`
`
`
`Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (justin@nbafirm.com)
`
`Nelson Bumgardner Albritton PC
`
`3131 West 7th St., Ste. 300
`
`Fort Worth, TX 76107
`
`Tel: 817.377.9111
`
`Fax: 817.377.3485
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FITBIT, INC.,1
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-003192
`U.S. Patent No. 8,923,941
`
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`1 Petitioner Apple Inc. (“Apple”) is no longer a party in this proceeding.
`
`2 Case IPR2017-01555 has been joined with this proceeding.
`
`
`
`
`
`
`
`
`
`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
`
`Pursuant to 37 C.F.R. § 90.2 and 35 U.S.C. § 142, notice is hereby given that
`
`Patent Owner Valencell, Inc. (“Valencell”) appeals to the United States Court of
`
`Appeals for the Federal Circuit from the Final Written Decision on Remand
`
`Determining All Challenged Claims Unpatentable entered on April 5, 2021
`
`(Paper 73) and from all underlying and related findings, orders, decisions, rulings,
`
`and opinions.
`
`For the limited purpose of providing the Director with the information
`
`requested in 37 C.F.R. § 90.2(a)(3)(ii), Valencell further indicates that the issues on
`
`appeal may include, but are not limited to:
`
`(1) the Board’s determination that Petitioner demonstrated by a preponderance
`
`of the evidence that claim 3 of the ’941 patent is unpatentable as obvious under 35
`
`U.S.C. § 103(a) over Luo in view of Craw;
`
`(2) the Board’s determination that Petitioner demonstrated by a preponderance
`
`of the evidence that claims 4–5 of the ’941 patent are unpatentable as obvious under
`
`35 U.S.C. § 103(a) over Luo in view of Craw and Wolf;
`
`(3) whether, for the purposes of the Constitution’s appointments clause,
`
`administrative patent judges of the U.S. Patent and Trademark Office are principal
`
`officers who must be appointed by the president with the Senate’s advice and
`
`consent, or “inferior Officers” whose appointment Congress has permissibly vested
`
`in a department head; and
`
`1
`
`
`
`
`
`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
`
`(4) whether, if administrative patent judges are principal officers, the Federal
`
`Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019),
`
`properly cured any appointments clause defect in the current statutory scheme
`
`prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.
`
`Valencell further reserves the right to challenge any finding or determination
`
`supporting or relating to the issues listed above, and to challenge any other issues
`
`decided adversely to Valencell in the Board’s Final Written Decision on Remand
`
`Determining All Challenged Claims Unpatentable or in any other order, decision,
`
`ruling or opinion underlying that decision.
`
`Simultaneous with this submission, this Notice of Appeal are being filed with
`
`the Clerk of the United States Court of Appeals for the Federal Circuit, together with
`
`the requisite fee in the amount of $500. In addition, a copy of this Notice of Appeal
`
`is being filed with the Patent Trial and Appeal Board and served upon counsel of
`
`record for Petitioner.
`
`
`
`
`
`
`
`2
`
`
`
`
`
`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
`
`Dated: June 7, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Nelson Bumgardner Albritton PC
`3131 West 7th St., Ste. 300
`Fort Worth, TX 76107
`Tel: 817.377.9111
`Email: justin@nbafirm.com
`
`3
`
`
`
`
`
`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that this document was served via electronic
`
`mail on June 7, 2021, to Petitioner via counsel, James M. Glass, Sam Stake, and Ogi
`
`Zivojnovic
`
`at
`
`the
`
`
`addresses:
`
`jimglass@quinnemanuel.com,
`
`samstake@quinnemanuel.com, ogizivojnovic@quinnemanuel.com, pursuant to
`
`Petitioner’s consent in its Updated Mandatory Notices at page 2.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Nelson Bumgardner Albritton PC
`3131 West 7th St., Ste. 300
`Fort Worth, TX 76107
`Tel: 817.377.9111
`Email: justin@nbafirm.com
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
