       NOTE: This disposition is nonprecedential.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, Washing-
ton, 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 inter-
nal quotation mark omitted). Icon also appeals the final
judgment in a separate case in the same district dismiss-
ing 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 sys-
tem that is capable of providing feedback and encourage-
ment 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 sys-
   tem”) that can provide feedback and encourage-
   ment 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 ad-
   dition, the system includes a remote system com-
   municating 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 in-
    clude remote servers communicating with the lo-
    cal 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 ap-
    paratus and at least one associated local server,
    said at least one local server monitoring the oper-
    ation 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 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 be-
    tween 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 appa-
    ratus.
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 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 temporari-
   ly storing information concerning exercise ses-
   sions 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 “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, demonstrates 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 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 demon-
strated. Id. at col. 19 ll. 25–27. “These ‘out-of-band’
signals can include, for example, high speed data commu-
nication 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 Mark-
man 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 commu-
nication,” “out-of-band device,” and the claimed “relation-
ship” between the out-of-band communication and the in-
band communication. Nautilus, Inc. v. Biosig Instru-
ments, 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 argu-
ments 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 construc-
tion briefs and the district court held an evidentiary
hearing to hear expert testimony as well as oral argu-
ment. Id. The focus of this post-Nautilus round of argu-
ment was on the terms “in-band communication,” “out-of-
band communication,” “out-of-band device,” and the
claimed “relationship” between the out-of-band communi-
cation and the in-band communication.
    On May 18, 2015, after consideration of expert testi-
mony, 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-of-
band,” 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 specifica-
tion shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter
which the applicant regards as his invention.” In Nauti-
lus, 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 histo-
ry, 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 indefinite-
ness . . . 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 underpin-
nings. “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 ex-
trinsic 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 deter-
mination 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,
10           ICON HEALTH & FITNESS, INC.   v. POLAR ELECTRO OY



and that the fact that there is a difference is alone suffi-
cient to render the claims definite and capable of con-
struction. See, e.g., Appellant Br. 57 (“‘in-band’ refers to
one pathway, and ‘out-of-band’ refers to a different path-
way.”) 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 fol-
     lows. First, “in-band communication” would be
     reasonably understood by those of skill in the art
     as communication to or from the exercise appa-
     ratus.      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 un-
     derstood by those of skill in the art as a device ca-
     pable of any communication other than the in-
     band communication.
J.A. 950.
    Polar’s expert does not disagree that the terms are in-
deed 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” be-
tween “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 infor-
    mation (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 com-
    munication” is missing from the claim. . . . “[I]n-
    band” and “out-of-band” are relative terms. The
    reference could be a particular “band” (or equiva-
    lent), 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 com-
    munication 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 de-
    termine how an “in-band communication” might
    differ from “communication” in the more general
    sense. One of ordinary skill in the art would un-
    derstand that the words of the claims are sup-
    posed     to   have     meaning,     and     “in-band
    communication” should be narrower (more limit-
    ing) than “communication”. But, unless the mean-
    ing can be elucidated from the specification or file
    history, there would be no way to draw this dis-
    tinction, 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 exacerbat-
ed 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 sys-
tem:
     The [“out-of-band communication”] device is re-
     quired 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 communi-
     cation device” because: a) it communicates with
     another element of structure (which is unspeci-
     fied) by a method of communication which is
     considered “out-of-band” relative to an unspeci-
     fied reference; or b) it communicates with a hu-
     man. . . . The “out-of-band communication device”
     could be the user’s cell phone, or a wired tele-
     phone, and there is not even an implied require-
     ment 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-of-
band” 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 find-
ings 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 argu-
ments 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.” Appel-
lant Br. 32; see id. at 31–44 (citing the specification of the
’351 patent for support). In this way, “in-band” function-
ality 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, specifica-
tion, 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 limita-
tions.” Appellee Br. 28. As such, Polar argues, this
distinction for purposes of claim construction and defi-
niteness, 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 ap-
peal.”). Icon disagrees. It argues that it is not presenting
a new scope of claim construction. Rather, it is “proffer-
ing 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 specifica-
tion 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 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 argu-
ments 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 “sepa-
rate and distinct.” Rather, Polar argues that the ambigu-
ous 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 cer-
tainty before one can determine whether the claimed
glycoprotein has a glycosylation different from that of
uEPO.” Id. (emphasis added). This court therefore af-
firmed the district court’s finding that the claims requir-
ing “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. “In-
band” 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 tes-
timony 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 cer-
tainty, 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 preclu-
sion 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
