In Icon Health and Fitness, Inc. v. Stava, Inc., [2016-1475] (February 27, 2017), the Federal Circuit vacated-in-part, affirmed-in-part, and remanded, the Board’s Decision in an appeal of a inter partes reexamination.

Ikon argued that the Examiner erred when he extensively cited to statements in the expert declarations submitted by Stava.  The Federal Circuit said that 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.”  To determine if an expert’s statement is directed to factual findings or the legal conclusion of obviousness, the court looks to the statement not in isolation, but in the context of the whole declaration.

As to claims 46, 57–62, 65, 74, 98-100, the Federal Circuit found that neither the PTAB nor the Examiner made the requisite factual findings or provided the attendant explanation, finding that both purported to incorporate by reference arguments drafted by Strava’s attorneys.  Thus the Federal Circuit vacated the decision and remanded the case for additional PTAB findings and explanation.  As to claim 43, 71, and 86, the Federal Circuit disagreed with Ikon, and found that The PTAB made the requisite factual findings with an adequate evidentiary basis and provided the attendant explanation.

This cases goes back to the Board, but O’Malley would have simply reversed, since the Board failed to meet its duty.  While certainly a pro-patentee position, it pins the fate of the challenger on the competence of the Board and the Examiner below, rather than the merits of the invalidity case.