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`Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
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`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
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`Daniel F. Olejko (dolejko@bcpc-law.com)
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`Bragalone Conroy PC
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`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
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`Tel: 214.785.6670
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`Fax: 214.786.6680
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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.,1
`Petitioner,
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`v.
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`VALENCELL, INC.,
`Patent Owner.
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`Case IPR2017-003192
`U.S. Patent No. 8,923,941
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`PATENT OWNER’S RESPONSE IN OPPOSITION TO PETITIONER’S
`REQUEST FOR ORAL ARGUMENT ON REMAND
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`1 Petitioner Apple Inc. (“Apple”) is no longer a party in this proceeding.
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`2 Case IPR2017-01555 has been joined with this proceeding.
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`Patent Owner Valencell, Inc. submits this Response in Opposition to
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`Petitioner’s Request for Oral Argument on Remand and to address the Board’s
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`November 17 email.
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`Patent Owner opposes Petitioner’s request for oral argument because this case
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`does not present circumstances that justify additional oral argument on remand. The
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`Board’s Standard Operating Procedures (“SOP”) state that “[i]n most cases, an
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`additional oral hearing will not be authorized” because “the existing record and
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`previous oral argument will be sufficient.” SOP 9, App’x 2, at 7. The panel may
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`authorize additional oral argument “in those situations where new evidence is
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`permitted.” Id. Further, oral argument may be warranted “if necessary to afford due
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`process” where the Federal Circuit’s remand is based on a lack of due process or
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`denial of Administrative Procedure Act (“APA”) rights. Id. at 8. Neither of these
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`circumstances is present.
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`The Board denied Petitioner’s request to submit new evidence on remand.
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`Paper 57 at 7-8. Further, the Federal Circuit’s remand is not based on a denial of
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`Petitioner’s due process or APA rights. Indeed, Petitioner did not request oral
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`argument on claims 3-5 in the original proceeding, and Petitioner did not argue on
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`appeal that the Board’s failure to hold an additional oral argument regarding claims
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`3-5 in the original proceeding deprived Petitioner of its due process or APA rights.
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`Rather, the Federal Circuit remanded this case because (1) the Board did not
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`1
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`adequately explain why Apple’s Petition failed to demonstrate that claim 3 is
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`unpatentable under the proper construction of “application-specific interface (API)”
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`and (2) the Board did not consider whether Apple’s Petition demonstrated that
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`corrected claims 4-5 are unpatentable. See Fitbit Inc. v. Valencell, Inc., 964 F.3d
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`1112, 1118-20 (Fed. Cir. 2020). In these circumstances, oral argument is not
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`necessary. SOP 9, App’x 2, at 8 (oral argument is not necessary where the Board
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`failed to consider evidence or provided an inadequate explanation).
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`While the Board suggested in its September 14 Order that it may be
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`appropriate to hear directly from Petitioner and that oral argument may assist the
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`Board in resolving the remanded issues, Petitioner does not explain why oral
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`argument is necessary. As noted, the Board properly denied Petitioner’s request to
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`submit new evidence on remand, and Petitioner never argued on appeal that an
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`additional hearing on claims 3-5 would be necessary to preserve Petitioner’s due
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`process and APA rights. In addition, Petitioner does not explain why the parties’
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`briefing fails to sufficiently apprise the Board of the issues on remand. Notably, the
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`Federal Circuit’s remand is directed to whether Apple’s Petition sufficiently
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`demonstrates that claims 3-5 are obvious—not whether Fitbit’s new arguments on
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`remand might demonstrate obviousness of the claims.
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`Petitioner suggests that oral argument is necessary to provide Petitioner with
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`an opportunity to respond to “new issues” that might be raised in Patent Owner’s
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`2
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`surreply. But Patent Owner recognizes that any surreply should be strictly limited to
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`responding to arguments raised by Petitioner in its reply brief and that its surreply
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`cannot raise new issues.
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`Nevertheless, in the event that the Board determines that oral argument is
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`necessary, Patent Owner respectfully requests that the Board grant Patent Owner’s
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`request for a surreply, which would be unopposed by Petitioner. Further, Patent
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`Owner requests that the Board limit the hearing to no more than 10 minutes per side,
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`which should be sufficient time for the parties to argue their positions and respond
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`to any questions from the Board. Though Petitioner failed to meet and confer with
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`Patent Owner concerning the proposed dates for oral argument or its request that the
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`hearing be conducted in person, Patent Owner is available on December 11, 2020
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`for a telephonic hearing. In light of travel difficulties due to the current pandemic,
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`Patent Owner opposes Petitioner’s request for an in-person hearing.
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`Dated: November 17, 2020
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`Respectfully submitted,
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`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,5 91
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`3
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this document was served via electronic
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`mail on November 17, 2020, to Petitioner via counsel, James M. Glass, Sam Stake,
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`and Ogi Zivojnovic at
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`the email addresses:
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`jimglass@quinnemanuel.com,
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`samstake@quinnemanuel.com, ogizivojnovic@quinnemanuel.com, pursuant
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`to
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`Petitioner’s consent in its Updated Mandatory Notices at page 2.
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`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`4
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