N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________
ICON HEALTH & FITNES S, INC., A DELAWARE CORPORATION, Plaintiff

- Appellant

v.

POLAR ELECTRO OY, A FINNISH COMPANY, POLAR ELECTRO INC., A DELAWARE CORPORATION, Defendants

- Appellees

______________________

2015

- 1891

______________________ Appeal from the United States District Court for the District of Utah i n No. 1:11

- cv

- 00167

- BSJ, Senior Judge Bruce S. Jenkins.

-------------------------------------------------------

ICON HEALTH & FITNES S, INC., A DELAWARE CORPORATION, Plaintiff

- Appellant

v.

GARMIN INTERNATIONAL , INC., A KANSAS CORPORATION, GARMIN USA, INC., A KANSASICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 2

CORPORATION, Defendants

- Appellees

GARMIN LTD., A SWISS CORPORATION, Defendant

______________________

2016

- 1166

______________________ Appeal from the United States District Court for the District of Utah in No. 1:11

- cv

- 00166

- RJS, Judge Robert J. Shelby.

______________________
Decided: August 8, 2016

______________________
R OBERT P ARRISH F REEMAN , J R ., Maschoff Brennan P.L.L.C., Park City, UT, argued for plaintiff

- appellant. Also represented by L ARRY R. L AYCOCK , J ARED J. B RAITHWAITE , D AVID R. W RIGHT , Salt Lake City, UT.

J OHN P. M ORAN , Holland & Knight, LLP, Washin gton, DC, argued for defendants -appellees Polar Electro OY, Polar Electro Inc . Also represented by A NTHONY J. F UGA , Chicago, IL.

A DAM P RESCOTT S EITZ , Erise IP, P.A., Overland Park, KS, for defendants

- appellees Garmin International, Inc., Garmin USA, Inc . Also represented by M EGAN J OANNA R EDMOND

.

______________________

Before N EWMAN , M OORE , and O’M ALLEY , Circuit Judges.

O’M ALLEY , Circuit Judge

.ICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 3

Icon Health & Fitness, Inc. (“Icon”) appeals the final judgment of the district court finding the claims of U.S. Patent No. 6,921,351 (“the ’351 patent”) indefinite, and therefore invalid

. Icon Health & Fitness, Inc. v. Polar Electro Oy , No. 1:11

- CV

- 00167

- BSJ, 2015 WL 2376056 (D. Utah May 18, 2015)

. The district court found the claim terms “in

- band,” “out -of- band,” and “relationship” to be “ambiguous and incapable of con struction,” concluding that the claims containing these terms “fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Id. at *12 (citation and inte rnal quotation mark omitted). Icon also appeals the final j udgment in a separate case in the same district dismis sing the claims involving the ’351 patent as barred by the doctrine of issue preclusion. Icon Health & Fitness, Inc. v. Garmin Int’ l , No. 1:11

- CV

- 166

- RJS, 2015 WL 5714248 (D. Utah Sept. 29, 2015) . Bec ause the district court did not err in its analysis, we affirm

. B ACKGROUND
A. The ’351 Patent The ’351 patent discloses an exercise and health sy stem that is capable of providing feedback and encourag ement to the user (simulating the function of a persona l trainer) and networking devices together to simulate a group setting. The present invention provides an exercise and health system which is convenient, affordable, and effective. The system includes computerized exercise and/or health equipment (the “ local sy stem”) that can provide feedback and encourag ement to the user, i.e., serve as a “virtual personal trainer.” These local systems often include a local server to service multiple exercise devices. In a ddition, the system includes a remote system c o mmunicating over a bi

- directional data channel (preferably the Internet) with the exercise andICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 4

health equipment. This remote system can i nclude remote servers communicating with the l ocal system, and remote work stations used by trainers and users to int eract with the remote servers and local systems. ’351 patent, col. 2 ll. 23

– 34. The ’351 patent has 20 claims . The allegedly ambiguous terms are found in independent claims 1 and 5 , reproduced here:

1. An exercise system comprising: a local system includ ing at least one exercise a pparatus and at least one associated local server, said at least one local server monitoring the ope ration of said at least one exercise apparatus, said exercise apparatus and said local server having an in

- band communication usi ng 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 server 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 b etween said local server and said r emote 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 app aratus.ICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 5

’351 patent, claim 1 (emphases added on claim terms at issue). 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 bi

directional wireless communication device such that said e xercise 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 temporar ily storing information concerning exercise se ssions performed on said exercise apparatus. ’351 patent, claim 5 (emphases added on claim terms at issue). Figure 1 of the patent demonstrates the computer network exercise system:ICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 6

’ 351 patent, Figure 1. “In Figure 1, a computer 24 in bicycle 18 is connected by a line 30 (which can be the Internet) to a remote computer 66, which is connected to server station 16.” Icon Health & Fitness, Inc. , 2015 WL 2376056 at *1 (citing ’351 patent, col. 7 ll. 33

– 37; co l. 8 ll. 14

– 16) . Figure 1 demonstrates the local system 12, located on the left side of the figure, with the remote system 14 on the right. The local system 12 “can provide feedback and encouragement to the user, i.e. can serve as a ‘virtual personal trainer.’” Id. (quoting ’351 patent, col. 2, ll. 23 –27 ). This figure d oes not distinguish between “in

band” and “out -of- band” communications, but does demonstrate the nature of the technology at issue: an exercise apparatus with, at least, a local computer, a remote computer, and a means of communication between them. Figure 14, on the other hand, demonstrate s the in

band and out -of- band communications :ICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 7

’351 patent

, Figure 14. This figure illustrates “a block diagram of an exercise circuit which can be ass ociated with, for example, an exercise device.” Id. at col. 18 ll. 28

– 30. “Communications between the interface controller and the rest of the system 250 through the transmitter 286 and the optional receiver 302 comprise ‘in

- band’ communication.” Id. at col. 19 ll. 22

– 24. “[O]ut -of- band communication signals 304 between the controller 280 and, for example, a local server 266A” are also demo nstrated. Id. at col. 19 ll. 25

– 27. “These ‘out -of- band’ signals can include, for example, high speed data comm unication to provide real time video (e.g. streaming video over the Internet) on the display 298.” Id. at col. 19 ll. 27

– 30. The claim term “relationship” does not appear in the specification.ICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 8

B. Procedural History On January 10, 2014

, the district c ourt held a Mar kman hearing on the parties’ proposed claim constructions for asserted claims 1 and 5 of the ’351 patent, including the terms “in

- band communication,” “out -of- band comm unication,” “out -of- band device,” and the claimed “relatio nship” between the o ut -of- band communication and the in

band communication. Nautilus, Inc. v. Biosig Instr uments, Inc. , 134 S. Ct. 2120 (2014)

, issued later that year

, and, as a result, the district court heard re

- argument and allowed supplemental briefing, allowing the part ies to address the change in the law. Icon Health & Fitness, Inc. , 2015 WL 2376056 at * 1. The court asked the parties to retain experts in order to ascertain the perspective of persons skilled in the art to construe the terms

. Id. ; see also Joint Appendi x (“J.A.”) 750 (“Having considered the parties’ briefs and the arg uments of counsel, the court finds it is unable to construe purported claims without the assistance of those skilled in the art. ”)

. The parties filed supplemental claim constru ction briefs and the district court held an evidentiary hearing to hear expert testimony as well as oral arg ument. Id. The focus of this post

- Nautilus round of arg ument was on the terms “in

- band communication,” “out -ofband communication,” “out -of- band device,” and the claimed “relationship” between the out -of- band commun ication and the in

- band communication. On May 18, 2015, after consideration of expert test imony, the distr ict court dismissed with prejudice Icon’s claim against Polar for infringement. The court found that the ’351 patent claim terms

— “in

- band,” “out -ofband,” and “relationship”

— are ambiguous and incapable of construction; therefore, the court held that the ’ 351 is invalid for indefiniteness. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).ICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 9

D ISCUSSION The definiteness requirement is found in the second paragraph of 35 U.S.C. § 112, which reads: “The specific ation shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” In Naut ilus , the Supreme Court stated the test for whether a claim meets the requirements of § 112, ¶ 2 as follows: “[W]e read § 112, ¶ 2 to require that a patent’s claims, viewed in light of the specification and prosecution hist ory, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus , 134 S.Ct. at 2129.

While w e review the district court ’s legal conclusion regarding indefiniteness de novo, we must review any underlying factual determination for clear error

. Teva Pharm. USA, Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 842 (2015)

. And, “ [a] ny fact critical to a holding on indefinit eness

. . . mus t be proven by the challenger by clear and convincing evidence.” Intel Corp. v. VIA Techs. , 319 F.3d 1357, 1366 (Fed. Cir. 2003)

. Claim construction is also a question of law, but similarly may have factual underpi nnings. “Though the ultimate constructi on of a claim term is a legal question reviewed de novo, underlying factual determinations made by the district court based on e xtrinsic evidence are reviewed for clear error.” Biosig Instr

. , 783 F.3d at 1378 (citing Teva
, 135 S. Ct. at 842). “[W] hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge’s dete rmination will amount solely to a determination of law, and the Court of Appeals will review that construction de

novo .” Teva , 135 S. Ct. at 841

. At the district court and in front of this court, Icon ’s and its expert’s position has been that “in

- band” and “out

of- band” communications are different from each other

,ICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 10

and that the fact that there is a difference is alone sufficient to render the claims definite and capable of co nstruction. See, e.g. , Appellant Br. 57 (“‘in

- band’ refers to one pathway, and ‘out -of- band’ refers to a different pat hway.”) Icon ’s expert opined : It is . . . my expert opi nion that one of ordinary skill in the art would reasonably understand the claim terms [“in

- band” and “out -of- band”] as fo llows. First, “in

- band communication” would be reasonably understood by those of skill in the art as communication to or from the exe rcise app aratus. Second, “out -of- band communication” would be reasonably understood by those of skill in the art as any communication other than the in

- band communication. . . . Finally, “out -of- band communication device” would be reasonably u nderstood b y those of skill in the art as a device c apable of any communication other than the in

band communication.

J.A. 950. Polar’s expert does not disagree that the terms are i ndeed distinct. See Appellant Br. 2 3–24 (listing instances where Polar’s expert notes , in agreement with Icon’s expert, that “in

- band” and “out -of- band” are separate and distinct from one another). Instead, Polar’s expert argues that “the ’351 patent does not provide one skilled in the art wit h sufficient information to define these terms with reasonable certainty” and the “terms as used i n the ’351 patent are ambiguous ” without some sort of reference to provide context. J.A . 795, ¶ 2. T he “ relationship ” between “ in

- band ” and “ out -of- band ,” a ccording to Polar’s expert, is completely unspecified. Indeed, 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 factICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 11

that they are different) or how the two are related. As Polar’s expert explained: Regardless of the medium used to transfer info rmation (e.g., radio

- frequency signals, or infrared signals, or acoustic signals, or tactile signals), the needed reference for what would comprise “in

band communication” versus “out

- of

- band co mmunication” is missing from the claim. . . . “[I]n

band” and “out -of- band” are relative terms. The reference could be a particular “band” (or equiv alent), or information flow (also called a “ traffic flow”), which can serve to anchor the meaning of the terms. Clearly, any communication can be considered to be “in

- band” to itself (i.e., the co mmunication signal fills or occupies whatever “band” or equivalent resource that it needs). Thus, read ing the plain words of the claim, one of ordinary skill would be unable to assign any meaning at all to the adjective “in

- band”, or d etermine how an “in

- band communication” might differ from “communication” in the more general sense. One of ordinary skill in the art would u nderstand that the words of the claims are su pposed to have meaning, and “in

- band communication” should be narrower (more limi ting) than “communication”. But, unless the mea ning can be elucidated from the specification or file history, there would be no way to draw this di stinction, and thereby determine the metes and bounds of the claim (and the claims that depend from this claim) with reasonable certainty.

J.A

. 8 86, ¶ 60. The ambiguity, Polar’s expert continued

, is exacerba ted by the fact that the “ out -of- band communication ” is completely untethered to the “ in

- band communication, ” such that the “out -of- band communication” could even beICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 12

a conversation had completely outside the claimed sy stem: The [“out -of- band communication”] device is r equired to be “capable of a communication with a user”. This wording describes a communication between an apparatus and a human, and adds an additional layer of ambiguity since it is not clear if the recited structure is an “out -of- band commun ication device” because: a) it communicates with another element of structure (which is unspec ified) by a method of communication which is considered “out -of- band” relative to an unspec ified reference; or b) it communicates with a h uman. . . . The “out -of- band communication device” could be the user’s cell phone, or a wired tel ephone, and there is not even an implied requir ement for it to exchange information with any other part of the claimed system

— as long as the out -of- band communication has an unspecified “relationship” to the in

- band communication.

J.A

. 89 0– 91, ¶ 69 (footnotes omitted). To support its position that a reference is required to provide context and give terms “in

- band” and “out -ofband” meaning , Polar’s expert proffered ten extrinsic prior art patents and text books, each of which “defines a reference that allows the reader to differentiate in

- band from out -of- band in relation to that reference.” Icon Health & Fitness, Inc. , 2015 WL 2376056 at *10.

It was on the basis of these ten extrinsic references that the district court concluded “ that those skilled in the art understand that the terms ‘ in

- band ’ and ‘ out

- of

- band ’ are relative terms, and only have meaning in a given context with a defined reference, such as a frequency, a channel, a protocol, time slots, and data streams. ” Id. This is precisely the type of extrinsic evidence upon which a district court may rely in analyzing the record before itICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 13

when construing claim terms . The district court’s fin dings on such evidence constitute findings of fact, and w e review such factual findings for clear error. Teva , 135 S. Ct. at 841

. Here, w e find no clear error in the district court’s findings of fact, based on the extrinsic evidence presented by Polar’s expert, nor do we find error in the legal conclusion it draws from this factual premise. 1 For the first time on appeal, Icon raises new arg uments to distinguish “in

- band” from “out -of- band” based on the use of those terms throughout the specifica tion. It argues that “it is evident that references to ‘ out -of- band ’ are intended t o describe an enhancement over ‘ in

- band, ’ in that enhanced technology, something different in kind

— something more complex, or more powerful, or more expensive

— is required t o facilitate ‘out -of- band’ communications, interactions and experiences.” Appe llant Br. 32 ; see id. at 31

– 44 (citing the specification of the ’351 patent for support). In this way, “in

- band” functio nality is “simple and inexpensive,” “[b]ut if consumers wanted something more,” they could get the “optional enhancement” that is the “out -of- band” communications. Id. at 36. Polar argues that this line of argument is waived. At the district court, Icon’s claim construction contained “no

1 We find , moreover, no merit in Icon’s argument that the district court either (1) should not have looked to extrinsic evidence because the intrinsic evidence was sufficient, or (2) that the expert’s testimony was purely legal in nature. See Appellant Br. 47

, 50

– 51. The former fails because , as demonstrated above, the indefiniteness of the claim terms simply cannot be resolved by refere nce solely to the intrinsic evidence (i.e., the claims, specific ation, and prosecution history) . The latter fails because Polar’s expert’s unrebutted analysis was based on a review of ten extrinsic references.ICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 14

inexpensiveness lim itations, no complexity limitations, no powerfulness limitations, and no standard

- issue limit ations.” Appellee Br. 28. As such, Polar argues, this distinction for purposes of claim construction and definiteness

, made for the first time on appeal, is waiv ed. See Sage Products, Inc. v. Devon Indus., Inc. , 126 F.3d 1420, 1426 (Fed. Cir. 1997) (“With a few notable exceptions, such as some jurisdictional matters, appellate courts do not consider a party ’ s new theories, lodged first on a ppeal.”)

. Icon disagre es. It argues that it is not presenting

a new scope of claim construction . Rather, it is “proffering additional or new supporting arguments, based on evidence of record, for its claim construction.” Interactive Gift Exp., Inc. v. Compuserve Inc. , 256 F.3d 1323, 1347 (Fed. Cir. 2001).

Because any new argument drawn from the specific ation is intended only to reinforce Icon’s assertion that “‘ in

band ’ and ‘ out -of- band ’ are separate and distinct instances of communication, related to one another under the pl ain and ordinary mea ning of the ‘ relationship ’ between the two described in the specification (i.e., that they both relate to a common, single exercise session) ,” such arg uments are redundant and unnecessary. Appellant Reply Br. 15. Polar does not contes t, and the district court did not question, that “in

- band” and “out -of- band” are “sep arate and distinct .” Rather, Polar argues that the ambig uous nature of the distinction between the two claim terms renders them incapable of construction. We agree.

In Amgen Inc. v. Hoechst Marion Roussel, Inc. , 3 14 F.3d 1313 (Fed. Cir. 2003), one of the claims

- at

- issue disclosed an erythropoietin glycoprotein product “having glycosylation which differs from that of human urinary erythropoietin,” or uEPO. Id. at 1340. The district court found that “two uEPO preparations produced from the same batch of starting materials could nevertheless have different glycosylation patterns.” Id. at 1341. Thus, the claim itself was a moving target; as we explained, “oneICON HEALTH & FITNESS , INC

. v. POLAR ELECTRO OY 15

must know wh at the glycosylation of uEPO is with ce rtainty before one can determine whether the claimed glycoprotein has a glycosylation different from that of uEPO.” Id. (emphasis added). This court therefore a ffirmed the district court’ s finding that the claims re qui ring “glycosylation which differs” were invalid for indefiniteness. Id. at 1342. Here, 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 perso n- to

- person. It argues that “ [t] he inventors were prescient

. . . and recognized that what is prohibitively expensive or complex today may be rudimentary tomorrow .” Appellant Br. 40

– 41. “In

band” cannot provide a basis, therefore, to determine which com munications are “out -of- band ” if t he terms are a moving target that may change over time

. C ONCLUSION
The district court did not err by relying on expert te stimony to conclude that “in

- band” and “out -of- band” are relative terms that have meaning only in the context of a defined reference. Because the ’ 351 patent ’ s claims, “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable ce rtainty, those skille d in the art about the scope of the invention,” Nautilus , 134 S.Ct. at 2124, and because we do not find any of Icon’s other arguments persuasive, we affirm the district court’s finding that the ’351 patent is invalid for indefiniteness. The ruling of the district court that Icon’s assertion of the ’351 patent is barred by the doctrine of issue precl usion i n Icon Health & Fitness, Inc. v. Garmin Int’ l , No. 1:11

- CV

- 166

- RJS, 2015 WL 5714248 (D. Utah Sept. 29, 2015), is also affirmed.

AFFIRMED