`Patent No. 8,923,941
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner
`________________
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`______________________
`
`
`PETITIONER’S REQUEST FOR
`BRIEF ORAL ARGUMENT ON REMAND
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`- 1 -
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`IPR2017-00319
`Patent No. 8,923,941
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`Pursuant to the Board’s Order on Conduct of the Proceeding on Remand
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`(Paper No. 57) dated September 14, 2020, Petitioner Fitbit, Inc. (“Petitioner”)
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`hereby respectfully requests “a brief oral argument not to exceed twenty (20)
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`minutes per party.”
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`The Board has not set a date for oral argument on remand. Petitioner
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`requests that the Board not schedule the oral arguments for the following dates,
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`when counsel for Petitioner will be unavailable:
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` December 1, 2020; and
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` December 11, 2020.
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`Unless the March 13 Order requiring all oral arguments to occur
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`telephonically is still in effect, Petitioner respectfully requests that oral argument
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`take place in person at the Alexandria, VA, USPTO Headquarters. Likewise,
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`should arguments take place in person, Petitioner also respectfully requests that
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`both a projector with a laptop connector and an Elmo be available for use at oral
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`argument to display possible demonstratives and/or exhibits.
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`Petitioner requests twenty (20) minutes per side for oral argument in
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`IPR2017-00319.
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`The issues to be argued include:
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`1. The patentability of dependent claims 3-5 of U.S. Patent No.
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`8,923,941 on the grounds presented in the IPR petition, namely:
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`IPR2017-00319
`Patent No. 8,923,941
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` Whether claim 3 is obvious in light of Luo and Craw;
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` Whether claims 4-5 are obvious in light of Luo, Craw, and
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`Wolf; and
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` Whether claim 3 is obvious in light of Mault, Al-Ali, and Lee;
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`2. Whether the Board’s construction of the term “application-specific
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`interface (API)” has no significance, where the claimed “application-
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`specific interface” performs the same function as an application
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`programming interface, i.e., “enabl[ing] a particular application to
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`utilize data obtained from hardware”;
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`3. The patentability of claims 4 and 5, assuming their dependence from
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`claim 3, as rendered obvious over the combined teachings of Lou,
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`Craw, and Wolf;
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`4. Any other issues Patent Owner raised in their Responsive Brief on
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`Remand or any Sur-Reply Brief on Remand (to the extent Patent
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`Owner is authorized to file such a brief); and
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`5. Any other issues that the Board deems necessary for issuing a final
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`written decision.
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`Date: November 16, 2020
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`IPR2017-00319
`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: 212-849-7219
`Fax: 212-849-7100
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`Counsel for Petitioner Fitbit, Inc.
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`- 4 -
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`IPR2017-00319
`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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`The undersigned hereby certifies that the foregoing document was served in
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`its entirety on November 16, 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
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`Date: November 16, 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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`- 5 -
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