CAFC affirms reliance on expert declaration, remands inter partes reexam over O’Malley dissent

Icon Health & Fitness, Inc. v. Strava Inc., (Fed. Cir. Feb. 27, 2017) (Before O’Malley, Reyna, and Wallach, J.) (Opinion for the court, Wallach, J.) (Concurring-in-part and dissenting-in-part opinion filed by O’Malley, J.)

Strava sought Inter Partes Reexamination of several claims of a patent owned by Icon. During reexamination, the Examiner rejected all pending claims as obvious. Icon appealed the Examiner’s findings and the Board affirmed. Icon appealed to the Court and challenged the Board’s reliance on Strava’s expert declarations as improper and its decision as lacking substantial evidence.

The Court concluded that the Board did not err in relying on Strava’s expert declarations. Icon argued that by citing large portions of Strava’s expert declarations, the Examiner adopted legal conclusions of obviousness made elsewhere in the Declaration. Icon pointed to several instances in which Strava’s expert stated that something “would have been obvious.” Therefore, according to Icon, the Examiner did not form his own legal conclusions.

As a threshold matter, the Court addressed whether Icon had waived these arguments by failing to raise them before the Board. The Court decided that certain factors, in this case, weighed against a waiver. These included proper resolution of the issues and that the arguments raised an issue of general impact that could affect the weight afforded to expert declarations.

The Court affirmed the Board’s adoption of the Examiner’s arguments relying on Strava’s expert declarations. The Court noted the high degree of discretion afforded to the Board to credit some portions of the declaration and discredit others. Moreover, there is no per se prohibition against relying on an expert’s declaration in support of factual findings solely because the declaration states that something “would have been obvious.” Reliance on such statements in a declaration is acceptable, so long as the declaration contains statements supporting the relevant factual findings.

Regarding obviousness, the Court found that the Board erred as to some but not all of the claims. The Board incorporated large portions of the Examiner’s factual findings by reference. This was within its discretion for most claims. But the Board and the Examiner failed to make factual findings regarding certain claims, instead adopting attorney argument. Therefore, the Board vacated in part, affirmed in part, and remanded the Board’s decision.

Judge O’Malley, concurring in part, and dissenting in part, challenged only the remand. She wrote that failure of the Board and PTO to establish unpatentability in examination appeals requires allowance of the claims for which the Board did not carry its burden of proof, not remand.

Reliance on expert declarations is not per se deficient because the declaration utilizes a legal turn-of-phrase, i.e. “It would have been obvious.” The declaration is sufficient, and reliance is not an error if the declaration incorporates factual determinations that support its legal conclusions.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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There are currently 1 Comment comments.

  1. Eric Berend March 6, 2017 12:17 am

    Judge O’Malley is correct. In reexamination, the statutory burden of proof is as to unpatentability lies with the USPTO; not with the inventor or patentee. That the CAFC and the SCOTUS continue to dance around this technically un-Constitutional deprivation of due process, reflects very poorly upon both Courts.

    Their responsibilities to patentee petitioners of standing are blithely abrogated; meanwhile, they enjoy inviting input from their favored amici curiae – to help them concoct justifications for abominable rulings such as this one.