adequate Evidentiary Basis
The PTAB stated that, “[r]egarding claim 86, [Icon]
merely restates arguments already addressed previously.”
Strava, 2015 WL 5723014, at *11. But, once again, the
PTAB never actually addressed those arguments above,
as Strava admits. Oral Argument, 14:26–14:55,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-1475.mp3. Indeed, the PTAB never discussed “IR,”
“contacts,” or “cradle” as recited in claim 86. See generally
Strava, 2015 WL 5723014. The PTAB’s treatment of
claim 86, however, differs from its treatment of claims
57–62 and 65 in one key respect: unlike claims 57–62 and
65, the Examiner made his own factual findings as to
claim 86. See J.A. 1652–53.
As explained above, the PTAB incorporated sections of
the Examiner’s Right of Appeal Notice. See Strava, 2015
WL 5723014, at *9. This includes a section where the
Examiner found that “Root teaches the first computing
device [that] . . . includes an IR interface” and that “Teller
teaches [that] the uploading of data from [a] sensor de-
vice . . . can ‘be accomplished by using a cradle . . . that is
electronically coupled to [a] personal computer . . . into
which [the] sensor device . . . can be inserted.’” J.A. 1652
(quoting Teller col. 8 ll. 38–41). In addition, the Examiner
found that “USB ports were well known at the time since
Teller teaches their existence” and, thus, could be used to
“electronically couple[]” the cradle to the computer device.
J.A. 1652 (citing Teller col. 8 l. 36).
The Examiner’s factual findings have an adequate ev-
identiary basis. Root discloses a “personal performance
monitor and feedback device,” Root col. 4 l. 17, and an
“[IR]-type port,” id. col. 6 l. 2; see J.A. 1703 (Icon acknowl-
edging that Root discloses a personal performance moni-
14 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
tor and feedback device that “appear[s] to have [IR]
capabilities”). Teller’s specification recites the use of a
cradle to establish a physical connection for uploading the
sensor device’s data to a personal computer. See Teller
col. 8 ll. 37–41 (teaching the use of a USB or a “cra-
dle . . . that is electronically coupled to a personal com-
puter . . . into which [a] sensor device . . . can be inserted,
as is common in many commercially available digital
assistants”); see also J.A. 1182 (First Koperda Declaration
stating that “[s]uch a device would necessarily include
electrical contacts to mate electrical components”). More-
over, Teller teaches that an IR connection can be substi-
tuted for the physical connection. See Teller col. 8 ll. 44–
47 (explaining that “[t]he data collected by [a] sensor
device . . . may be uploaded by first transferring the data
to [a] personal computer . . . by [IR] . . . transmission”).
Substantial evidence thus supports the Examiner’s find-
ing that Root and Teller teach “a cradle that includes an
IR interface” as recited in claim 86.
2. The PTAB Satisfactorily Explained Its Determination
Because the PTAB incorporated by reference the Ex-
aminer’s factual findings, we now consider whether the
PTAB adequately explained its reasoning. As with the
factual findings, the PTAB adopted the Examiner’s expla-
nation. Strava, 2015 WL 5723014, at *9. The Examiner
made factual findings as to the scope and content of
known elements of Root and Teller, and then explained
that “it would have been obvious to modify Root to place
the first computer device . . . in a cradle as taught by
Teller to thereby transfer information using an IR inter-
face between the first computer device . . . and the cradle.”
J.A. 1652–53.
Undoubtedly, it would be preferable for the PTAB to
provide its own reasoned explanation. Nonetheless, we
can discern that the Examiner—and, thus, the PTAB—
considered claim 86’s disclosure of “a cradle that includes
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 15
an [IR] interface,” J.A. 1787, to be the mere “combination
of familiar elements”: Root’s device and Teller’s cradle
and IR connection, KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007). This is sufficient, if minimally, to explain
the connection between the Examiner’s factual findings
and legal conclusion.
D. Claims 46 and 74
Claims 46 and 74 each recite “an audio input device
[that] includ[es] a microphone configured to gather audio
inputs from the user using a voice activated controller”
(“the voice activated controller limitation”) and “a radio
interface configured” to send and receive audio signals
(“the two-way audio radio limitation”). J.A. 1723 (claim
46); see J.A. 1770 (claim 74) (similar). Icon argues that
the PTAB erred in affirming the Examiner’s rejection for
obviousness of these two limitations in claims 46 and 74.
Appellant’s Br. 22–28. Because the PTAB failed to make
the requisite factual findings or provide the attendant
explanation, we vacate and remand for additional pro-
ceedings. See Van Os, 844 F.3d at 1362.
1. Neither the PTAB nor the Examiner Made the
Requisite Factual Findings or Provided
the Attendant Explanation
When addressing claims 46 and 74 generally, the
PTAB stated that it was “not persuaded” by Icon’s argu-
ments as to these claims because Icon had not “rebutt[ed]
the substance” of the First Koperda Declaration and that
“the Examiner’s rejection [was] sufficiently supported by
the record.” Strava, 2015 WL 5723014, at *11. The PTAB
made only vague references to “the microphone . . . of
Jacobsen” and the “two-way audio radio limitation” when
summarizing Icon’s arguments. Id. (internal quotation
marks omitted). At no point did the PTAB make explicit
findings as to these elements or specify what aspects of
Jacobsen and the First Koperda Declaration it found
persuasive. See id.16 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
As with claims 57–62 and 65, the PTAB never made
factual findings with a basis in the record or provided the
requisite explanation to support its findings for claims 46
and 74. It merely summarized Icon’s arguments and
stated that the “Examiner’s rejection [was] sufficiently
supported by the record.” Id. However, the PTAB cannot
satisfactorily make a factual finding and explain itself by
merely “summariz[ing] and reject[ing] arguments without
explaining why [it] . . . accepts the prevailing argument.”
NuVasive, 842 F.3d at 1383.
To the extent that the PTAB adopted the Examiner’s
determination as to claims 46 and 74, we find it similarly
inadequate. In contrast to its discussion of claim 86, the
Examiner never made a factual finding based on record
evidence and failed to explain its reasoning for rendering
claims 46 and 74 unpatentable. Instead, the Examiner
stated only that he “agree[d] with” and “incorporated by
reference” Strava’s November 2013 Comments regarding
the voice activated controller limitation in claims 46 and
74. J.A. 1643. Attorney argument is not evidence or
explanation in support of a conclusion. See, e.g., Gemtron,
572 F.3d at 1380; see also NuVasive, 842 F.3d at 1383
(providing that the fact finder must explain it why accepts
the prevailing argument).
E. Claims 98–100
Claims 98–100 each recite “an accelerometer” that is
“integrally included in a portable first computing device.”
J.A. 1796–97 (claims 98–100). Icon argues that the PTAB
erred in affirming the Examiner’s rejection of claims 98–
100 for obviousness over Root and Shum because Icon
showed that “the proposed modification to Root of remov-
ing the GPS and substituting Shum’s accelerometer would
change Root’s ‘principle of operation.’” Appellant’s Br. 29
(quoting In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012)). According to Icon, “this modification would render
the prior art GPS device . . . unsatisfactory for its intend-
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 17
ed purpose because, unlike a GPS receiver . . . , an accel-
erometer device is simply not capable of ‘continuously and
accurately determin[ing] the position of an outdoor ath-
lete anywhere in the world.’” Id. at 31–32 (alterations in
original) (quoting Root col. 2 ll. 5–7). Although the PTAB
made a factual finding, this finding did not have an
adequate basis in the record, and the PTAB did not ade-
quately explain its reasoning. Thus, we vacate and re-
mand for additional PTAB findings and explanation. See
Van Os, 844 F.3d at 1362.
1. The PTAB Did Not Provide an Adequate Evidentiary
Basis for its Finding
The PTAB “sustain[ed] the Examiner’s rejection” of
claims 98–100. Strava, 2015 WL 5723014, at *12. Icon
had argued that substituting Shum’s accelerometer for
Root’s GPS would change Root’s principle of operation.
J.A. 1705. The PTAB determined that Icon’s argument
“ignor[ed] other rationales set forth by the Examiner
and/or [Strava],” an apparent adoption of Strava’s argu-
ment that the references also teach combining Shum’s
accelerometer and Root’s GPS in Root’s system. Strava,
2015 WL 5723014, at *12. Thus, “regardless of the mere
substitution rationale,” the PTAB concluded that “the
rejection may properly be supported by other rationales,
which [Icon] d[id] not challenge.” Id.While the PTAB found that Shum’s accelerometer and
Root’s GPS could be combined in Root’s system, it did not
provide any evidentiary basis for this finding. See id.Icon’s failure to produce evidence that the references
could not be combined does not relieve the PTAB of its
obligation to provide an “adequate evidentiary basis for
its findings.” NuVasive, 842 F.3d at 1382 (internal quota-
tion marks and citation omitted).
To the extent that the PTAB adopted the Examiner’s
finding as to claims 98–100, we find them similarly inad-
equate because the Examiner’s Right of Appeal Notice
18 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
lacks any evidentiary basis for its finding. Once again,
the Examiner stated only that it “agree[d] with” and
“incorporated by reference” Strava’s November 2013
Comments, J.A. 1654, but attorney argument is not
evidence, see, e.g., Gemtron, 572 F.3d at 1380.
2. The PTAB Did Not Satisfactorily Explain Its Reasons
for Its Determination
Even if we determined that the PTAB provided an ad-
equate evidentiary basis for its finding that it would have
been reasonable for a PHOSITA to combine Shum’s
accelerometer and Root’s GPS, it did not satisfactorily
explain its reasoning. The PTAB’s sole reason for its
finding was that Icon “d[id] not challenge” the combina-
tion rationale. Strava, 2015 WL 5723014, at *12. This is
insufficient. To be sure, the PTAB is permitted to credit a
party’s argument as part of its reasoned explanation of its
factual findings; however, the PTAB still must “explain[]
why [it] accepts the prevailing argument.” NuVasive, 842
F.3d at 1383 (citation omitted). The PTAB failed to do so
here.
To the extent that the PTAB adopted the Examiner’s
rationale, that rationale cannot salvage the PTAB’s
deficient explanation. Once again, the Examiner stated
only that it “agree[d] with” and “incorporated by refer-
ence” Strava’s November 2013 Comments. J.A. 1654.
That is no explanation at all. See NuVasive, 842 F.3d at
1383 (providing that the fact finder must explain it why
accepts the prevailing argument).
F. Claims 43 and 71
Finally, claims 43 and 71 each recite “a portable first
computing device” that includes an “electronic display
[that] is configured to function as a virtual reality [(‘VR’)]
display” and that includes an “electronic display [that]
is . . . configured to display . . . data” related to physical
activity. J.A. 1715–18 (claim 43), 1766–67 (claim 71).
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 19
Icon contests whether Poulton discloses the VR display in
these claims. See Appellant’s Br. 33. Icon contends that
the PTAB erred in rejecting claims 43 and 71 because
Root is “portable” and “teaches away from incorporating
the external and massive [cathode ray tube (‘CRT’)] array
of Poulton.” Id. at 35. Icon adds that the PTAB “based its
affirmance in part on Strava’s misleading argument that
written description support was an open issue,” even
though the Examiner withdrew the written description
rejections. Id. at 33. We disagree.
1. The PTAB Made the Requisite Factual Findings with
an Adequate Evidentiary Basis
The PTAB found that it would have been obvious to
modify Root to use the VR display disclosed by Poulton
because “the ’800 patent does not describe a [VR] display
that is part of a portable device.” Strava, 2015 WL
5723014, at *10 (citation omitted). Before the PTAB, Icon
argued that Poulton “does not teach a portable [VR]
display” or “a single discrete monitor” and, thus, teaches
away from the portability disclosed by Root. Id.; see
J.A. 1695–97.
In rejecting these arguments, the PTAB noted that
Icon had “selectively cite[d] the [s]pecification to assert
that the display . . . must be portable” and that “‘a [VR]
display’ does not necessarily require a single discrete
monitor . . . , but may encompass a mosaic of monitors
that acts as a single [VR] display.” Strava, 2015 WL
5723014, at *10. However, “when looking at the disclo-
sure as a whole, . . . the ’800 patent discloses that the
‘display . . . can be remote from [a] control device . . .’ and
that this remote ‘display . . . can be a [VR] display, [CRT
display], and the like.’” Id. (quoting ’800 patent col. 51
ll. 57–60). On this basis, the PTAB found that the ’800
patent “does not support an integral VR display,” i.e., a
display imbedded in a portable system, but rather sup-
ports “remote displays only,” i.e., displays that are not
20 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
imbedded in the portable system and are located on a
treadmill, for example. Id.In addition, the PTAB found that the ’800 patent
“equates VR displays to CRT displays” in a similar man-
ner to Poulton, such that the ’800 patent and Poulton
teach similar levels of portability. Id. The record sup-
ports the PTAB’s finding. Compare ’800 patent col. 51
ll. 58–60 (stating that the “display . . . can be a [VR]
display, [CRT display], and the like”), with Poulton col. 16
ll. 9–11 (explaining that “the display . . . may be a flat
panel display, a [CRT display], or other device for display-
ing an image”). Substantial evidence thus supports the
PTAB’s findings, which are grounded in the teachings of
the ’800 patent and Poulton.
2. The PTAB Satisfactorily Explained Its Determination
Because the PTAB made factual findings with an ad-
equate evidentiary basis, we turn to whether the PTAB
satisfactorily explained its findings. The PTAB explained
that the ’800 patent was not limited to portable devices
and also includes remote displays. Strava, 2015 WL
5723014, at *10. In addition, the PTAB explained that
the ’800 patent and Poulton disclose similar levels of
portability for VR displays, such that Poulton does not
teach away from the portability of Root. Id. On this
basis, we can “reasonably discern” that the PTAB deter-
mined that it would have been obvious to a PHOSITA to
configure Root’s electronic display to include VR, as
taught by Poulton, to create the electronic display that is
configured to function as a VR display recited in claims 43
and 71. NuVasive, 842 F.3d at 1385 (internal quotation
marks and citations omitted).
Icon attempts to undermine the PTAB’s explanation
for its findings by presenting two arguments, neither of
which is persuasive. First, Icon argues anew that Root
teaches away from incorporating one or more CRT dis-
plays like that of Poulton into the ’800 patent. Appel-
ICON HEALTH & FITNESS, INC. v. STRAVA, INC. 21
lant’s Br. 33–35. Teaching away raises a question of fact
reviewed for substantial evidence, and “[a] reference
teaches away when it suggests that the line of develop-
ment flowing from the reference’s disclosure is unlikely to
be productive of the result sought by the applicant.”
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354
(Fed. Cir. 2012) (internal quotation marks and citation
omitted). While Icon argues that a CRT display could not
be incorporated into Root’s portable system, it does not
address whether the ’800 patent teaches a remote display.
It also does not present any evidence supporting its
assertions that the non-portable system in Poulton could
not inform a PHOSITA about which display to incorporate
into a portable system like Root or the ’800 patent. Icon
has failed to undermine the PTAB’s explanation as to
teaching away and the combinability of Poulton and Root.
See, e.g., Jones v. Dep’t of Health & Human Servs., 834
F.3d 1361, 1369 (Fed. Cir. 2016) (“Unsubstantiated asser-
tions do not equate to evidence.” (internal quotation
marks, brackets, and citation omitted)).
Second, Icon argues that the PTAB’s explanation of its
findings is deficient because the PTAB improperly incor-
porated written description arguments. Appellant’s
Br. 32–33. Only one statement in the PTAB’s analysis
could be construed as addressing written description:
“[A]s [Strava] point[s] out, the ’800 patent does not de-
scribe a [VR] display that is part of a portable device.”
Strava, 2015 WL 5723014, at *10 (citation omitted).
However, Icon reads the PTAB’s statement out of context.
This statement was not directed to the parties’ previously-
addressed written description arguments; instead, it was
directed to the PTAB’s finding that the ’800 patent
equates VR displays to CRT displays, see id., a conclusion
supported by substantial evidence, see ’800 patent col. 51
ll. 57–60 (explaining that the “display . . . can be remote
from [a] control device” and “can be a [VR] display, [CRT
display], and the like”). An isolated statement stripped
22 ICON HEALTH & FITNESS, INC. v. STRAVA, INC.
from its context is not proof-positive of a PTAB error. See
VirnetX, 2016 WL 7174130, at *4.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We vacate the Decision on
Appeal as to claims 46, 57–62, 65, 74, and 98–100 and
remand for further proceedings consistent with this
opinion. We affirm the Decision on Appeal as to claims
43, 71, and 86.
VACATED-IN-PART, AFFIRMED-IN-PART, AND
REMANDED
COSTS
Each party shall bear its own costs.
United States Court of Appeals
for the Federal Circuit
______________________
ICON HEALTH AND FITNESS, INC.,
Appellant
v.
STRAVA, INC., UA CONNECTED FITNESS, INC.,
Appellees
______________________
2016-1475
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/002,359.
______________________
O’MALLEY, Circuit Judge, concurring in part, dissenting
in part.
I concur with the majority’s merits discussion in this
opinion. I agree that the PTAB properly disallowed
claims 43, 71, and 86 of the ’800 patent. I also agree that
the Board’s disallowance of claims 46, 57–62, 65, 74, and
98–100 is not supported by substantial evidence. I write
separately because I believe that “remand is not the
appropriate remedy in examination appeals in which the
PTO has not carried its burden of establishing unpatent-
ability.” In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir.
2017) (Newman, J., concurring in part, dissenting in
part). The PTO and PTAB bear the burden to establish
unpatentability in examination appeals, and I agree with
the majority that, in large measure, they failed to do so
2 ICON HEALTH AND FITNESS, INC. v. STRAVA, INC.
here. 35 U.S.C. § 102(a) (“A person shall be entitled to a
patent unless— . . .”). The appropriate remedy in this
situation is to allow any claims for which the PTAB has
not carried its burden of proof. Accordingly, rather than
simply vacate the PTAB’s findings on claims 46, 57–62,
65, 74, and 98–100, I would reverse those findings. From
the majority’s conclusion otherwise, I respectfully dissent.