from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 95/002, 359.
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.
E. Forbis, Harness, Dickey & Pierce, PLC, Troy, MI,
argued for appellees. Also represented by Matthew L. Cutler,
Douglas Alan Robinson, St. Louis, MO.
O'Malley, Reyna, and Wallach, Circuit Judges.
Wallach Circuit Judge
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).
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.
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
conclusion of obviousness. Id. at 17-35. After
summarizing our standard of review and the applicable legal
standard, we address these arguments in turn.
Standard of Review and Legal Standard for Obviousness
review the PTAB's factual findings for substantial
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).
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). The ultimate determination of obviousness
is a question of law, but that determination is based on
underlying factual 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 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).
PTAB Did Not Err by Relying Upon Strava's Expert's
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 matters" 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.
Waiver Is Not Appropriate
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.
we "retain case-by-case discretion over whether to
apply waiver, " Harris Corp. v. Ericsson Inc.,
417 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 circumstances, 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 miscarriage 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 questions 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.
considerations weigh in favor of finding waiver: 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 Declarations 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 afforded 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 questions 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 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 circumstances).
PTAB Was Permitted to Rely on Mr. Koperda's Declarations
in Support of Its Factual Findings
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,
aspx?fl=2016-1475.mp3. Instead, Icon argues that the Examiner
erred because he extensively cited to statements in the First
and Second Koperda Declarations, one of which Strava
submitted with its April 5, 2013 Comments After Non-Final
Office Action ("Strava's April 2013 Comments")
(J.A. 1204-66) and the other with its November 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.
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 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 . . . ."
extent Icon makes a legal argument, there is no per se
prohibition against relying on an expert's declaration 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 declarations
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
conclusion 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) (affirming 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. 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.
The PTAB Erred as to Some, But Not All, of the Asserted
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