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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 SURREPLY TO PETITIONER’S
`OPENING BRIEF 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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`I.
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`Fitbit’s Opening and Reply Briefs Improperly Rely on New Arguments.
`Fitbit’s contention that it “should not be limited to the specific words in the
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`Petition” is a straw man. Paper 64 at 3. Valencell makes no such argument. Instead,
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`Valencell argues that Fitbit cannot use its briefing on remand to fill-in gaps or
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`remedy omissions in Apple’s Petition. Paper 62 at 4-8. Ericsson Inc. v. Intellectual
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`Ventures I LLC, 901 F.3d 1374, 1380 (Fed. Cir. 2018), which was a “special case,”
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`is not to the contrary. In Ericsson, the petitioner did not attempt to use its reply “to
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`make a meaningfully distinct contention” from the petition, but instead expanded
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`“the same arguments made in its Petition” and relied on the same evidence. Id.
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`at 1381. In contrast, Fitbit’s improper new arguments conflict with, rather than
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`support, the arguments in Apple’s Petition and rely on new portions of the prior art.
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`Though Apple’s Petition asserts that the prior art discloses APIs that are
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`“broadly applicable to different applications” and “not ‘application specific’ as
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`such,” Fitbit now argues the opposite, claiming that the prior art discloses interfaces
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`used by, and tailored to, specific applications. Compare Paper 2 at 14 (emphasis
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`added), with Paper 60 at 6-8. Similarly, though Apple’s Petition relies on only a
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`single paragraph of Craw as evidence of a generic API, Fitbit relies on various other
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`embodiments of Craw that allegedly disclose interfaces used with, and tailored to,
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`specific applications. See id. But Fitbit cannot be permitted to rely “on previously
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`unidentified portions of a prior-art reference to make a meaningfully distinct
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`1
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`contention” from the Petition. See Ariosa Diagnostics v. Verinata Health, Inc., 805
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`F.3d 1359, 1367-68 (Fed. Cir. 2015).
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`Fitbit now asserts that “Fitbit presented the same arguments in its additional
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`briefing [], which in turn cites to the request for rehearing [].” Paper 64 at 3. But, on
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`remand from the Federal Circuit, it is still the Petition that must identify how the
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`construed claim is unpatentable, and it is the Petition that must specify where each
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`element of the claim is found in the prior art, not some later-filed brief. See Paper 62
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`at 4. Indeed, the Board previously recognized that the arguments made in Apple’s
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`rehearing request and post-SAS briefing were not supported by the Petition and
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`properly refused to consider them. See Paper 15 at 6-7 & nn.5-6; Paper 43 at 16.
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`Next, Fitbit posits that the evidence cited in its opening brief is not “new
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`evidence” because it is referenced in other sections of the Petition. Paper 64 at 4.
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`But Fitbit does not dispute that the Petition fails to explain how those portions of
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`Craw allegedly disclose an application-specific interface, how they disclose an
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`interface that can be used with, or tailored to, specific applications, or how an API
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`and an application-specific interface “perform the same function,” as Fitbit now
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`argues on remand. Where, as here, a petition does no more than point to general
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`statements from a prior-art reference, but makes no mention of how the prior art
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`actually discloses a particular claim limitation, the petitioner cannot fill in the gaps
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`left by the petition by citing specific embodiments from the prior art that allegedly
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`2
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`disclose that limitation in a later brief. See Ariosa, 805 F.3d at 1367-68.
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`With respect to claims 4-5, Fitbit essentially concedes that its argument has
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`no basis in the Petition. See Paper 65 at 1; Paper 64 at 4. Instead, Fitbit contends that
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`the Federal Circuit’s remand and the Board’s September 14 Order permit it to make
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`arguments based on the correct claim dependency. Paper 64 at 4. But Fitbit’s opening
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`brief was “limited to those challenges presented in Petitioner Apple Inc.’s Petition.”
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`Paper 57 at 6. And the Federal Circuit remanded for the Board to determine the
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`patentability of corrected claims 4-5 “on the asserted grounds of obviousness.”
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`Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1120 (Fed. Cir. 2020) (emphasis added).
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`The Federal Circuit did not permit Fitbit to expand the grounds asserted in the
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`Petition. Rather, the Federal Circuit relied on the representation of Fitbit’s counsel
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`at oral argument that Apple had, in fact, already made invalidity arguments based on
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`the correct dependency of claims 4-5.3 But this representation was false. Apple never
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`asserted that claims 4-5 are obvious based on the correct dependency. Instead, Apple
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`requested that the Board maintain the incorrect dependency of claim 4 on claim 1,
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`but construe “the application” as “an application” in order to alleviate the lack of an
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`3 See Oral Arg. Rec.
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`at 33:41-34:26, 34:46-34:59, available at
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`http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2019-1048.mp3. The Board
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`may take official notice of the oral argument. 37 C.F.R. § 42.62; Fed. R. Evid. 201.
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`3
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`antecedent basis. See Paper 40 at 6-7.
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`II.
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`Fitbit Fails to Meet Its Burden of Proof.
`Fitbit makes no attempt to show that claims 3-5 are obvious based on the
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`arguments made in Apple’s Petition. Instead, Fitbit argues that the Board’s
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`construction has no significance because an API allegedly performs the same
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`function as the claimed application-specific interface. Paper 64 at 1-2. But Fitbit fails
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`to identify any evidence that the substitution of an application-specific interface for
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`an API would have yielded only predictable results. Instead, citing E.I. DuPont de
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`Nemours & Co. v. Synvina C.V., 904 F.3d 996 (Fed. Cir. 2018), Fitbit attempts to
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`improperly shift the burden to Valencell. But Synvina concerned claims covering
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`ranges that overlap with the prior art, where there is a presumption of obviousness
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`and a burden-shifting framework. Id. at 1006-08. It is inapplicable here. In addition,
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`Fitbit does not dispute that its rationale for combining Craw with Luo is insufficient.
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`See Paper 62 at 10. On the contrary, it asks the Board to find that Fitbit met its burden
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`of proof because Valencell did not appeal the Board’s decision with respect to
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`claim 1. But claim 3 is materially different from claim 1, so issue preclusion does
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`not apply. Notably, Fitbit does not explain why a skilled artisan would have been
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`motivated to combine Craw and Luo to incorporate an application-specific interface.
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`Further, Fitbit does not dispute that its motivation for combining Lee, Mault, and Al-
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`Ali is supported by nothing more than the hindsight bias and ipse dixit of its expert.
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`4
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`Dated: December 2, 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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`5
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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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`
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`The undersigned hereby certifies that this document was served via electronic
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`mail on December 2, 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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`6
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