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ARTICLE · 06 MARCH 2017

Federal Circuit Reminds PTAB To Explain Its Reasoning

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

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The Court of Appeals for the Federal Circuit (the Federal Circuit) has more recently been indicating to the Patent Trial and Appeal Board (the Board) the importance of explaining its reasoning when invalidating patent claims.

United StatesIntellectual Property
Brad Scheller
Brad Scheller
Ping Hu
Ping Hu
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The Court of Appeals for the Federal Circuit (the Federal Circuit) has more recently been indicating to the Patent Trial and Appeal Board (the Board) the importance of explaining its reasoning when invalidating patent claims. The Federal Circuit's decision in Icon Health and Fitness v. Strava, finding that the Board did not make requisite factual findings or provide adequate explanations, is the latest reminder from the Court.

Appellee Strava sought inter partes reexamination of U.S. Patent No. 7,789,800. The Examiner found certain claims obvious over various prior art references. The Board affirmed the Examiner's rejection of all pending claims as obvious. Appellant Icon Health and Fitness appealed the rejection of twelve claims to the Federal Circuit. The Federal Circuit affirmed in part as to three of the twelve claims, but vacated and remanded in part as to the other nine, stating that the Board's decision "contain[ed] no substantive discussion of the

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