Takeaway: If a patent owner does not present rebuttal evidence or argument regarding a ground on which a trial was instituted, the Board is not required to “scour the record to locate evidence supporting patentability,” which may lead to a finding of unpatentability based upon the evidence presented in the Petition.

In its Final Written Decision, the Board concluded that all claims under review (claims 1-14) are unpatentable and denied Patent Owner’s contingent motion to amend for lack of sufficient analysis as to the patentability of the proposed substitute claims.

The ’719 patent relates to a method for controlling an exercise machine “via control signals received from multiple types of computing devices that are independent of any one exercise machine.”

The Board began with claim construction. The Board first determined that the broadest reasonable interpretation, in light of the specification, of “exercise-related data” is “information regarding personal data, fitness goals, and/or control programs.” It then concluded that “independent computing device” should be construed to mean “a processor or storage device separate from the exercise machine, such as a portable computer system, a personal storage device, or a network server system.” Finally, the Board determined “‘specified by said particular user’ to mean that “the user deliberately selects, or interacts with, a computing device that is independent of the computerized monitor on the exercise machine.”

The Board then noted that Patent Owner did not address all of the instituted grounds in its response. In particular, it addressed only those grounds instituted against claims 4, 6, 10, and 12 and not the grounds on which the Board instituted review of the other ten claims under review. Because Patent Owner did not address the patentability of certain claims, Petitioner was precluded from further replying concerning the merits of the claims. Patent Owner at oral argument stated that it was “neither disclaiming the unaddressed claims nor acknowledging their unpatentability;” however, the Board concluded that Patent Owner waived any arguments on the issue of patentability of those claims because it did not present rebuttal evidence or argument in its response. After noting that the Board is not required to “scour the record to locate evidence supporting patentability,” when Patent Owner did not present a rebuttal to the “credible evidence” presented in the Petition, the Board determined that the preponderance of the evidence weighs in favor of unpatentability.   The Board then addressed, and rejected, Patent Owner’s arguments concerning claims 4, 6, 10, and 12.

Finally, the Board addressed Patent Owner’s contingent motion to amend. As described by the Board, Patent Owner’s “argument for patentability of the substitute claims consists of (1) coded notations to a master list of explanations, and (2) bare citations to paragraphs of the declaration of its expert….” The Board then provided the following example relating to claim 15:

Patent Owner submits the following technical facts and reasoning from the following paragraphs of the [ ] Declaration for the Board’s consideration: the NLs (¶ 23), the PC (¶ 24), the SU (¶ 25), the GSA-NO (¶ 26), the PDs-S (¶ 27), the PDs-C (¶ 28), the PDs-D (¶ 29), the PDs-A (¶ 30), and the PDs-B (¶ 31).

The Board criticized the “obtuse fashion” of Patent Owner’s presentation of its arguments, stating that the page limits do not “justify [Patent Owner’s] side-stepping its burden of persuasion” and that it would not “undertake to decipher short-hand code as the first step to understanding a party’s arguments and proofs on the issues of patentability.” The Board concluded that Patent Owner’s motion did not comply with the requirements to include a full explanation of the relief requested and to not incorporate arguments by reference. Instead, as the Board put it, Patent Owner’s motion “provides little more than a morass of cryptic notations that fall well short of any meaningful discussion of the prior art, the level of skill in the art, and the significance of the added features.” Accordingly, the Board was not persuaded that the motion demonstrated sufficiently the patentability of the proposed substitute claims, and it denied the motion to amend.

Johnson Health Tech Co. Ltd. v. Icon Health & Fitness, Inc., IPR2013-00463
Paper 41: Final Written Decision
Patent: 6,702,719 B1
Dated: January 29, 2015
Before: Josiah C. Cocks, Brian J. McNamara, and Carl M. DeFranco Jr.
Written by: DeFranco
Related Proceedings: ICON Health & Fitness, Inc. v. Johnson Health Tech. N. Am., Inc., No. 1:13-cv-112 (D. Utah).