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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.,
`Petitioner,
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`v.
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`VALENCELL, INC.,
`Patent Owner
`________________
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`________________
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`PETITIONER’S REPLY BRIEF ON REMAND
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`Valencell had ten pages to rebut Fitbit’s argument that remaining dependent
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`claim 3-5 of the ’941 patent are invalid. Valencell spent the first eight of those
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`pages addressing Apple’s Petition and procedural issues already resolved by the
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`Board (Paper 57), and only the final two pages responding to Fitbit’s brief on
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`remand. Valencell did not present any separate validity argument for claims 4-5.
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`The Board is left with a one-sided record that claims 3-5 are obvious over the prior
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`art. And because the IPR Petition included Fitbit’s prior art combinations,
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`Valencell’s procedural arguments lack merit. The Board should, therefore, hold
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`claims 3-5 of the ’941 patent invalid.
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`I.
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`Valencell Has No Response on the Merits
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`Valencell presents only cursory arguments that claim 3 is valid, and fails to
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`rebut that claims 3-5 are obvious in view of the petitioned grounds.
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`First, Valencell characterizes the Federal Circuit’s statement that “[t]he
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`Board’s narrowing construction may have no significance” as “dicta” (Resp. at 9),
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`but does not dispute claim 3 is obvious in the Federal Circuit’s view. The identified
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`prior art interfaces “enable[] a particular application” (e.g., Craw’s health-
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`monitoring application and Lee’s mobile phone application) “to utilize data
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`obtained from hardware,” and therefore render obvious the claimed “application-
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`specific interface” under the Board’s and Federal Circuit’s construction. Br. at 6.
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`Second, Valencell argues Craw’s interfaces are not “application-specific
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`interfaces” because they “are designed to be interoperable” with multiple
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`applications. Resp. at 9-10. As the Federal Circuit concluded, however, “[t]he
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`Board’s narrowing construction may have no significance” because an
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`“application-specific interface” directed to a particular application and an API
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`“perform[] the same function.” Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1117
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`(Fed. Cir. 2020) (quoting Valencell’s expert admitting “application-specific
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`interface” and API are “basically the same”). Significantly, Valencell does not
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`dispute Craw’s teachings that its dictionary-based interfaces “[a]ct[] on the
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`received information” in a way that “depend[s] on the goal of the application.”
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`Craw ¶¶ 48, 256. Craw thus expressly teaches interfaces directed to a “particular
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`application,” regardless of whether those interfaces are also “interoperable” with
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`other applications.
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`Third, Valencell challenges Fitbit’s obviousness combinations by arguing
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`Fitbit failed to address “unexpected results,” but Valencell does not challenge the
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`predictable nature of the proposed combination. See Resp. at 10; see also E.I.
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`DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1011 (Fed. Cir. 2018)
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`(discussing “shift[ing] the burden of production to the patent owner to
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`demonstrate . . . unexpected results”). Valencell also contends “Fitbit’s only reason
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`for combining Craw and Wolf with Luo is their similar technology and problems
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`addressed.” Resp. at 10. The Board already held it was obvious to combine Luo
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`with Craw in view of these similarities, and Valencell did not appeal that decision.
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`FWD at 32, 42. There is no reason for the Board to second-guess that holding now,
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`nor does Valencell rebut the motivation for combining Wolf with Luo and Craw in
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`order to further “improve health state determinations.” Br. at 9.
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`II. Valencell’s Procedural Arguments Cannot Save Claims 3-5
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`The Petition challenged claim 3 based on Luo and Craw (Ground 1) or
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`Mault, Al-Ali, and Lee (Ground 7) and claims 4-5 based on Luo, Craw, and Wolf
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`(Ground 2). Fitbit’s opening brief on remand relied on those same Grounds. This
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`should end the inquiry. None of Valencell’s arguments to the contrary have merit.
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`Valencell conflates “grounds” with specific “arguments.” See Paper 57 at
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`10-11 (allowing Fitbit to address “the patentability of claims 3-5 . . . on the
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`grounds presented in” the Petition). Fitbit should not be limited to the specific
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`words in the Petition, especially since the Board adopted a new construction in its
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`institution decision, and in view of the Federal Circuit’s instructions on remand.
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`See Ericsson Inc. v, Intellectual Ventures I LLC, 901 F.3d 1374, 1380 (Fed. Cir.
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`2018) (decision after SAS finding Board erred in not considering petitioner’s reply
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`arguments regarding prior art disclosure of “encoding” under the Board’s
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`construction). In any event, Fitbit presented the same arguments at least in its
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`additional briefing (Paper 40), which in turn cites to the request for rehearing
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`(Paper 13), and which Valencell did not move to exclude.
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`Nor is Fitbit relying on new “evidence” in its opening brief. Fitbit relies on
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`the same prior art combinations, and even the same paragraphs of Craw, as in the
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`Petition. See Fitbit’s Response to Identification. Valencell is also wrong to equate
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`“uncited portions of Craw” to “new evidence.” Resp. at 7. “Evidence consists of
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`affidavits, transcripts of depositions, documents, and things” (37 C.F.R. § 42.63),
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`and not cites thereto. Nor is the Board’s prior rejection in IPR2017-00321 of the
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`same limitations over Craw new “evidence.” Claim 3 is unpatentable over Craw
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`regardless of whether the Board consults those findings.
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`For claim 4-5, Valencell argues Fitbit should not be allowed to make any
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`invalidity argument based on the correct dependency. But the Board permitted
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`Fitbit to address “the patentability of claims 4 and 5, assuming their dependency
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`from claim 3” (Paper 57 at 10), and the Federal Circuit instructed the Board to
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`“determine patentability of corrected claims 4 and 5 on the asserted grounds of
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`obviousness.” Fitbit, Inc., 964 F.3d at 1120. Accordingly, Valencell had every
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`opportunity to rebut Fitbit’s invalidity arguments for claims 3-5, but time and again
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`failed to do so. The Board should dispose of the last remnants of the ’941 patent.
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
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`Counsel for Petitioner Fitbit, Inc.
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`Date: November 9, 2020
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`5
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
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`
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`The undersigned hereby certifies that the foregoing document was served in
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`its entirety on November 9, 2020 upon the following parties via Electronic Mail.
`
`Justin B. Kimble
`Jeffrey R. Bragalone
`Daniel F. Olejko
`T. William Kennedy
`Jonathan H. Rastegar
`Marcus Benavides
`R. Scott Rhoades
`Sanford E. Warren, Jr
`
`BRAGALONE CONROY PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`JKimble-IPR@bcpc-law.com
`
`jbragalone@bcpc-law.com
`dolejko@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`Date: November 9, 2020
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`
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` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Petitioner Fitbit, Inc.
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`6
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