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`Filed on behalf of Valencell, Inc.
`By: Daniel F. Olejko (dolejko@bosfirm.com)
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`Bragalone Olejko Saad PC
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`901 Main St., Ste. 3800
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`Dallas, TX 75202
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`Tel: 214.785.6670
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`Fax: 214.785.6680
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FITBIT, INC.,1
`Petitioner,
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`v.
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`VALENCELL, INC.,
`Patent Owner.
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`Case IPR2017-003192
`U.S. Patent No. 8,923,941
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`PATENT OWNER’S AMENDED NOTICE OF APPEAL
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`1 Petitioner Apple Inc. (“Apple”) is no longer a party in this proceeding.
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`2 Case IPR2017-01555 has been joined with this proceeding.
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`Pursuant to the March 11, 2022 Order of the U.S. Court of Appeals for the
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`Federal Circuit in Valencell, Inc. v. Fitbit, Inc., et al., No. 21-2041 (Doc. 30), Patent
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`Owner Valencell, Inc. (“Valencell”) hereby files this Amended Notice of Appeal
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`from the Final Written Decision on Remand Determining All Challenged Claims
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`Unpatentable entered on April 5, 2021 (Paper 73) and the February 4, 2022 Order of
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`Andrew Hirshfeld, Commissioner for Patents, Performing the Functions and Duties
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`of the Under Secretary of Commerce for Intellectual Property and Director of the
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`United States Patent and Trademark Office, denying Valencell’s request for Director
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`review (Paper 79), and from all underlying and related findings, orders, decisions,
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`rulings, and opinions.
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), Valencell further indicates that the issues on
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`appeal may include, but are not limited to:
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`(1) the Board’s determination that Petitioner demonstrated by a preponderance
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`of the evidence that claim 3 of the ’941 patent is unpatentable as obvious under 35
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`U.S.C. § 103(a) over Luo in view of Craw;
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`(2) the Board’s determination that Petitioner demonstrated by a preponderance
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`of the evidence that claims 4–5 of the ’941 patent are unpatentable as obvious under
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`35 U.S.C. § 103(a) over Luo in view of Craw and Wolf; and
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`(3) whether Commissioner Hirshfeld had authority to review the Board’s
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`1
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`decision under the Appointments Clause, the Federal Vacancies Reform Act, or the
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`separation of powers.
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`Valencell further reserves the right to challenge any finding or determination
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`supporting or relating to the issues listed above, and to challenge any other issues
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`decided adversely to Valencell in the Board’s Final Written Decision on Remand
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`Determining All Challenged Claims Unpatentable or in any other order, decision,
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`ruling or opinion underlying that decision.
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`2
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`Dated: April 11, 2022
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`Respectfully submitted,
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`Daniel F. Olejko
`Attorney for Patent Owner
`Registration No. 76,958
`Bragalone Olejko Saad PC
`901 Main St., Ste. 3800
`Dallas, TX 75202
`Tel: 214.785.6675
`Email: dolejko@bosfirm.com
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`3
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this document was served via electronic
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`mail on April 11, 2022, to Petitioner at the following email addresses pursuant to its
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`consent in its Updated Mandator Notices at 1: jimglass@quinnemanuel.com,
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`samstake@quinnemanuel.com, and ogizivojnovic@quinnemanuel.com.
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`Daniel F. Olejko
`Attorney for Patent Owner
`Registration No. 76,958
`Bragalone Olejko Saad PC
`901 Main St., Ste. 3800
`Dallas, TX 75202
`Tel: 214.785.6675
`Email: dolejko@bosfirm.com
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`4
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