Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Nicholas C Kliewer (nkliewer@bcpc-law.com)
`T. William Kennedy (bkennedy@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-01553
`U.S. Patent No. 8,989,830
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION FOR JOINDER
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Nicholas C Kliewer (nkliewer@bcpc-law.com)
`T. William Kennedy (bkennedy@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-01553
`U.S. Patent No. 8,989,830
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION FOR JOINDER
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2017-01553
`Patent 8,989,830
`
`Patent Owner Valencell, Inc. (“Valencell” or “Patent Owner”) hereby files
`
`this opposition to the Motion for Joinder (“Motion,” Paper No. 3) filed by Fitbit, Inc.
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`(“Petitioner” or “Fitbit”). This opposition is timely given that it is being filed within
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`one month of the Motion. 37 C.F.R. § 42.25.
`
`Patent Owner opposes joinder, and indeed any institution of the present inter
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`partes review, at least because inter partes review violates the Constitution: “Suits
`
`to invalidate patents must be tried before a jury in an Article III forum, not in an
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`agency proceeding.” See Brief of Petitioner at 10, Oil States Energy Services LLC v.
`
`Greene’s Energy Group, LLC, No. 16-712 (“Oil States”). The Supreme Court
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`recently granted certiorari in Oil States to decide this very issue. Oil States Energy
`
`Services LLC v. Greene’s Energy Group, LLC, No. 16-712, --- S. Ct. ----, 2017 WL
`
`2507340 (June 12, 2017) (granting certiorari on question of whether “inter partes
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`review—an adversarial process used by the Patent and Trademark Office (PTO) to
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`analyze the validity of existing patents—violates the Constitution by extinguishing
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`private property rights through a non-Article III forum without a jury.”).1 In the
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`1 Patent Owner notes that the Supreme Court granted certiorari on this issue after
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`Patent Owner had already filed its preliminary response to, and the Board instituted,
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`the proceeding that Petitioner moves to join: Apple Inc. v. Valencell, Inc., Case No.
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`IPR2017-00317 (Papers 6 and 7).
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`2
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`Case IPR2017-01553
`Patent 8,989,830
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`context of Fitbit’s proposed joinder – which comes nearly five months after the
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`statutory deadline for Fitbit to file an IPR against the ’830 patent – the
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`constitutionality of depriving Patent Owner of its property rights in such a manner
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`is even more questionable.
`
`I. INTER PARTES REVIEW PROCEEDINGS ARE
`UNCONSTITUTIONAL
`
`Since a patent creates a property right, it is “not subject to be revoked or
`
`canceled by the president, or any other officer of the Government” because “[i]t has
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`become the property of the patentee, and as such is entitled to the same legal
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`protection as other property.” McCormick Harvesting Mach. Co. v. C. Aultman &
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`Co., 169 U.S. 606, 608-09 (1898). In fact, the Supreme Court has previously held
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`that “infringement cases today must be tried to a jury, as their predecessors were
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`more than two centuries ago.” Markman v. Westview Instruments, Inc., 517 U.S.
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`370, 377 (1996). Additionally, the Seventh Amendment of the Constitution
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`preserves a right to a jury trial in “[s]uits at common law.” U.S. CONST., amend. VII.
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`Because “[a]n action for patent infringement is one that would have been heard in
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`the law courts of old England,” Markman v. Westview Instruments, Inc., 52 F.3d
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`967, 992-93 (Fed. Cir. 1995), patent infringement cases, including those with
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`invalidity claims, should be tried by a jury.
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`That other courts may have held patents to be merely “public rights,” and,
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`therefore, outside Seventh Amendment protection, simply ignores Supreme Court
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`3
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`
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`Case IPR2017-01553
`Patent 8,989,830
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`precedent. See United States v. Am. Bell Tel. Co., 128 U.S. 315, 370 (1888) (“[The
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`subject of the patent] has been taken from the people, from the public, and made the
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`private property of the patentee . . . .”). Furthermore, if a patent were a pure “public
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`right,” then the USPTO would be solely responsible for violations of that right,
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`which is clearly not the case.
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`Finally, even to the extent that Seventh Amendment protections do not apply
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`to patent invalidity proceedings, inter partes review proceedings still violate Article
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`III of the Constitution. The Supreme Court has held that “in general, Congress may
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`not ‘withdraw from judicial cognizance any matter which, from its nature, is the
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`subject of a suit at the common law, or in equity, or admiralty.’” Stern v. Marshall,
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`564 U.S. 462, 484 (2011) (quoting Murray’s Lessee v. Hoboken Land &
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`Improvement Co., 59 U.S. 272, 284 (1855)). Because patent suits and corresponding
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`invalidity defenses have long been suits at common law and are subject to federal
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`jurisdiction, “the responsibility for deciding that suit rests with Article III judges in
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`Article III courts.” Id. “[S]uch an exercise of judicial power may [not] be taken from
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`the Article III Judiciary simply by deeming it part of some amorphous ‘public
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`right.’” Id. at 495. However, inter partes review proceedings under the America
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`Invents Act do just that by entering binding judgments on patent invalidity even
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`though such decisions should be reserved to Article III courts.
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`4
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`
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`Case IPR2017-01553
`Patent 8,989,830
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`Accordingly, inter partes review itself is unconstitutional. Additionally,
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`Petitioner’s dilatory conduct in filing its Petition and Motion for Joinder is
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`particularly improper and further exacerbates these constitutional issues because
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`Petitioner violated the enabling statute, 35 U.S.C. § 315, in making its request for
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`joinder. Under 35 U.S.C. § 315(c), joinder is permitted only for “any person who
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`properly files a petition under section 311 that the Director, after receiving a
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`preliminary response under section 313 or the expiration of the time for filing such
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`a response, determines warrants the institution of an inter partes review under section
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`314.” (emphasis added). Under 35 U.S.C. § 315(b), “an inter partes review may not
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`be instituted if the petition requesting the proceeding is filed more than 1 year after
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`the date on which the petitioner . . . is served with a complaint alleging infringement
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`of the patent.” Although 35 U.S.C. § 315(b) does not apply to requests for joinder,
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`35 U.S.C. § 315(c) requires that the Board determine that a petition warrant
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`institution before allowing joinder. A petition filed more than one year after service
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`of a complaint alleging infringement would not, by statute, warrant institution.2
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`Therefore, joinder cannot be proper for such a petition.
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`2 Patent Owner acknowledges that 37 C.F.R. § 42.122(b) exempts a petitioner from
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`the one-year time bar if a petition is accompanied by a request for joinder. However,
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`5
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`
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`Case IPR2017-01553
`Patent 8,989,830
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`In sum, Petitioner is attempting to invalidate a private property right outside
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`an Article III court and in violation of the Seventh Amendment’s right to a jury trial.
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`In addition to these constitutional violations, Petitioner has further violated the
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`statutory provisions required to properly establish a right to joinder by waiting nearly
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`seventeen months to request relief. Accordingly, Petitioner’s Motion for Joinder
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`should be denied.
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`II. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`deny Petitioner’s request for joinder and dismiss its Petition for Inter Partes Review
`
`of the ’830 patent without institution.
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`
`
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`Patent Owner contends that this regulation is invalid because it is contrary to the
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`statutory mandates of 35 U.S.C. § 315. Patent Owner further acknowledges that the
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`Board has in the past considered, and rejected, this timeliness argument. See, e.g.,
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`HTC Corporation et al. v. Cellular Communications Equipment LLC, Case No.
`
`IPR2017-00982 (Paper 8); Samsung Electronics Co., Ltd. et al. v. Ryujin
`
`Fujinomaki, Case No. IPR2017-01017 (Paper 12). Nevertheless, Patent Owner
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`asserts these arguments in this proceeding to preserve error in light of possible
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`appellate review.
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`6
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`
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`Case IPR2017-01553
`Patent 8,989,830
`
`Dated: July 10, 2017
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`Respectfully submitted,
`
`________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
`7
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`
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`Case IPR2017-01553
`Patent 8,989,830
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that document has been served via electronic
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`mail on July 10, 2017, to Petitioner at following email addresses pursuant to its
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`consent
`
`in
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`its
`
`Petition
`
`at
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`pp.
`
`3-4:
`
`harper.batts@bakerbotts.com,
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`jeremy.taylor@bakerbotts.com, and dlfitbit-valencell@bakerbotts.com.
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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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`8
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