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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC. and
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-00319
`U.S. Patent No. 8,923,9411
`
`FITBIT, INC.’S NOTICE OF APPEAL
`
`
`1 Case IPR2017-01555 has been joined to this proceeding.
`
`
`
`
`
`Case IPR2017-00319
`U.S. Patent No. 8,923,941
`
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Petitioner
`
`Fitbit, Inc. appeals to the United States Court of Appeals for the Federal Circuit
`
`from the Final Written Decision of the Patent Trial and Appeal Board in Case
`
`No. IPR2075-00319, entered August 6, 2018 (Paper No. 43). In accordance with
`
`37 C.F.R. § 90.2(a)(3)(ii), Petitioner indicates that the issues on appeal include,
`
`but are not limited to the following:
`
`1. Whether the PTAB erred in finding that Petitioner has not shown by a
`preponderance of the evidence that claims 3-5 of U.S. Patent No.
`8,923,941 (“the ‘941 Patent”) are unpatentable.
`
`2. Whether the PTAB erred in finding that Petitioner has not shown by a
`preponderance of the evidence that claim 3 is unpatentable under 35
`U.S.C. § 103(a) as obvious in view of U.S. Patent Application No.
`2008/0200774 A1 to Luo, filed February 16, 2007; published August 21,
`2008 (“Luo”) and U.S. Patent Application Publication No. 2008/0133699
`A1 to Craw, filed February 16, 2007; published August 21, 2008
`(“Craw”).
`3. Whether the PTAB erred in finding that Petitioner has not shown by a
`preponderance of the evidence that claim 3 is unpatentable under 35
`U.S.C. § 103(a) as obvious in view of U.S. Patent No. 6,513,532 B2 to
`Mault et al., issued February 4, 2003 (“Mault”), U.S. Patent Application
`Publication No. 2003/0181798 (“Al-Ali”), and R.G. Lee et al. “A Mobile
`Care System with Alert Mechanism” IEEE Transactions on information
`Technology in Biomedicine, Vol. 11, Issue 5, September 2007 (“Lee”).
`
`
`
`
`
`Case IPR2017-00319
`U.S. Patent No. 8,923,941
`
`
`4. Whether the PTAB erred in finding that Petitioner has not shown by a
`preponderance of the evidence that claims 4-5 are unpatentable under 35
`U.S.C. § 103(a) as obvious in view of U.S. Patent Application No.
`2008/0200774 A1 to Luo, filed February 16, 2007; published August 21,
`2008 (“Luo”), U.S. Patent Application Publication No. 2008/0133699 A1
`to Craw, filed February 16, 2007; published August 21, 2008 (“Craw”)
`and U.S. Patent Application Publication No. 2007/0197881 A1 to Wolf et
`al., published August 23, 2007 (“Wolf”).
`5. Whether the PTAB erred in finding that Petitioner has not shown by a
`preponderance of the evidence that claims 4 and 5 are unpatentable under
`35 U.S.C. § 103(a) as obvious in view of Mault, Al-Ali, and International
`Patent Application Publication No. WO 2006/009830 to Behar et al.,
`published January 26, 2006 (“Behar”).
`6. Whether the PTAB erred in not providing any reason or rationale for its
`findings that Petitioner failed to show by a preponderance of the
`evidence that claims 3-5 are unpatentable under 35 U.S.C. § 103(a) in
`view of the foregoing obviousness combinations.
`7. Whether the PTAB erred in not reviewing whether claims 3-5 are
`unpatentable under 35 U.S.C. § 103(a) in view of the foregoing
`obviousness combinations.
`8. Whether the PTAB erred in not adopting Petitioner’s proposed
`construction of the term “application-specific interface (API).”
`9. Whether the PTAB erred in not applying its construction of the term
`“application-specific interface (API)” in Case IPR2017-00321, or in the
`alternative erred in not properly construing the term “application-
`specific interface (API).”
`10. Whether the PTAB erred in finding that the term “the application” in
`claim 4 did not contain a typographical error.
`11. Whether the PTAB erred in its findings regarding the dependency
`of claims 4-5.
`12. Whether the PTAB erred in finding claims 3-5 are not
`unpatentable.
`
`
`
`
`
`Case IPR2017-00319
`U.S. Patent No. 8,923,941
`
`
`13. Whether the PTAB erred in one or more procedural orders,
`discovery orders, or other findings and determinations in arriving
`at the erroneous conclusions in the Final Written Decision.
`Simultaneous with this submission, a copy of this Notice of Appeal is
`
`being filed with the Patent Trial and Appeal Board. In addition, this Notice of
`
`Appeal, along with the required docketing fees, is being filed with the Clerk’s
`
`Office for the United States Court of Appeals for the Federal Circuit.
`
`Date: October 5, 2018
`
`
`
`Respectfully submitted,
`
`
`
`By: /Harper S. Batts/
`Harper S. Batts, Reg. No. 50,822
`Customer Number 69849
`Sheppard, Mullin, Richter & Hampton LLP
`379 Lytton Avenue
`Palo Alto, CA 94301
`Telephone: (650) 815-2673
`E-mail: hbatts@sheppardmullin.com
`
`Counsel for Fitbit, Inc.
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. 42.6(e)(1), the parties have agreed to accept service
`
`by electronic means. I hereby certify that on October 5, 2018, I caused a copy of
`
`the foregoing document to be served via electronic mail to:
`
`COUNSEL FOR VALENCELL, INC:
`
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`T. William Kennedy (bkennedy@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Brian P. Herrmann (bherrman@bcpc-law.com)
`Marcus Benavides (mbenavides@bcpc-law.com)
`R. Scott Rhoades (srhoades@wriplaw.com)
`Sanford E. Warren (swarren@wriplaw.com)
`
` hereby certify that on October 5, 2018, I caused a copy of the foregoing
`
` I
`
`document to be served via Express Mail to the following:
`
`COUNSEL FOR VALENCELL, INC:
`
`Justin Kimble or
`Jeffrey Bragalone
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
`
`
`By: /Harper S. Batts/
`Harper S. Batts, Reg. No. 50,822
`
`
`
`
`
`
`
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