Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 57
`Entered: September 14, 2020
`
`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
`Patent 8,923,941 B2
`____________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`1 As Petitioner Fitbit, Inc. confirmed during the remand conference call on
`September 4, 2020, Petitioner Apple Inc. is no longer a party in this
`proceeding. See Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1114 (Fed.
`Cir. 2020) (“Following the [Final Written Decision], Apple withdrew from
`the proceeding.”).
`2 Case IPR2017-01555 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 57
`Entered: September 14, 2020
`
`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
`Patent 8,923,941 B2
`____________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`1 As Petitioner Fitbit, Inc. confirmed during the remand conference call on
`September 4, 2020, Petitioner Apple Inc. is no longer a party in this
`proceeding. See Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1114 (Fed.
`Cir. 2020) (“Following the [Final Written Decision], Apple withdrew from
`the proceeding.”).
`2 Case IPR2017-01555 has been joined with this proceeding.
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`On October 5, 2018, Petitioner Fitbit, Inc.3 filed a Notice of Appeal
`(IPR2019-00319, Paper 45) with respect to the our decision that challenged
`claims 3–5 were not unpatentable on the grounds asserted in the Petition
`(IPR2019-00319, Paper 43 (“FWD”), 11–22). Petitioner Apple Inc.
`challenged the patentability of claims 1–13 in its Petition. IPR2017-00319,
`Paper 1 (“Pet.”), 27, 29–32, 55–61. Initially, we instituted review of all of
`the challenged claims, except for claims 3–5. IPR2017-00319, Paper 10, 2.
`Petitioner Fitbit, Inc. filed its own Petition for inter partes review of the
`instituted claims and a timely Motion for Joinder with the instituted
`proceeding (IPR2017-01555, Papers 2 and 3), and we instituted inter partes
`review of all of the challenged claims, which did not include claims 3–5, and
`granted Petitioner’s Fitbit, Inc.’s Motion for Joinder (IPR2017-01555,
`Paper 9).
`After briefing had concluded and an oral argument had been heard,
`but before the issuance of a Final Written Decision, the U.S. Supreme Court
`held that “a final written decision under 35 U.S.C. § 318(a) shall be with
`respect to the patentability of all of the claims challenged in the petition.”
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018) (emphasis added). As
`noted above, Petitioner Apple Inc. had challenged claims 3–5 in its Petition,
`but we did not institute inter partes review with respect to those claims. We
`issued an order modifying our Decision on Institution to include
`Petitioner Apple Inc.’s challenges to claims 3–5 and granting the parties
`additional briefing regarding those newly institutes challenges. IPR2017-
`
`
`3 For clarity in this order, we refer to “Petitioner Fitbit, Inc.” and “Petitioner
`Apple Inc.”; however, we anticipate that it will be sufficient to refer to
`Petitioner Fitbit, Inc. as “Petitioner” in future papers.
`
`2
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`00319, Paper 39. After considering the additional briefing, we issued a Final
`Written Decision finding that claims 1, 2, and 6–13 are unpatentable, but
`that claims 3–5 are not unpatentable. FWD 77–78.
`As noted above, although Petitioner Fitbit, Inc. did not challenge
`claims 3–5 in its Petition, Petitioner Fitbit Inc. appealed our determination
`that claims 3–5 are not unpatentable. See IPR2017-01555, Paper 2, 1. In
`particular, we determined that because Petitioner Apple Inc.’s challenge to
`claim 3 relies on an improper construction of the term “application-specific
`interface (API),” the challenge to claim 3 based on the application of the
`combined teachings of prior art references under that construction was
`unpersuasive. FWD 11–18. Similarly, we determined that claims 4 and 5,
`dependent from claim 1, include an antecedent basis defect; namely, both
`claims recite “the application” for which claim 1 provides no antecedent
`basis. Thus, either those claims properly depend from claim 3, which recites
`“an application,” or claim 4 should recite “an application.” See id. at 18.
`Although the parties later agreed on the apparent dependency error, we
`declined to speculate on which error was present, and, consequently, we
`were unpersuaded by Petitioner Apple Inc.’s challenge to claims 4 and 5. Id.
`at 18–22.
`On July 8, 2020, the U.S. Court of Appeals for the Federal Circuit
`(“Federal Circuit”) determined that despite Petitioner Apple Inc.’s
`withdrawal and Petitioner Fitbit, Inc.’s failure to challenge claims 3–5 in its
`own Petition, “Fitbit’s rights as a joined party applies to the entirety of the
`proceedings and includes the right of appeal, conforming to the statutory
`purpose of avoiding redundant actions by facilitating consolidation, while
`preserving statutory rights, including judicial review.” Fitbit, Inc. v.
`Valencell, Inc., 964 F.3d 1112, 1115 (Fed. Cir. 2020). Thus, we recognize
`
`3
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`Fitbit, Inc. as the remaining Petitioner, and we withdraw our requirement
`that Petitioner Fitbit, Inc. obtain our authorization before making any filings
`in IPR2017-00319. See IPR2017-01555, Paper 9, 7. Further, the Federal
`Circuit affirmed our claim construction, but vacated our decision that
`claim 3 is not unpatentable. Fitbit, 964 F.3d at 1119. The Federal Circuit
`remanded the determination of the patentability of claim 3 in light of the
`cited references under our construction of the term “application-specific
`interface (API).” Id. at 1118. The Federal Circuit also vacated our decision
`that claims 4 and 5 were not unpatentable due to the “absence of antecedent”
`basis. Id. at 1120. The Federal Circuit instructed that “[o]n remand the
`Board shall determine patentability of corrected claims 4 and 54 on the
`asserted grounds of obviousness,” based on their dependence from claim 3,
`as agreed to by the parties. Id.
`Pursuant to Patent Trial and Appeal Board (PTAB), Standard
`Operating Procedure (SOP) 9, which describes procedures for decisions
`remanded from the Federal Circuit for further proceedings, the parties
`conferred to discuss procedures for this review upon remand. Subsequently,
`a conference call was held on September 4, 2020, between Administrative
`Patent Judges McNamara, Arpin, and McShane, and counsel for the parties,
`including James M. Glass and Sam Stake of Quinn Emanuel Urquhart &
`Sullivan, LLP, for Petitioner, and Justin B. Kimble of Bragalone Conroy PC,
`for Patent Owner, to discuss the procedure for this review upon remand.
`In accordance with the parties’ conference, the parties agree that
`limited and consecutive briefing is appropriate and that Petitioner Fitbit, Inc.
`
`
`4 The Federal Circuit determines that the Board has authority to correct
`certain claim errors. Fitbit, 964 F.3d at 1119-20.
`
`4
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`may submit an opening brief twenty-one days (21) after the issuance of this
`order, followed twenty-one days (21) later by Patent Owner’s response brief.
`The parties disagree, however, (1) on the length of each brief; (2) whether
`Petitioner is entitled to file a reply brief and, if so, its length; (3) the scope of
`permitted briefing; (4) whether the parties are permitted to submit
`supplemental evidence and under what procedures; and (5) whether
`additional oral argument is necessary or appropriate.
`Having heard arguments from each party during our conference call,
`we determine that Petitioner Fitbit, Inc. is authorized to file an opening brief
`of not more than ten (10) pages, which may address the patentability of
`claims 3–5 of Patent No. US 8,923,941 B2, on the grounds presented in the
`Petitioner Apple Inc.’s Petition, namely:
`Challenged Claim(s)
`References
`Basis
`3
`Luo and Craw
`35 U.S.C. § 103(a)
`4 and 5
`Luo, Craw, and Wolf
`35 U.S.C. § 103(a)
`3
`Mault, Al-Ali, and Lee
`35 U.S.C. § 103(a)
`4 and 5
`Mault, Al-Ali, and Behar 35 U.S.C. § 103(a)
`FWD 9 (citing Pet. 8–9); see Exs. 1042 (“Wolf”), 1055 (“Lou”), 1056
`(“Craw”), 1057 (“Mault”), 1058 (“Al-Ali”), 1059 (“Lee”), 1061 (Behar).
`In its decision, the Federal Circuit noted that “[t]he Board’s narrowing
`construction [of the term “application-specific interface (API)”] may have
`no significance, where, as here, the claimed ‘application-specific interface’
`performs the same function as an application programming interface, i.e.,
`‘enabl[ing] a particular application to utilize data obtained from hardware.’
`On remand the Board may consider this aspect.” Fitbit, 964 F.3d at 1117.
`Petitioner may address this aspect in its opening brief. Further, Petitioner
`may address the patentability of claims 4 and 5, assuming their dependence
`from claim 3, as rendered obvious over the combined teachings of Lou,
`
`5
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`Craw, and Wolf and/or over the combined teachings of Mault, Al-Ali, and
`Behar. See id. at 1120 (“The Board’s Final Written Decision on the ground
`of ‘absence of antecedent’ basis is vacated. On remand the Board shall
`determine patentability of corrected claims 4 and 5 on the asserted grounds
`of obviousness.”). Petitioner may address the patentability of claims 4 and 5
`in its opening brief. Moreover, if Petitioner chooses to argue that claims 4
`and 5, which depend from claim 3, are rendered obvious over the combined
`teachings of Mault, Al-Ali, and Behar, Petitioner shall address in its opening
`brief the apparent contradiction between this challenge and the challenge to
`claim 3 as rendered obvious over the combined teachings of Mault, Al-Ali,
`and Lee. In any event, Petitioner’s opening brief shall be limited to those
`challenges presented in Petitioner Apple Inc.’s Petition. SAS, 138 S. Ct. at
`1355 (“From the outset, we see that Congress chose to structure a process in
`which it’s the petitioner, not the Director, who gets to define the contours of
`the proceeding.”).
`Petitioner’s opening brief is strictly limited to these issues. We
`further determine that Patent Owner is authorized to file a response brief of
`not more than ten (10) pages, which is strictly limited to responding to
`arguments raised by Petitioner Fitbit, Inc. in its opening brief. No new
`arguments may be presented in the response brief. Because Petitioner bears
`the burden of persuasion with respect to the patentability of claims 3–5,
`Petitioner Fitbit, Inc. is authorized to file a reply brief of not more than
`four (4) pages, which is strictly limited to replying to arguments raised by
`Patent Owner in its response brief. No new arguments may be presented in
`the reply brief. Upon the filing of Petitioner Fitbit, Inc.’s reply brief, Patent
`Owner may request authorization to file a sur-reply brief, and we may
`authorize the filing of a limited sur-reply brief. See Patent Trial and Appeal
`
`6
`
`
`
`Petitioner’s Reply
`Brief
`
`Not more than four (4)
`pages
`
`IPR2017-00319
`Patent 8,923,941 B2
`Board Consolidated Trial Practice Guide, 73–74 (Nov. 2019).
`The briefs shall be filed according to the following schedule:
`Brief
`Date
`Page Limit
`October 5, 2020 (21 days
`Petitioner’s Opening
`Not more than ten (10)
`Brief
`after schedule is set)
`pages
`October 26, 2020 (21
`Patent Owner’s
`Not more than ten (10)
`Response Brief
`days after filing of the
`pages
`Opening Brief)
`November 9, 2020 (14
`days after filing of the
`Response Brief)
`No other briefing is authorized at this time.
`
`As noted above, the parties disagree on the need for the submission of
`supplemental evidence. During the conference call, Petitioner requested to
`submit a supplemental expert declaration of no more than twelve (12) pages
`with its opening brief. Petitioner proposed that Patent Owner also is
`permitted to submit a supplemental expert declaration of no more than
`twelve (12) pages with its response brief. Petitioner further proposes that
`each party would be permitted to depose the other’s expert regarding its
`supplemental declaration. Petitioner points to no suggestion in the Federal
`Circuit’s decision that we should or need to receive supplemental evidence
`in this remand. Further, in SOP 9, the Office states:
`In most cases, it will not be necessary to re-open the evidentiary
`record to new testimonial or documentary evidence. A party
`seeking to re-open the evidentiary record should be prepared to
`demonstrate why the evidence already before the Board is
`inadequate and show good cause why additional evidence is
`necessary.
`PTAB SOP 9, App. 2, 6–7. Here, after hearing Petitioner’s arguments
`during our conference call, we are not persuaded that Petitioner has shown
`why the existing evidentiary record is inadequate or why additional evidence
`
`7
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`is necessary. See, e.g., Ex. 1003, 33–34 (discussing construction of
`“application specific interface (API)” and “the application”), 52–53
`(obviousness of claim 3 over Lou and Craw), 56–59 (obviousness of claims
`4 and 5 over Lou, Craw, and Wolf), 90–96 (obviousness of claims 3 over
`Mault, Al-Ali, and Lee and of claims 4 and 5 over Mault, Al-Ali, and
`Behar). Further, we are not persuaded that developing the evidentiary record
`in the manner proposed by Petitioner could be achieved within the briefing
`schedule, to which the parties have agreed. See PTAB SOP 9, App. 2, 7
`(“The panel will also consider how much additional time will be necessary
`to develop a new evidentiary record.”); see also 37 C.F.R. § 42.1(b) (“This
`part shall be construed to secure the just, speedy, and inexpensive resolution
`of every proceeding.”). Moreover, during the conference call, Petitioner did
`not argue that the evidentiary record was insufficient to afford due process.
`Instead, during the inter partes review, Petitioner Apple Inc. expressly
`argued that, even under our construction of the term “application-specific
`interface (API),” now affirmed by the Federal Circuit, the Petition is
`sufficient to show that claim 3–5 are rendered obvious over the combined
`teachings of the applied references. IPR2017-00319, Paper 40, 4–5, 7; see
`PTAB SOP 9, App. 2, 8 (noting that, in the case of an erroneous claim
`interpretation, additional briefing, but not additional evidence, may be
`appropriate). Thus, we are not persuaded that supplemental evidence is
`appropriate or necessary in this proceeding, and neither party is authorized
`to submit supplemental evidence.
`
`Finally, Petitioner requests that we grant a brief oral argument
`because, among other reasons, the argument would be helpful to the Board;
`Patent Owner opposes this request. In PTAB SOP 9, the Office explains,
`“[i]n most cases, an additional oral hearing will not be authorized.
`
`8
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`Normally, the existing record and previous oral argument will be sufficient.
`However, in those situations where new evidence is permitted, the panel
`may authorize additional oral argument.” PTAB SOP 9, App. 2, 7. Because
`the submission of new evidence is not permitted, the Board normally would
`not authorize additional oral argument. Nevertheless, we note that here
`Petitioner Fitbit, Inc. has been in an understudy role throughout this inter
`partes review. Thus, it may be appropriate to hear directly from
`Petitioner Fitbit, Inc., and oral argument may assist us in resolving the
`remanded issues. Therefore, upon completion of the scheduled briefing,
`Petitioner Fitbit, Inc. is authorized to file a request for a brief oral argument
`not to exceed twenty (20) minutes per party.
`During the conference call, we also noted that Petitioner Fitbit, Inc.
`had granted a power of attorney to its lead counsel, Mr. Batts, and back-up
`counsel, Mr. Taylor. IPR2017-01555, Paper 1. Later, Petitioner Fitbit, Inc.
`filed an updated Mandatory Notice adding a second back-up counsel,
`Mr. Ponder. IPR2017-00319, Papers 42. Those attorneys continued to
`represent Petitioner Fitbit, Inc. during the inter partes review, but Mr. Batts
`and Mr. Ponder subsequently changed firms and only those two attorneys
`filed the Notice of Appeal (IPR2017-00319, Paper 45). We note that
`Petitioner Fitbit, Inc. did not update its Mandatory Notices to reflect its
`counsels’ change of firm or to submit a new power of attorney indicating a
`change of counsel, nor did Mr. Taylor request authorization file a motion to
`withdraw. 37 C.F.R. §§ 42.8(a)(3) (“Each notice listed in paragraph (b) of
`this section must be filed with the Board: . . . (3) By either party, within 21
`days of a change of the information listed in paragraph (b) of this section
`stated in an earlier paper.”), 42.10(e) (“Counsel may not withdraw from a
`proceeding before the Board unless the Board authorizes such withdrawal.”).
`
`9
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`As discussed during the conference call, Petitioner Fitbit, Inc. shall clarify
`the status of Mr. Taylor in this review and either file an updated mandatory
`notice accompanied by appropriate supporting documents to clarify
`Mr. Taylor’s status or inform us of Mr. Taylor’s request for authorization to
`file a motion to withdraw.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner Apple Inc. is removed from the caption of
`this review, and Petitioner Fitbit, Inc. is authorized to make permitted filings
`in IPR2017-00319 without our prior authorization;
`FURTHER ORDERED that Petitioner, Fitbit, Inc., and Patent Owner
`are authorized to file additional briefs according to the following schedule:
`Brief
`Date
`Page Limit
`October 5, 2020 (21 days
`Petitioner’s Opening
`Not more than ten (10)
`Brief
`after schedule is set)
`pages
`October 26, 2020 (21
`Patent Owner’s
`Not more than ten (10)
`Response Brief
`days after filing of the
`pages
`Opening Brief)
`November 9, 2020 (14
`days after filing of the
`Response Brief)
`FURTHER ORDERED that, upon the filing of Petitioner Fitbit, Inc.’s
`reply brief, Patent Owner may request authorization to file a sur-reply brief;
`FURTHER ORDERED that Petitioner Fitbit, Inc.’s opening brief
`shall be limited to addressing three issues:
`(1) the patentability of claims 3–5 of Patent No. US 8,923,941 B2, on
`the grounds presented in the Petitioner’ Apple Inc.’s Petition,
`namely:
`References
`Luo and Craw
`Luo, Craw, and Wolf
`
`Challenged Claim(s)
`3
`4 and 5
`
`Basis
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`10
`
`Petitioner’s Reply
`Brief
`
`Not more than four (4)
`pages
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`3
`35 U.S.C. § 103(a)
`Mault, Al-Ali, and Lee
`35 U.S.C. § 103(a) 4 and 5
`Mault, Al-Ali, and Behar
`(2) whether our narrowing construction of the term “application-
`specific interface (API)” has no significance, where the claimed
`“application-specific interface” performs the same function as an
`application programming interface, i.e., “enabl[ing] a particular
`application to utilize data obtained from hardware”; and
`(3) the patentability of claims 4 and 5, assuming their dependence
`from claim 3, as rendered obvious over the combined teachings of
`Lou, Craw, and Wolf and/or Mault, Al-Ali, and Behar;
`FURTHER ORDERED that Patent Owner’s response brief is strictly
`limited to responding to arguments raised by Petitioner Fitbit, Inc. in its
`opening brief and Petitioner Fitbit, Inc.’s reply brief is strictly limited to
`responding to arguments raised by Patent Owner in its response brief;
`FURTHER ORDERED that submission of supplemental evidence is
`not authorized;
`FURTHER ORDERED that upon completion of the scheduled
`briefing, Petitioner Fitbit, Inc. is authorized to file a request for a brief oral
`argument not to exceed twenty (20) minutes per party; and
`FURTHER ORDERED that Petitioner Fitbit, Inc. shall clarify the
`status of its counsel, Mr. Taylor, in this inter partes review and either file an
`updated mandatory notice, accompanied by appropriate supporting
`documents, to clarify Mr. Taylor’s status or inform us of Mr. Taylor’s
`request for authorization to file a motion to withdraw.
`
`
`
`11
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`PETITIONER:
`
`James M. Glass
`Sam Stake
`Ognjen Zivojnovic
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`sstake@quinnemanuel.com
`ogizivojnovic@quinnemanuel.com
`
`PATENT OWNER:
`
`Justin B. Kimble
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`
`Nicholas Kliewer
`NKliewer @bcpc-law.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`
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