`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner
`________________
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`________________
`
`
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`IDENTIFICATION OF ALLEGEDLY NEW ARGUMENTS AND
`EVIDENCE
`
`06938-00001/12405210.1
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`
`
`Prior Support for Alleged New “Evidence”:
`
`Generally: Paper 57 (Fitbit may address “the grounds presented in” the Petition).
`
`Craw ¶ 4: Pet. at 19 (citing “Ex. 1056, ¶0004”).
`
`Craw ¶ 48, 149, 202-203: Pet. at 27 (citing “Ex. 1056, ¶0048, 0149, 0202-0203”).
`
`Craw ¶ 208, Fig. 9A: Pet. at 27 (“[A]s discussed above, Craw suggests configuring
`
`this data into a serial output string of physiological and physical activity
`
`parameters.”); Pet. at 25 (citing “Ex. 1056, ¶¶0200-0216” as “suggest[ing]
`
`serializing data”); Craw ¶208 (describing Fig. 9A); Pet. at 21 (showing Fig. 9A).
`
`IPR2017-00321: not evidence.
`
`Prior Support for Alleged New “Arguments” for Claim 3
`
`Paper 57 at 10-11 (Fitbit may address “whether our narrowing construction of the
`
`term ‘application-specific interface (API)’ has no significance”).
`
`Craw’s “interface”: Pet. at 27 (citing “Ex. 1056, ¶0256”); Ex. 1056, ¶0256 (“The
`
`data dictionary used with DMOIB and string table classes may act as interfaces …
`
`.”); Paper 40 at 4-5 (“The grounds presented provide an API that is ‘utilized’ for a
`
`particular application.”); Paper 13 at 2-4 (discussing and quoting Craw ¶48, 202).
`
`Lee’s “interface”: Pet. at 57 (discussing “mobile phone application programs”).
`
`Prior Support for Alleged New Arguments for Clams 4-5
`
`Paper 57 at 10-11 (Fitbit may address “the patentability of claims 4 and 5,
`
`assuming their dependence from claim 3”); Paper 40 at 7.
`
`
`
`
`
`1
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`
` 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.
`
`
`Date: November 9, 2020
`
`
`
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`
`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
`
`The undersigned hereby certifies that the foregoing document was served in
`
`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
`
`
`
`
`
`
`
`
`
` 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.
`
`3
`
`
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