Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 69
`Entered: November 19, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003191
`Patent 8,923,941 B2
`____________
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Hearing and Sur-Reply
`37 C.F.R. §§ 42.23 and 42.70
`
`
`
`
`
`1 Case IPR2017-01555 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
`
`Paper 69
`Entered: November 19, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003191
`Patent 8,923,941 B2
`____________
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Hearing and Sur-Reply
`37 C.F.R. §§ 42.23 and 42.70
`
`
`
`
`
`1 Case IPR2017-01555 has been joined with this proceeding.
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`
`I.
`
`HEARING AND ATTENDANCE
`
`Fitbit, Inc. (“Petitioner”) requests a hearing for the above-captioned
`proceeding, pursuant to 37 C.F.R. § 42.70. Paper 66. Valencell, Inc.
`(“Patent Owner”) opposes Petitioner’s request. Paper 67. After reviewing
`Petitioner’s request and Patent Owner’s opposition, the panel grants a
`hearing in this proceeding. See Paper 57, 8–9, 11.
`The hearing shall occur on Friday, December 11, 2020, at
`11:00am ET/10:00am CT/9:00am MT/8:00am PT, by telephone. In our
`Order regarding the conduct of this proceeding on Remand, we authorized
`Petitioner to file a request for a brief oral argument not to exceed twenty
`(20) minutes per party. Paper 57, 11. Petitioner requested a brief oral
`argument of twenty (20) minutes per party. Paper 66, 2. In Patent Owner’s
`opposition to Petitioner’s request, Patent Owner proposed that if a hearing is
`granted, oral argument should be limited to ten (10) minutes per party.
`Paper 67, 3. Given that a hearing previously occurred in this proceeding
`and in view of the limited scope of this remand, each party shall have
`fifteen (15) minutes to present its arguments and to respond to the
`panel’s questions, limited to the briefed issues in this remand. Paper 57,
`10–11; see Paper 66, 2–3. The parties are directed to contact the Board at
`least ten (10) days in advance of the hearing if there are any concerns about
`disclosing confidential information. The Board will provide a court reporter
`for the hearing, and the reporter’s transcript will constitute the official record
`of the hearing.
`Unless such information is previously received, each party must
`contact PTAB Hearings at PTABHearingsTrials@uspto.gov no later than
`five (5) business days prior to the hearing date to receive dial-in connection
`
`2
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`information. If at any time during the hearing, either party encounters
`technical or other difficulties that fundamentally undermine your ability to
`adequately represent that party, the party should let the panel or PTAB Trials
`know immediately, so that adjustments may be made.2
`As noted above, each side will have fifteen (15) minutes total time to
`present arguments. Petitioner bears the ultimate burden of proof that the
`claims remaining at issue in this proceeding are unpatentable. Petitioner will
`open the hearing by presenting its case regarding the remaining challenged
`claims, upon which the Board instituted trial and which the Federal Circuit
`remanded for further review. Paper 57, 10–11; see Paper 66, 2–3. Patent
`Owner then will respond to Petitioner’s arguments. Next, Petitioner may use
`any time it has reserved for rebuttal to respond to Patent Owner’s arguments.
`Lastly, Patent Owner may use any time it has reserved for sur-rebuttal to
`respond to Petitioner’s arguments. No other arguments will be heard.
`Per the Office Patent Trial Practice Guide, either party may request a
`pre-hearing conference. See Consolidated Trial Practice Guide (“Trial
`Practice Guide”), 84 Fed. Reg. 64,280 (Nov. 21, 2019).3 To request such a
`conference, after conferring, a joint email should be sent to
`Trials@uspto.gov including alternative dates and times of availability for
`both parties, as appropriate, that are generally no later than three (3) business
`days prior to the hearing date. Please refer to the Guide for more
`information on the pre-hearing conference.
`
`
`2 For example, if a party is experiencing poor audio quality, the Board may
`provide alternate dial-in information.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`
`II. DEMONSTRATIVES
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven (7) business days before the hearing. However, in view of the
`deadline for filing Patent Owner’s sur-reply, discussed below, demonstrative
`exhibits shall be served at least five (5) business days before the hearing.
`Thus, the parties shall serve on opposing counsel demonstrative exhibits no
`later than Friday, December 4, 2020. Notwithstanding 37 C.F.R. § 42.70(b),
`demonstratives should be filed as an exhibit, and contemporaneously
`emailed to PTABHearingsTrials@uspto.gov, no later than Monday,
`December 7, 2020, to facilitate the panel’s preparation. The parties should
`consider the information regarding demonstrative materials discussed in the
`Trial Practice Guide.
`Demonstrative exhibits used at the hearing are aids to oral argument
`and not evidence, and should be clearly marked as such. For example, each
`slide of a demonstrative exhibit may be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`Demonstrative exhibits cannot be used to advance arguments or introduce
`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
`first time during oral argument”).
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), regarding the appropriate content of
`demonstrative exhibits. The Board expects that the parties will meet and
`confer in good faith to resolve any objections to demonstrative exhibits, but
`
`4
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`if such objections cannot be resolved the parties may file any objections to
`demonstratives with the Board at least two (2) business days before the
`hearing. The objections should identify with particularity which portions of
`the demonstrative exhibits are subject to objection, include a copy of the
`objected-to portions, and include a one-sentence statement of the reason for
`each objection. No argument or further explanation is permitted. The
`panel will consider any objections and schedule a conference call if deemed
`necessary. Otherwise, the panel will reserve ruling on the objections. Any
`objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`The Board generally expects lead counsel for each party to be present
`by telephone at the hearing. Any counsel of record may present the party’s
`argument as long as that counsel is present by telephone.
`Any special requests for hearing equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a telephonic hearing, such as a request to
`accommodate hearing impairments, and indicate how the Board may
`accommodate the special request. Any special requests must be presented in
`a separate communication not less than five (5) business days before the
`hearing, i.e., by December 4, 2020.
`Each party shall unmute itself only when speaking. During the
`hearing, the parties should identify clearly and specifically each paper,
`exhibit, and/or demonstrative referenced (e.g., by paper number and/or page,
`slide, or screen number) to ensure the clarity and accuracy of the court
`reporter’s transcript. The panel will have access to all papers and exhibits
`filed with the Board, including demonstratives. In addition, for clarity of the
`
`5
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`record and if multiple presenters will speak on behalf of a party, each party
`shall identify the presenter each time a different presenter speaks. Further,
`the remote nature of the hearing may result in an audio lag, and so the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`Members of the public may request to listen in on this hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board by contacting PTABHearings@uspto.gov at least five (5) business
`days prior to the hearing date.
`
`III. SUR-REPLY
`
`Patent Owner included a request to file a sur-reply in Patent Owner’s
`opposition to Petitioner’s hearing request. Paper 67, 3; see Paper 57, 6–7
`(“Upon the filing of Petitioner Fitbit, Inc.’s reply brief, Patent Owner may
`request authorization to file a sur-reply brief, and we may authorize the
`filing of a limited sur-reply brief. See Patent Trial and Appeal Board
`Consolidated Trial Practice Guide, 73–74 (Nov. 2019)”). Patent Owner
`indicates that Petitioner does not oppose this request. Paper 67, 3. The
`panel grants Patent Owner’s request to file a sur-reply. The sur-reply shall
`be “strictly limited to responding to arguments raised by Petitioner in its
`reply brief and [Patent Owner’s] Surreply cannot raise new issues.” Id.; see
`37 C.F.R. § 42.23(b). The sur-reply shall be no more than four (4) pages in
`length and shall be filed on or before December 2, 2020. No additional
`evidence, including testimonial evidence, shall be filed.
`
`6
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`
`This Order memorializes the panel’s grant by e-mail on November
`18, 2020, of Petitioner’s hearing request and Patent Owner’s sur-reply
`request.
`It is hereby:
`ORDERED that Petitioner’s request for a hearing is granted subject to
`the conditions set forth in this Order;
`FURTHER ORDERED that hearing for this proceeding shall take
`place beginning at 11:00am ET/10:00am CT/9:00am MT/8:00am PT on
`December 11, 2020, by telephone; and
`FURTHER ORDERED that Patent Owner’s request to file a sur-reply
`is granted subject to the conditions set forth in this Order and Patent
`Owner’s sur-reply brief is strictly limited to responding to arguments raised
`by Petitioner in its reply brief.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`
`
`For PETITIONER:
`
`James Glass
`Ogi Zivojnovic
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`ogizivojnovic@quinnemanuel.com
`
`For PATENT OWNER:
`
`Justin Kimble
`Daniel F. Olejko
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`dolejko@bcpc-law.com
`
`8
`
`
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