Docket No. 2016-1475
NEWMAN, BRYSON, MOORE
February 28, 2017
Brief Summary: Certain findings of obviousness vacated due to lack of explanation/support by the Examiner and the Board.
Summary: Icon appealed Board decision following inter partes reexamination of Icon’s US 7,789,800 relating to “[a] portable system [that] retrieves one or more exercise programs from a remote communication system that provides motivational content” to an exercise device user concluding obviousness. Icon argued Strava was improperly allowed to rely “on an expert to supply legal conclusions of obviousness” and that the conclusion of obviousness lacked substantial evidence or was legal error. The FC panel explained it reviews the Board’s underlying “factual findings” (the four “Graham factors” (US 1966) “for substantial evidence and its legal conclusions de novo” (Redline Detection, FC 2015). It first found Icon had not waived its right to argue the expert declaration were improper because, e.g., “the issue has been fully briefed, the record is complete, there will be no prejudice to any party,  no purpose is served by remand” and “the arguments raise an issue of general impact in that the issue could affect the weight afforded a large number of expert declarations containing similar statements” (Cf. Broad Innovation, FC 2005). Icon argued “the Examiner ‘did not form his own legal conclusions of obviousness’ but rather ‘adopted the legal conclusions provided to him by” the expert. The FC panel explained that the PTAB “is permitted to weigh expert testimony and, in doing so, rely on certain portions…while disregarding others” (Velander, FC 2003) and “give each item of evidence such weight as it feels appropriate” (In re Am. Acad. Sci., FC 2004). Further, it explained that “there is no per se rule against relying on an expert’s declaration…solely because [it] states something ‘would have been obvious” (Veritas, FC 2016; MCM, FC 2015 (“[W]e look to the statement not in isolation, but in the context of the whole declaration.”)) Regarding claims 57-62 and 65, the FC panel found that the Board did not “make the necessary factual findings with an adequate evidentiary basis”, although it “was authorized to incorporate the Examiner’s findings” (In re Cree, FC 2016 (“the adopted material is treated as if it were part of the reviewing body’s opinion”); In re Brana, FC 1995) and did so “with sufficient particularity” (Advanced Display, FC 2000). The error, however, was that the Board and the Examiner did not make any factual findings on its own and only “incorporated by reference arguments drafted by Strava’s attorneys” which “is not evidence” (Gemtron, FC 2009; NuVasive, FC 2016). It also found that neither Examiner nor Board “provided the requisite explanation to supports its findings for claims 46 and 74” (“the PTAB cannot satisfactorily made a factual finding and explain itself by merely ‘summariz[ing] and reject[ing] arguments without explaining why [it]…accepts the prevailing argument” (NuVasive, FC 2016). Similar reasoning supported its finding regarding claim 96. The decision regarding these claims was therefore vacated. Regarding claim 86, the FC panel found the “Examiner’s factual findings [to] have adequate evidentiary basis” and the Board’s incorporation of those findings into its opinion “is sufficient, if minimally” to support its conclusion of obviousness. It also found the PTO properly supported its decision that claims 43 and 71 would have been obvious, and rejected Icon’s teaching away arguments as well as those that the PTO improperly relied on written description arguments.