`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`––––––––––
`
`
`
`Patent No. 8,989,830
`Issued: March 24, 2015
`Filed: September 12, 2014
`Title: Wearable Light-Guiding
`Devices for Physiological Monitoring
`
`
`––––––––––
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.122(b) TO RELATED
`INTER PARTES REVIEW IPR2017-00317
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`Statement of Precise Relief Requested ............................................................ 1
`I.
`II. Statement of Material Facts and Related Proceedings .................................... 2
`III. Statement of Reasons for Relief Requested .................................................... 3
`A.
`Legal Standard ....................................................................................... 3
`
`B.
`
`C.
`
`Petitioner’s Motion for Joinder is Timely ............................................. 4
`
`Each Factor Weighs in Favor of Joinder ............................................... 4
`
`1.
`2.
`3.
`
`Joinder with the Apple IPR is Appropriate ................................. 4
`Petitioner Proposes No New Grounds of Unpatentability .......... 5
`Joinder Will Not Unduly Burden or Negatively Impact
`the Apple IPR Trial Schedule ..................................................... 5
`Petitioner Proposes Procedures to Simplify Briefing and
`Discovery .................................................................................... 6
`IV. Conclusion ....................................................................................................... 8
`
`
`4.
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`CASES
`Kyocera Corp. v. Softview LLC,
`Case No. IPR2013-00004, slip op. (PTAB Apr. 24, 2013) .................................. 3
`
`Mylan Pharmaceuticals Inc. v. Dr. Falk Pharma GmbH,
`Case No. IPR2016-01386, slip op. (PTAB Nov. 30, 2016) ................................. 8
`
`Mylan Pharms. Inc. v. Novartis AG,
`Case No. IPR2015-00268, slip op. (PTAB Apr. 10, 2015) .................................. 7
`
`Samsung Elecs., Co., Ltd., et al. v. Raytheon Co.,
`Case No. IPR2016-00962, slip op. (PTAB Aug. 24, 2016) ............................. 3, 5
`
`Sony Corp. v. Memory Integrity, LLC,
`Case No. IPR2015-01353, slip op. (PTAB Oct. 15, 2015) .............................. 6, 8
`
`STATUTES
`
`35 U.S.C. § 315(b) ..................................................................................................... 3
`
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.53 ....................................................................................................... 7
`
`37 C.F.R. § 42.122(b) ............................................................................................ 3, 4
`
`
`
`
`
`
`
`ii
`
`
`
`I.
`
`Statement of Precise Relief Requested
`
`Fitbit, Inc. (“Petitioner”) respectfully submits this Motion for Joinder
`
`together with a Petition for Inter Partes Review of U.S. Patent No. 8,989,830
`
`(“Fitbit Petition”) filed contemporaneously herewith. The Board instituted inter
`
`partes review of claims 1–6, 8–16, and 18–20 of the ’830 Patent in Apple Inc. v.
`
`Valencell, Inc., Case No. IPR2017-00317 on June 5, 2017 (“Apple IPR”).
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Fitbit requests
`
`institution of inter partes review for claims 1–6, 8–16, and 18–20 of the ’830
`
`Patent and requests joinder with IPR2017-00317.
`
`Fitbit’s request for joinder is timely because it is made no later than one
`
`month after the June 5, 2017 institution date of the Apple IPR. The Fitbit Petition
`
`is substantively identical to the petition in the Apple IPR, and Fitbit only seeks
`
`institution on the same claims, prior art, and grounds for unpatentability that were
`
`instituted in the Apple IPR. Therefore, the Fitbit Petition warrants institution for at
`
`least the same reasons that the Board instituted the Apple IPR. In addition, Fitbit
`
`proposes to streamline discovery and briefing by taking an “understudy role.”
`
`Fitbit submits that joinder is appropriate because it will not unduly burden or
`
`prejudice the parties to the Apple IPR while efficiently resolving the question of
`
`the ’830 Patent’s validity in a single proceeding.
`
`
`
`1
`
`
`
`II.
`
`Statement of Material Facts and Related Proceedings
`
`1.
`
`On January 4, 2016, Valencell, Inc. (“Patent Owner”) filed a civil
`
`action alleging
`
`that Apple Inc.
`
`infringes
`
`the ’830 Patent, U.S. Patent
`
`No. 8,886,269, and two other patents. Valencell, Inc. v. Apple Inc., Case No. 5:16-
`
`cv-00001 (E.D.N.C.).
`
`2.
`
`Apple filed a petition for inter partes review of the ’830 Patent
`
`(“Apple Petition”) on November 23, 2016. Apple Inc. v. Valencell, Inc., Case No.
`
`IPR2017-00317 (Paper 2).
`
`3.
`
`On June 5, 2017, the Board instituted a trial on all challenged claims
`
`(claims 1–6, 8–16, and 18–20) of the Apple Petition. See Case No. IPR2017-
`
`00317 (Paper 7).
`
`4.
`
`Apple filed a second petition for inter partes review of the ’830
`
`Patent, which was denied institution on June 5, 2017. Apple Inc. v. Valencell, Inc.,
`
`Case No. IPR2017-00316 (Paper 7).
`
`5.
`
`6.
`
`The ’830 Patent is a continuation of the ’269 Patent.
`
`Apple filed a petition for inter partes review of the ’269 Patent on
`
`November 23, 2016. Apple Inc. v. Valencell, Inc., Case No. IPR2017-00318.
`
`7.
`
`On June 5, 2017, the Board instituted a trial on all challenged claims
`
`of the ’269 Patent. Case No. IPR2017-00318 (Paper 7).
`
`8.
`
`On January 4, 2016, Valencell filed a separate civil action in the same
`
`
`
`2
`
`
`
`district court alleging that Fitbit infringes the ’830 Patent, the ’269 Patent, and the
`
`other two patents asserted against Apple. Valencell, Inc. v. Fitbit, Inc., Case No.
`
`5:16-cv-00002 (E.D.N.C.).
`
`9.
`
`Fitbit is concurrently filing a petition for inter partes review of the
`
`’269 Patent. Fitbit, Inc. v. Valencell, Inc., Case No. IPR2017-01554.
`
`III. Statement of Reasons for Relief Requested
`A. Legal Standard
`The Board may join as a party to an instituted inter partes review a person
`
`who has properly filed a petition for inter partes review that warrants institution.
`
`35 U.S.C. § 315(c). A motion requesting joinder must be filed no later than one
`
`month after the date of institution for the inter partes review to which the person
`
`seeks joinder. 37 C.F.R. § 42.122(b). In addition, a petition for inter partes
`
`review is not subject to the one-year statutory time bar when the petition is
`
`accompanied by a request for joinder. 35 U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing
`
`review; and (4) address specifically how briefing and discovery may be simplified.
`
`Samsung Elecs., Co., Ltd., et al. v. Raytheon Co., Case No. IPR2016-00962, slip
`
`op. at 5 (PTAB Aug. 24, 2016) (Paper 12) (citing Kyocera Corp. v. Softview LLC,
`
`
`
`3
`
`
`
`Case No. IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)).
`
`Petitioner’s Motion for Joinder is Timely
`
`B.
`This Motion for Joinder is timely because it is filed within one month of the
`
`June 5, 2017 institution of the Apple IPR. See 37 C.F.R. § 42.122(b).
`
`Furthermore, the one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to
`
`the Fitbit Petition because it was filed concurrently with this Motion for Joinder.
`
`37 C.F.R. § 42.122(b).
`
`C. Each Factor Weighs in Favor of Joinder
`1.
`Joinder with the Apple IPR is Appropriate
`Joinder with the Apple IPR is appropriate because the Fitbit Petition
`
`involves the same patent, challenges the same claims, relies on the same expert
`
`declaration, and is based on the same grounds and combinations of prior art
`
`submitted in the Apple Petition. Further, the Fitbit Petition relies solely on
`
`grounds from the Apple Petition that the Board instituted on June 5, 2017. The
`
`Fitbit Petition is substantively identical to the Apple Petition, containing only
`
`minor differences related to the formalities required by a different party filing the
`
`petition. Other than these minor differences that stem from filing formalities, there
`
`are no changes to the facts, citations, evidence or arguments presented in the Fitbit
`
`Petition. Therefore, the Fitbit Petition warrants institution for at least the same
`
`reasons that the Board instituted the Apple Petition. Because these proceedings are
`
`substantively identical, good cause exists for joinder with the Apple IPR so that the
`
`
`
`4
`
`
`
`Board can efficiently resolve all grounds in a single proceeding.
`
`In addition, the substantial questions of invalidity as to the ’830 Patent are of
`
`interest to Fitbit, which stands accused of infringing the ’830 Patent, as well to the
`
`broader public interest in the likely invalidity of an issued patent. Joinder is
`
`therefore appropriate for the additional reason that the invalidity grounds as to the
`
`challenged and joined claims can be resolved through the participation of Fitbit
`
`even if the original petitioner, Apple, were to reach a settlement with Patent
`
`Owner, or otherwise cease to participate in the proceeding.
`
`Petitioner Proposes No New Grounds of Unpatentability
`
`2.
`As discussed above, the Fitbit Petition does not present any new grounds of
`
`unpatentability, and is substantively identical to the Apple Petition. This factor
`
`weighs in favor of granting joinder because the Board “routinely grants motions
`
`for joinder where the party seeking joinder introduces identical arguments and the
`
`same grounds raised in the existing proceeding.” Samsung Elecs. Co., slip op. at 9
`
`(internal quotations and citations omitted) (emphases in the original).
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Apple IPR Trial Schedule
`
`Because the Fitbit Petition is substantively identical to the Apple Petition,
`
`with the same grounds challenging the same claims, as instituted by the Board,
`
`there are no new issues for Patent Owner to address. Due to the same issues being
`
`presented in the Apple Petition, Patent Owner will not be required to present any
`
`
`
`5
`
`
`
`additional responses or arguments. See Sony Corp. v. Memory Integrity, LLC,
`
`IPR2015-01353, slip op. at 6 (PTAB Oct. 15, 2015) (Paper 11) (granting IPR and
`
`motion for joinder where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR].”).
`
`Without any new issues present, there is no reason to delay or alter the trial
`
`schedule already present in the Apple IPR, and Fitbit explicitly consents to the
`
`existing trial schedule. Further, the Patent Owner Preliminary Response already
`
`filed in the Apple IPR addresses any and all issues in the Fitbit Petition because the
`
`issues are substantively identical to the issues of the Apple Petition. See Patent
`
`Owner’s Preliminary Response, Case No. IPR2017-00317 (Paper 6).
`
`The Patent Owner Response will not be negatively impacted because the
`
`issues presented in the Apple Petition are identical to the issues presented in the
`
`Fitbit Petition. Patent Owner will not be required to provide any additional
`
`analysis or arguments beyond what it will already provide in responding to the
`
`Apple Petition. Also, because the Fitbit Petition relies on the same expert and a
`
`substantively identical declaration, only a single deposition is needed for the
`
`proposed joined proceeding.
`
`4.
`
`Petitioner Proposes Procedures to Simplify Briefing and
`Discovery
`
`Additionally, Fitbit agrees to take an “understudy” role in the joined
`
`proceeding, absent termination of the original petitioner, Apple, as a party. In
`
`
`
`6
`
`
`
`particular, Fitbit agrees that, in the joined proceeding, the following conditions
`
`shall apply so long as Apple remains an active party, as previously approved by the
`
`Board in similar circumstances:
`
`(a)
`
`all filings by Fitbit in the joined proceeding be consolidated with the
`
`filings of the Apple, unless a filing solely concerns issues that do not
`
`involve Apple;
`
`(b) Fitbit shall not be permitted to raise any new grounds not already
`
`instituted by the Board, or introduce any argument or discovery not
`
`already introduced by Apple;
`
`(c) Fitbit shall be bound by any agreement between Patent Owner and
`
`Apple concerning discovery and/or depositions; and
`
`(d) Fitbit at deposition shall not receive any direct, cross examination or
`
`redirect time beyond that permitted for Apple in this proceeding alone
`
`under either 37 C.F.R. § 42.53 or any agreement between Patent
`
`Owner and Apple.
`
`See Mylan Pharms. Inc. v. Novartis AG, Case No. IPR2015-00268, slip op. at 5–6
`
`(PTAB Apr. 10, 2015) (Paper 17) (finding that same proposed limitations “are
`
`consistent with the ‘understudy’ role that Petitioner agrees to assume, as well as
`
`Petitioner’s assertion that its presence would not require introducing any additional
`
`arguments, briefing, or discovery.”).
`
`
`
`7
`
`
`
`Fitbit would assume a primary role only if Apple ceased to participate in the
`
`proceeding. The Board has consistently found that that the acceptance of an
`
`“understudy” role removes any undue complications or delay that might allegedly
`
`result from joinder. See, e.g., Sony Corp. v. Memory Integrity, LLC, Case No.
`
`IPR2015-01353, slip op. at 7 (PTAB Oct. 15, 2015) (Paper 11); see also Mylan
`
`Pharmaceuticals Inc. v. Dr. Falk Pharma GmbH, Case No. IPR2016-01386, slip
`
`op. at 6 (PTAB Nov. 30, 2016) (Paper 9).
`
`IV. Conclusion
`For the reasons stated above, Fitbit respectfully requests that the Board
`
`institute Fitbit’s concurrently filed Petition for Inter Partes Review of U.S. Patent
`
`No. 8,989,830, and grant joinder with the Apple Inc. v. Valencell, Inc., Case No.
`
`IPR2017-00317 proceeding.
`
`Dated: June 9, 2017
`
`
`
`Respectfully submitted,
`
`BAKER BOTTS L.L.P.
`/Harper Batts/
`
`Harper Batts
`Reg. No. 56,160
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7500
`Facsimile: (650) 739-7699
`harper.batts@bakerbotts.com
`
`ATTORNEYS FOR PETITIONER
`FITBIT, INC.
`
`
`
`8
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that on June 9, 2017, true and correct
`
`copies of the foregoing MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`
`37 C.F.R. § 42.122(b) TO RELATED INTER PARTES REVIEW IPR2017-
`
`00317 were served in their entirety on the following parties via FedEx Express® or
`
`Express Mail:
`
`Michael D. Specht
`Michelle K. Holoubek
`Jason A. Fitzsimmons
`Sterne, Kessler
`Goldstein & Fox P.L.L.C. 1100
`New York Avenue, N.W.
`Washington, D.C. 20005-3934
`
`MYERS BIGEL, P.A.
`P.O. BOX 37428
`Raleigh, NC 27627
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`Bragalone Conroy PC
`2200 Ross Ave
`Suite 4500- West
`Dallas, TX 75201
`
`MYERS BIGEL, P.A.
`Lynne A. Borchers
`4140 Parklake Avenue, Suite 600
`Raleigh, NC 27612
`
`BAKER BOTTS L.L.P.
`
`/Harper Batts/
`
`Harper Batts (Reg. No. 56,160)
`Attorney for Petitioner
`
`Date: June 9, 2017
`
`1001 Page Mill Road, Bldg. One, Suite 200
`Palo Alto, CA 94304
`(650) 739-7500
`
`
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