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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC., and FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner
`
`__________________
`
`Case IPR2017-003211
`U.S. Patent No. 8,923,941
`__________________
`
`PETITIONER APPLE INC.’S SURREPLY TO
`PATENT OWNER’S CONDITIONAL MOTION TO AMEND
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`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 1 Case IPR2017-01556 has been joined with this proceeding.
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`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
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`
`I.
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`II.
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`Valencell Failed To Respond To The Grounds Of Unpatentability ................ 1
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`III. Addressing Claim Features Individually Was Not Sufficient To Establish
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`Written Description Support For The Substitute Claims ................................ 2
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`IV. Substitute Claims 22 And 26 Are Unpatentable ............................................. 4
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`V.
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`Conclusion ....................................................................................................... 6
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`IPR2017-00321
`U.S. Patent No. 8,923,941
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`I.
`
`Introduction
`
`In its Reply to Petitioner’s Opposition to Motion to Amend, Valencell
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`(“PO”) does not dispute that it did not address the instituted grounds—instead ar-
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`guing that narrowing the claims in any way should meet the rules. PO also does
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`not dispute that it merely provided a string cite to purportedly illustrate support for
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`the substitute claims—instead erroneously contending that it nonetheless individu-
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`ally addressed all limitations. As discussed in detail below, PO’s arguments are
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`misplaced and, accordingly, PO’s MTA should be denied.
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`II. Valencell Failed To Respond To The Instituted Grounds
`PO does not deny that it never substantively addressed the instituted grounds
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`based on Kosuda or Aceti. PO instead asserts that § 42.121(a)(2) only requires that
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`the substitute claims narrow the original claims in some manner. See Reply, p. 12
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`(relying on the Board’s decision in Idle Free). But PO’s reliance on Idle Free is
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`misplaced. The Idle Free decision merely noted that a proposed substitute claim
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`that does not include or narrow each feature of the challenged claim being replaced
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`is not responsive. Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, De-
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`cision on Motion to Amend Claims, Paper 26 (June 11, 2013) (informative). That
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`does not mean that any narrowing—even one that makes no difference with respect
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`to the instituted grounds—satisfies § 42.121(a)(2). See Blackberry Corp. v. Mo-
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`bileMedia Ideas LLC, IPR2013-00016, Paper 32 at pp. 15-18 (Feb. 25, 2014).
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`Aside from narrowing the claims, PO was required to include “a detailed ex-
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`planation of the significance of the amended claims (e.g., a statement that clearly
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`points out the patentably distinct features for the proposed new or amended
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`claims).” Aqua Prod., Inc. v. Matal, 872 F.3d 1290, 1341 (Fed. Cir. 2017) (en
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`banc) (Reyna concurring) (quoting 77 Fed. Reg. at 48,626). That is, PO needed to
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`show why the alleged narrowing overcomes the instituted ground. Yet PO’s MTA
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`only contains a token statement that the prior art does not disclose the added limi-
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`tations. Paper 24, p. 12. This is not sufficient.
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`III. Addressing Claim Features Individually Was Not Sufficient To Estab-
`lish Written Description Support For The Substitute Claims
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`Patent Owner contends that it met its burden of identifying written descrip-
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`tion support under § 42.121(b) by listing citations to the specification for each in-
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`dividual claim limitation. Yet the Board has instructed that “the motion should ac-
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`count for the claimed subject matter as a whole, i.e., the entire proposed substitute
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`claim, when showing where there is sufficient written description support for each
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`claim feature.” Facebook, Inc. v. B.E. Tech., LLC., No. IPR2014-00052, Paper 45,
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`p. 27, (Mar. 31, 2015); aff’d, B.E. Tech., L.L.C. v. Google, Inc., No. 2015-1827,
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`2016 WL 6803057, at *7 (Fed. Cir. Nov. 17, 2016), citing Respironics, Inc. v. Zoll
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`Med. Corp., No. IPR2013-00322, 2014 WL 4715644, at *13 (P.T.A.B. Sept. 17,
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`2014) (“Zoll’s string citations amount to little more than an invitation to us (and to
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`Respironics, and to the public) to peruse the cited evidence and piece together a
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`coherent argument for them. This we will not do.”), vacated and remanded on oth-
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`er grounds, No. 2015-1485, 2016 WL 4056094, at *1 (Fed. Cir. July 29, 2016). PO
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`has not shown where each substitute claim as a whole is supported by the original
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`written description, and its string citations offer no guidance to the same.
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`PO also argues that the Board previously allowed a patent owner to support
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`a motion to amend using a string citation in Int’l Flavors & Fragrances Inc. v.
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`United States, No. IPR2013–00124, 2014 WL 2120542 (May 20, 2014). But as
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`discussed by the Federal Circuit, Int’l Flavors “is not controlling, and other Board
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`decisions have found that such a bare string citation is insufficient to establish writ-
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`ten description support.” B.E. Tech., L.L.C. v. Google, Inc., No. 2015-1827, 2016
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`WL 6803057, at *7 (Fed. Cir. Nov. 17, 2016). The problem with PO’s list of cita-
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`tions is that the citations point to excerpts from more than forty pages of disclosure
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`describing many different embodiments having disparate features. See Paper 24,
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`pp. 4-7 (encompassing descriptions of at least FIGs. 1, 5, 13, 15, 17, 18, and 20).
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`Without explanation, there is no way to readily discern that the original specifica-
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`tion provides support for the substitute claims. See Tronzo v. Biomet, Inc., 156 F.3d
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`1154, 1158 (Fed. Cir. 1998); see also Lockwood v. Am. Airlines, Inc., 107 F.3d
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`1565, 1572 (Fed. Cir. 1997) (“It is not sufficient … that the disclosure, when com-
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`bined with the knowledge in the art, would lead one to speculate as to modifica-
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`tions that the inventor might have envisioned, but failed to disclose.”).
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`IV. Substitute Claims 22 And 26 Are Unpatentable
`PO makes a series of misrepresentations and incorrect statements regarding
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`Apple’s Opposition. First, Apple was correct to point out that PO did not provide a
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`construction for the API term in its MTA. See Paper 24, pp. 10-11. This term was
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`not present in the original claims on which this IPR was instituted, and Apple’s
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`Opposition was the first opportunity Apple had to address this term in this IPR. In
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`its MTA, PO did not assert that the ’941 Patent provides a “specific definition” for
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`API, and only now asks the Board “to take notice of [its] prior construction.”
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`Reply, p. 2. Further, the Board’s construction in IPR2017-00319 was preliminary.
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`New evidence has since come to light that the Board should be made aware of,
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`which may cause it to revisit its original construction: PO’s own expert agreed that
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`the term “application-specific interface” would not be understood by a person of
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`ordinary skill in the art as meaning anything other than “application programming
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`interface,” a standard interface that allows a program to be used with a variety of
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`different applications. (Paper 31, pp. 8-9; Ex. 1070, 125:3-128:24)
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`Second, PO mischaracterizes Apple’s position as ignoring a claim term as ir-
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`relevant. Reply, p. 3. Apple merely indicated that under either the Board’s previous
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`interpretation in the -00319 IPR or under Apple’s proposed construction, Apple
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`has addressed how the prior art meets that added limitation. Further, as explained
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`in the Opposition, Apple notes that the added API feature is not a structural limita-
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`tion on the claimed wearable device—it is a statement of intended use. That raises
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`the question of how a processor can be configured to process data such that a par-
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`ticular application can use the data but different applications cannot. PO’s argu-
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`ment is analogous to a book that is written so that a particular person can read it
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`but different persons cannot—i.e., it is nonsensical because the writing does not de-
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`termine who can read the book; it depends on the reader. The same is true with da-
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`ta utilized by an application. It is not the structure of the data (let alone the struc-
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`ture of the data processor) that determines which applications can utilize the data;
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`it depends on the applications themselves. In any event, the substitute claims do
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`not positively recite the API as an element of the signal processor—they merely
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`state an intention for the use of the output data after the data is generated.
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`Recitation of an intended use does not automatically entitle it to patentable
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`weight. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well set-
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`tled that the recitation of a new intended use for an old product does not make a
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`claim to that old product patentable.”). Here, no weight should be given because
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`the patent itself fails to provide any explanation as to how data could be parsed in a
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`way to give meaning to the API limitation. PO’s assertion that “[w]hen the data is
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`parsed for a particular application, only that particular application can use the
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`parsed data,” (Reply, p. 5) is unsupportable. No amount of parsing can prevent all
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`applications except one from utilizing available data. And PO’s assertion that
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`“[p]rocessing the data string may be accomplished without parsing the data specif-
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`ically for a particular application”, (id., p. 6) also misses the mark. As discussed
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`above, the patent fails to describe how a processor, that provides output data parsed
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`out such that a particular application can utilize the contained information, is in
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`any way distinguishable from a processor that provides output data parsed out such
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`that different applications can utilize the same information.
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`Third, nothing in the analysis above means that Apple has ignored limita-
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`tions of the claims, contrary to PO’s allegations (id., p. 5). Apple clearly addressed
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`the prior art with respect to the added claim language. E.g., Paper 31, pp. 8-9 and
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`13-14. As for the individual grounds against claim 22, PO does not dispute any
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`factual assertions by Apple or its expert regarding the various prior art references
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`or the proposed combinations of their teachings. Thus, for all the reasons discussed
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`above and as discussed in the Opposition, PO has failed to identify any legal or
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`factual deficiency in the proposed grounds challenging substitute claims 22-29.
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`V. Conclusion
`For the foregoing reasons, PO’s Motion should be denied or, alternatively,
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`substitute claims 22-29 should be found unpatentable.
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`Date: January 12, 2018
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`
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`Respectfully submitted,
`/Michelle K. Holoubek, Reg. # 54,179/
`Michelle K. Holoubek, Registration No. 54,179
`Attorney for Petitioner Apple Inc.
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that the foregoing PETITIONER APPLE
`
`INC.’S SURREPLY TO PATENT OWNER’S CONDITIONAL MOTION TO
`
`AMEND and all associated exhibits were served electronically via e-mail on
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`January 12, 2018, in their entireties on the following:
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`Harper Batts (Counsel for Fitbit, Inc.)
`Jeremy Taylor (Counsel for Fitbit, Inc.)
`
`JKimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`dlfitbit-valencell@bakerbotts.com
`
`
`
`
`
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`
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`Date: January 12, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
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