Testifying as to Obviousness and Remanding to the PTAB

by Dennis Crouch

Icon Health and Fitness v. Strava (Fed. Cir. 2017) (Reexamination of U.S. Patent No. 7,789,800)

Expert Testimony on the Conclusion of Obviousness:  In the inter partes reexamination case here, the issue arose with the patent challenger (Strava) used an expert witness to testify to the legal conclusion that the claims at issue were obvious.  This is problematic because in ordinary circumstances it is improper for an expert witness to testify as to a question of law. Rather, the ordinary use of expert testimony is solely to “help the trier of fact to understand the evidence or to determine a fact in issue.” FRE 702.  Of course, the Federal Rules of Evidence do not apply to the Patent Trial & Appeal Board proceedings or patent reexaminations.

On appeal here, the Federal Circuit appears to agree with the challenger – that an expert can make conclusions of obviousness/non-obviousness and that the PTO can rely upon those statements.

[T]here is no per se prohibition against relying on an expert’s declaration … 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. (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”); MCM Portfolio (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 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.

The decision here appears to carry the same weight whether a PTAB case or district court litigation.

Spelling Out the Factual Findings: The decision goes on to find some errors in the PTAB merits decision.  In particular, rather than spelling out its factual findings of where each claim element is found in the prior art, the Board issued a general catchall statement that “we agree with [Strava’s] rebuttal . . . as well as the Examiner’s response.”  The statement appeared to incorporate-by-reference a prior examiner’s statement which itself had incorporated statements by Strava’s witness.

On appeal, the Federal Circuit found that such a multi-layered incorporation by reference can be sufficient.  Here, however, none of the PTO created documents actually included the required factual findings.  Although the incorporated documents from Strava’s attorneys did include purported factual findings, the Federal Circuit indicated that those unsworn statements cannot be treated as evidence or factual findings.  [On this last point, I believe that the court incorrectly correlated evidence with factual findings].

Remand or End the Case: The decision splits at this point between the two judge majority (Judges Wallach and Reyna) and dissent-in-part (Judge O’Malley).

Since the error in failing to write-down sufficient factual findings was potentially a merely-technical-error, the majority remanded the case “for further poceedings consistent with this opinion.”  Thus, on remand, the PTAB/Examiner may have another opportunity to explain its judgment as to the invalidity of the claims:

Because the PTAB failed to comport with what these [fact finding] 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 (Fed. Cir. 2017) (explaining that the court vacates and remands when additional fact finding and explanation is warranted).


Judge O’Malley dissented from this approach – arguing that remand is not appropriate for cases such as these where the PTAB has failed to establish obviousness or unpatentability generally. In this regard, Judge O’Malley agrees with Judge Newman’s dissent in Van Os.


28 thoughts on “Testifying as to Obviousness and Remanding to the PTAB

  1. 6

    How can an expert be relied upon to judge that something would have been obvious to one of merely ordinary skill in the art?

    An expert can judge what would have been obvious to an expert. And an expert might be able judge that something would NOT have been obvious to one of ordinary skill in the art (e.g., if it also would not have been obvious to an expert).

    However, I don’t believe an expert can be relied upon to judge what would have been obvious to one of merely ordinary skill.

    1. 6.1

      Give me your car keys, Les.

      An aspect of inte11igence is the ability to segregate and “layer” the knowledge that you have.

      This is even shown in youngsters when they recognize what they learned in fifth grade is built upon in a high school class. And later, in college, another layer may be added.

      Your question inartfully puts forth that a college student cannot identify the fifth grade level.

    2. 6.2

      College professors have been rather frequently used as expert witnesses for 103 issue in D.C. litigation [instead of someone who worked in the subject industry], from long before IPRs, and yes I found that strange.

  2. 5

    It is surprising, and not flattering to the PTO, that an inter partes reexamination is still dragging on at this late date. Another example of why the AIA got rid of them and replaced them with IPRs several years ago. If there was any parallel D.C. litigation on this patent I would assume it was already over before this decision?

    1. 4.2

      The 9th Justice theory is starting to look very persuasive.

      Cooper and MCM may have been the victims of bad timing.

    2. 4.3

      Well, anon, I believe the PTAB really blew it on the merits as well. The expert argued that it would be obvious to incorporate X function into Y controller. But the expert never argued that it would be obvious to incorporate the Y controller, the Z controller, and a mechanical/optical detector MO into a combined controller that did all of Y, Z and MO.

      Even so, the PTAB relied on the expert for its ultimate conclusion and in doing so misquoted the Expert to make it seem the testimony was directed a single controller having the entire functionality.

      Anybody seeing what the PTAB did there would realize that they were working hard to support their initial institution decision. They made a mistake there and did not want to admit it.

      1. 4.3.1

        So how do you feel about these (are they legal experts?) making pronouncements of law that the court is willing to accept at face value?


          anon, we need experts to educate the trier of fact regarding the background technology and the general skill in the art. If there is a dispute about what a term means to one of ordinary skill, then perhaps. But the ultimate conclusion should be barred. But they all do it.


            Not only do “they all do it” the point here is that the court finds that acceptable?

            How can that be?

      2. 4.3.2

        I missed this point in first read:

        Anybody seeing what the PTAB did there would realize that they were working hard to support their initial institution decision. They made a mistake there and did not want to admit it.

        I don’t buy your view. By that logic, each and every decision to initiate must also then follow with a finding of the claims to be improperly granted because ALL would follow the same logic of “not admitting a mistake.”

        This “proves” too much, and thus cannot be true. Leastwise on its own face.

  3. 3

    Speaking of obvious, can someone point me to a “use ‘new’ logic to drive a robot car” claim that isn’t obvious junk?

    (s0mebody except Les, I should say just to avoid the time wastage.)

    When you post the claim, please also include information re (1) your age; and (2) whether you’ve ever actually driven a car.

    Perhaps David Stein will turn up to reveal his personal favorite claim in this “technology space” (LOL).

    1. 3.1

      What did David Stein ever do to you?

      That is, outside of giving you the opportunity to volunteer that one particular admission against interests of knowing and understanding the controlling law as to the exceptions to the judicial doctrine of printed matter?

      1. 3.1.1

        What did David Stein ever do to you?

        Nothing. He seems like a smart guy. Except I recall him kinda pushing “robot car” “tech” like an excuse for logic patenting. I found that amusing at the time (several years ago, at least), and it’s more amusing now given that these s00per d00per awesome robot cars seem pretty much worthless without trillions of dollars in infrastructure funding that caters to the wealthiest and leaves everyone else worse off.

        But I know this all too nuanced for you, “anon.” Just run along now and go back to screeching about Michelle Lee like a good little sycophant. You’re a very serious person!


          Maybe you are doing that “one Bucket” thing of yours, and just lashed out since you had not added any ad hominem to your post at that point…

          or – as O see – you needed to fit in (somehow) your cl@ss W@rfare meme somehow. Feel better now?

          As to “logic patenting,” how is your “logic copyright” coming along?


            As to “logic patenting,” how is your “logic copyright” coming along?

            Greatest. Minds. Ever.

            All assembled beyond teh most awesomest policy goal ever: monopoly rights on logic.


            Keep the laughs coming, “anon.”


              For all your hand waving, there is no answer to my question, and you do not even deign to recognize the valid legal point being made.

              “Keep the laughs coming”


              Just not how you are thinking.

              What a chump.


            your cl@ss W@rfare

            Ask yourself, folks: after an election which was (allegedly) decided because a bunch of allegedly angry poor high-school educated whites (totally not r@cist!) in middle America weren’t getting enough jobs dropped into their cheetoh-stained laps, what kind of a person complains when a massive grifting scheme proposed by the rich (and for their own benefit) is exposed as such?


              massive grifting scheme

              With patent friends like this, who needs enemies?

              You are doing that “leaky” thing again, Malcolm.

  4. 2

    Meanwhile, the least intelligent patent attorneys on the planet are still flipping out over the possibility that Michelle Lee is PTO Director.

    It’s “egregious!”, they whine at peak volume as they spew relentless reams of misrepresentations out of the other side of their giant flapping mouths.

  5. 1

    I take Judge Newman’s point in Van Os, but I am not sure that it applies here as Judge O’Malley would have it do. Van Os was an ex parte appeal. If the PTO had not made out a rejection by the time it reached the CAFC, it is perfectly fair to say to the PTO “you have had your chance. Now quit toying with the applicant and issue the patent.”

    By contrast, this was an inter partes proceeding from which the appeal was taken. If the PTAB wrote an insufficiently clear opinion, this is not really the appellee’s fault. Indeed, by virtue of having already won, the appellee had no grounds to challenge the PTAB’s decision. If O’Malley’s rule were to prevail, this would leave the patent challenger to bear the loss for the PTO’s mistake. That hardly seems fair.

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