Icon Health & Fitness, Inc. v. Polar Electro Oy (Fed. Cir. 2016); Icon Health & Fitness, Inc. v. Garmin Int'l., Inc. (Fed. Cir. 2016)

By Kevin E. Noonan --

In parallel, nonprecedential decisions regarding litigation over the same patent, the Federal Circuit affirmed a District Court decision that the claims were invalid for indefiniteness under 35 U.S.C. § 112(b).  This decision, expressly applying the Supreme Court's revision to how courts apply the indefiniteness test in Nautilus Inc. v. Biosig Instruments, Inc. illustrates how district courts can now address indefiniteness issues and the effects on the standard of review that these efforts can have.

The patent-in-suit, U.S. Patent No. 6,921,351, claims an exercise system that can act as a "virtual coach" via a computer linkup between an individual user and a remote server.  Claims 1 and 5 are representative:

1.  An exercise system comprising:
    a local system including at least one exercise apparatus and at least one associated local server, said at least one local server monitoring the operation of said at least one exercise apparatus, said exercise apparatus and said local server having an in-band communication using a bid-directional [sic] wireless protocol;
    an out-of-band communication with a user of said at least one exercise apparatus, wherein said out-of-band communication has a relationship to said in-band communication;
    a remote server; and
    wherein said local server and said remote serve include communication interfaces which permits communication over a packet network connection that at least part-time couples said local server to said remote server for data communication between said local server and said remote server, such that said remote system may receive local system data from said local server concerning said operation of said exercise apparatus, and such that said local system may receive remote server data from said remote server providing feedback concerning said operation of said exercise apparatus.

5.  An exercise system comprising:
    at least one exercise apparatus having an in-band bi-directional wireless communication device;
    an out-of-band communication device capable communication with a user of said at least one apparatus that has a relationship to said in-band communication;
    at least one associated local server having a bidirectional wireless communication device such that said exercise apparatus and said local server may communicate with each other via a wireless connection; and
    at least one remote server in communication with said local server via, at least in part, an Internet connection, said remote server at least temporarily storing information concerning exercise sessions performed on said exercise apparatus.

(The disputed claim terms are italicized in the claims above.)  The claimed invention was illustrated in two Figures included in the Federal Circuit's decision:

Figure 1

 

The opinion acknowledges that Figure 1 does not illustrate any structure directly corresponding to any of the disputed terms, while Figure 14 sets out at representations, albeit incomplete in the Court's opinion, of the terms "in-band communication" and "out-of-band" communication.  Also missing from the specification was any disclosure relating to the "relationship" between in-band and out-of-band communications as recited in the claims.

Important to the Court's decision was the portion of the proceedings before the District Court, wherein the Court required additional briefing and for each party to submit expert testimony regarding the disputed terms.  Because the indefiniteness issue was presented in the context of construing the claims in a Markman hearing, such expert testimony constituted extrinsic evidence and, hence, Icon as appellant was required to show clear error to prevail on appeal under Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 842 (2015).  This it could not do.

The Federal Circuit affirmed the District Court's determination that the claims were indefinite, in an opinion by Judge O'Malley joined by Judges Newman and Moore.  Applying the Nautilus indefiniteness standard under the clear error review mandated by Teva, the panel found that Icon had not shown clear error by the District Court in view of the competing opinions provided by each party's expert.  Icon's argument was simple: there existed in-band communication and out-of-band communication that were different, and "the fact that there is a difference is alone sufficient to render the claims definite and capable of construction."  Polar argued that the specification failed to disclose any relationship between in-band and out-of-band communications: "there is no reference provided in the specification to teach a person of ordinary skill what constitutes an in-band communication versus an out-of-band communication (other than the fact, and without such disclosure that they are different) or how the two are related." These are relative terms, according to Polar, and in particular there was no way to distinguish an "in-band" communication from mere communication itself (since "any communication can be considered 'in-band' to itself").  Further:

One of ordinary skill in the art would understand that the words of the claims are supposed to have meaning, and "in-band communication" should be narrower (more limiting) than "communication".  But, unless the meaning can be elucidated from the specification or file history, there would be no way to draw this distinction, and thereby determine the metes and bounds of the claim (and the claims that depend from this claim) with reasonable certainty.

Even worse, according to Polar, is that the term "out-of-band communication" is "completely untethered" to an "in-band communication," which thus could be any communication, even one outside the claimed system itself.  Polar's expert proffered ten prior art patents and textbook references to support his position, which of course constituted additional extrinsic evidence.

The Federal Circuit noted that the District Court expressly relied on the evidence contained in these references in determining that the '351 patent claims were indefinite.  According to the opinion, "[t]his is precisely the type of extrinsic evidence upon which a district court may rely in analyzing the record before it when construing claim terms," and [t]he district court's findings on such evidence constitute findings of fact [that] we review [] for clear error," citing Teva.  Finding no clear error, nor any error in the District Court's legal conclusion of indefiniteness, the Federal Circuit affirmed.

The panel rejected both Icon's arguments that the District Court improperly considered extrinsic evidence and Polar's argument that Icon had waived this argument by not raising it before appeal.  Insofar as Icon's arguments were "intended only to reinforce Icon's assertion that "'in- band' and 'out-of-band' are separate and distinct instances of communication" they are "redundant and unnecessary," because "Polar does not contest, and the district court did not question, that 'in-band' and 'out-of-band' [communications] are 'separate and distinct.'"  The question was whether the "ambiguous nature of the distinction between the two claim terms renders them incapable of construction," which was the District Court's conclusion with which the Federal Circuit agreed.

And illustrating the catholic nature of the indefiniteness requirement, the panel supported its conclusion by citing its decision in Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), a biotech case.  There, the ambiguous claim term was erythropoietin "having glycosylation which differs from that of human urinary erythropoietin [uEPO]."  In that case (decided under the "insolubly ambiguous" test negated by Nautilus), the fact that two preparations of urinary EPO produced from the same source could yield EPO having difference glycosylation patterns made the claims indefinite.  Under such circumstances "the claim itself was a moving target" because "one must know what the glycosylation of uEPO is with certainty before one can determine whether the claimed glycoprotein has a glycosylation different from that of uEPO" (emphasis in this opinion).  The panel found the same deficiency here, because "Icon argues that the scope of the claim term 'in-band' would be selected by a person of ordinary skill, but that the scope could vary from day-to-day and from person-to-person."  This is the same type of "moving target" in this technology as was the uEPO glycosylation pattern in the Amgen case, and was just as indefinite according to the Court.

Icon Health & Fitness, Inc. v. Polar Electro Oy (Fed. Cir. 2016)
Icon Health & Fitness, Inc. v. Garmin Int'l., Inc. (Fed. Cir. 2016)
Nonprecedential disposition
Panel: Circuit Judges Newman, Moore, and O'Malley
Opinion by Circuit Judge O'Malley

Comments

[EG]

Hey Kevin,

This case illustrates why a definition section in a patent application for claim terms is a must. Indeed, if a panel that comprises O'Malley, Newman, and Moore says the claim terms are indefinite, they must be.

[Kevin E Noonan]

Dear EG: in this case I think the patentee's draftsmen were just sloppy - even if they had defined the terms there was no basis in the spec for the claim limitation regarding the relationship between them.

Thanks for the comment

[Paul F. Morgan]

Kevin, your efforts in providing thorough analysis of non-chemical cases like this of importance to newly-more-important general legal issues like this - indefiniteness under 35 U.S.C. § 112(b)- is appreciated.

[MaxDrei]

I read (elsewhere) that the in band out band terminology first appeared in a prosecution amendment at the PTO. Should not a WD objection have been raised? Would it more likely be raised today?

In FtF country, prosecution amendments to introduce new terminology are more strictly policed, and more problematic. For readers outside the USA, it has always seemed amazingly lax of the USPTO to admit such amendments.

[EG]

Hey Kevin,

Perhaps so, but note that the alleged infringer argued that the terms "in-band" and "out-band" were undefined in the specification, and therefore ambiguous as to their meaning, a position the Federal Circuit panel didn't disagree with.

[skeptical]

Turtles all the way down, EG, with any "definitions section," which - quite naturally - will need to use words in that definition section.

Words, which will then next be called out as needing their own definitions.

That's just another rabbit hole to fall into.

[EG]

Hey Skeptical,

With all due respect, I disagree. Put it this way: do you want to be the lexicographer for those claim terms, or do you want to let your adversary be it?

[Jim Demers]

You should define those terms that need definition or require boundaries. For everything else, you're just putting up fences that you might regret later. It's part of the art of patent drafting.

In the case at hand, the specification does give *examples* of in-band and out-of-band interactions, but it doesn't *define* the terms. What really torpedoes the claims is the statement that "Of course, out-of-band interaction can also be performed in-band." You have to throw up your hands at that point.

[skeptical]

EG,

You missed the point.

Sure, go ahead and be the lexicographer for those claim terms.

All that you have done is now moved the argument to the terms YOU used in your definition section - and it is the EXACT same battle all over again.