NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

ICON HEALTH & FITNESS, 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 in No. 1:11-cv-00167-BSJ, Senior Judge 

Bruce S. Jenkins.

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

ICON HEALTH & FITNESS, INC., A DELAWARE 

CORPORATION,

Plaintiff-Appellant

v.

GARMIN INTERNATIONAL, INC., A KANSAS 

CORPORATION, GARMIN USA, INC., A KANSAS 
2 ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY

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

______________________ 

ROBERT PARRISH FREEMAN, JR., Maschoff Brennan 

P.L.L.C., Park City, UT, argued for plaintiff-appellant. 

Also represented by LARRY R. LAYCOCK, JARED J.

BRAITHWAITE, DAVID R. WRIGHT, Salt Lake City, UT.

JOHN P. MORAN, Holland & Knight, LLP, Washington, DC, argued for defendants-appellees Polar Electro 

OY, Polar Electro Inc. Also represented by ANTHONY J.

FUGA, Chicago, IL.

ADAM PRESCOTT SEITZ, Erise IP, P.A., Overland Park, 

KS, for defendants-appellees Garmin International, Inc., 

Garmin USA, Inc. Also represented by MEGAN JOANNA 

REDMOND. 

______________________ 

Before NEWMAN, MOORE, and O’MALLEY, Circuit Judges.

O’MALLEY, 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 construction,” 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 internal quotation mark omitted). Icon also appeals the final 

judgment in a separate case in the same district dismissing 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). Because the district court did not 

err in its analysis, we affirm. 

BACKGROUND

A. The ’351 Patent

The ’351 patent discloses an exercise and health system that is capable of providing feedback and encouragement to the user (simulating the function of a personal 

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 system”) that can provide feedback and encouragement 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 addition, the system includes a remote system communicating over a bi-directional data channel 

(preferably the Internet) with the exercise and 
4 ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY

health equipment. This remote system can include remote servers communicating with the local system, and remote work stations used by 

trainers and users to interact 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 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 outof-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 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. 
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 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. 

’351 patent, claim 5 (emphases added on claim terms at 

issue).

Figure 1 of the patent demonstrates the computer 

network exercise system:
6 ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY

’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; col. 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 does not distinguish between “inband” 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, demonstrates the inband 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 associated 

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 demonstrated. Id. at col. 19 ll. 25–27. “These ‘out-of-band’ 

signals can include, for example, high speed data communication 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.
8 ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY

B. Procedural History

On January 10, 2014, the district court held a Markman 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 communication,” “out-of-band device,” and the claimed “relationship” between the out-of-band communication and the inband communication. Nautilus, Inc. v. Biosig Instruments, 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 parties 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 Appendix (“J.A.”) 

750 (“Having considered the parties’ briefs and the arguments 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 construction briefs and the district court held an evidentiary

hearing to hear expert testimony as well as oral argument. Id. The focus of this post-Nautilus round of argument was on the terms “in-band communication,” “out-ofband communication,” “out-of-band device,” and the 

claimed “relationship” between the out-of-band communication and the in-band communication.

On May 18, 2015, after consideration of expert testimony, the district 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

DISCUSSION

The definiteness requirement is found in the second 

paragraph of 35 U.S.C. § 112, which reads: “The specification shall conclude with one or more claims particularly 

pointing out and distinctly claiming the subject matter 

which the applicant regards as his invention.” In Nautilus, 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 history, inform those skilled in the art about the scope of the 

invention with reasonable certainty.” Nautilus, 134 S.Ct. 

at 2129.

While we 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 indefiniteness . . . must 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 underpinnings. “Though the ultimate construction of a claim term 

is a legal question reviewed de novo, underlying factual 

determinations made by the district court based on extrinsic 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 determination 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 “outof-band” communications are different from each other, 
10 ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY

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

one pathway, and ‘out-of-band’ refers to a different pathway.”) Icon’s expert opined: 

It is . . . my expert opinion that one of ordinary 

skill in the art would reasonably understand the 

claim terms [“in-band” and “out-of-band”] as follows. First, “in-band communication” would be 

reasonably understood by those of skill in the art 

as communication to or from the exercise apparatus. 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 understood by those of skill in the art as a device capable of any communication other than the inband communication.

J.A. 950. 

Polar’s expert does not disagree that the terms are indeed distinct. See Appellant Br. 23–24 (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 with sufficient information to define these terms with 

reasonable certainty” and the “terms as used in the ’351 

patent are ambiguous” without some sort of reference to 

provide context. J.A. 795, ¶ 2. The “relationship” between “in-band” and “out-of-band,” according 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 fact 
ICON 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 information (e.g., radio-frequency signals, or infrared 

signals, or acoustic signals, or tactile signals), the 

needed reference for what would comprise “inband communication” versus “out-of-band communication” is missing from the claim. . . . “[I]nband” and “out-of-band” are relative terms. The 

reference could be a particular “band” (or equivalent), 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 communication signal fills or occupies whatever 

“band” or equivalent resource that it needs). 

Thus, reading 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 determine how an “in-band communication” might 

differ from “communication” in the more general 

sense. 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.

J.A. 886, ¶ 60.

The ambiguity, Polar’s expert continued, is exacerbated 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 be 
12 ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY

a conversation had completely outside the claimed system: 

The [“out-of-band communication”] device is required 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 communication device” because: a) it communicates with 

another element of structure (which is unspecified) by a method of communication which is 

considered “out-of-band” relative to an unspecified reference; or b) it communicates with a human. . . . The “out-of-band communication device” 

could be the user’s cell phone, or a wired telephone, and there is not even an implied requirement 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. 890–91, ¶ 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 it 
ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY 13

when construing claim terms. The district court’s findings on such evidence constitute findings of fact, and we 

review such factual findings for clear error. Teva, 135 S. 

Ct. at 841. Here, we 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 arguments to distinguish “in-band” from “out-of-band” based 

on the use of those terms throughout the specification. It 

argues that “it is evident that references to ‘out-of-band’ 

are intended to 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 to facilitate ‘out-of-band’ 

communications, interactions and experiences.” Appellant Br. 32; see id. at 31–44 (citing the specification of the 

’351 patent for support). In this way, “in-band” functionality 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 reference 

solely to the intrinsic evidence (i.e., the claims, specification, and prosecution history). The latter fails because 

Polar’s expert’s unrebutted analysis was based on a 

review of ten extrinsic references.

 
14 ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY

inexpensiveness limitations, no complexity limitations, no 

powerfulness limitations, and no standard-issue limitations.” Appellee Br. 28. As such, Polar argues, this 

distinction for purposes of claim construction and definiteness, made for the first time on appeal, is waived. 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 appeal.”). Icon disagrees. 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 specification is intended only to reinforce Icon’s assertion that “‘inband’ and ‘out-of-band’ are separate and distinct instances 

of communication, related to one another under the plain 

and ordinary meaning of the ‘relationship’ between the 

two described in the specification (i.e., that they both 

relate to a common, single exercise session),” such arguments are redundant and unnecessary. Appellant Reply 

Br. 15. Polar does not contest, and the district court did 

not question, that “in-band” and “out-of-band” are “separate and distinct.” Rather, Polar argues that the ambiguous nature of the distinction between the two claim terms 

renders them incapable of construction. We agree.

In Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 

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, “one 
ICON HEALTH & FITNESS, INC. v. POLAR ELECTRO OY 15

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.” Id. (emphasis added). This court therefore affirmed the district court’s finding that the claims requiring “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 person-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. “Inband” cannot provide a basis, therefore, to determine 

which communications are “out-of-band” if the terms are a 

moving target that may change over time. 

CONCLUSION

The district court did not err by relying on expert testimony 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 certainty, those skilled 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 preclusion in 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