`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH LLC,
`Patent Owner.
`
`––––––––––
`
`Case IPR2017-02012
`Patent 6,434,212
`
`––––––––––
`
`PETITIONER’S UNOPPOSED MOTION FOR DISTRICT COURT-TYPE
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.100(b)
`
`
`
`
`
`I.
`
`Statement of Precise Relief Requested
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`Petitioner Fitbit, Inc. (“Fitbit”) respectfully requests that the Board apply a
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`district court-type claim construction in this proceeding because U.S. Patent No.
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`6,434,212 (“the ’212 Patent”) will likely expire before the Board issues a final
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`written decision. The Board should grant this motion because it is unopposed and
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`it complies with the requirements set forth in 37 C.F.R. § 42.100(b).
`
`II.
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`Fitbit’s Certification Required by 37 C.F.R. §42.100(b)
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`Fitbit hereby certifies that U.S. Patent No. 6,434,212 will expire within 18
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`months from the entry of the Notice of Filing Date Accorded to Petition because
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`the ’212 Patent expires on October 28, 2018 and the Notice of Filing Date
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`Accorded to the Petition was mailed on September 14, 2017. See Paper No. 3.
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`III. Statement of Reasons for Relief Requested
`A. Legal Standard
`“The claim construction standard to be applied during [an] inter partes
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`review[] depends upon whether the patent is expired or unexpired.” Samsung
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`Elecs. Co. v. Elm 3DS Innovations, LLC, Case No. IPR2016-00386, slip op. at 2
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`(PTAB Aug. 11, 2016) (Paper 28). “[W]hen a patent expires during an inter
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`partes review, the Board has applied the district court-type construction.” Id. at 3
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`(emphasis in original) (citations omitted). A request for the Board to apply a
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`district court-type claim construction must be made in the form of a motion filed
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`within thirty days of the filing of the petition. 37 C.F.R. § 42.100(b). The motion
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`1
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`must include a party’s certification that “the involved patent will expire within 18
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`months from the entry of the Notice of Filing Date Accorded to Petition.” Id.
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`Petitioner’s Motion is Timely and Authorized
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`B.
`This Motion for a District Court-Type Claim Construction is timely because
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`it is being filed less than thirty days after the petition for inter partes review was
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`filed on August 29, 2017. See 37 C.F.R. § 42.100(b). The Board authorized the
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`filing of this motion on September 25, 2017.
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`C. A District Court-Type Claim Construction is Appropriate
`Because the ’212 Patent’s parent application was filed on October 28, 1998,
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`the ’212 Patent will expire on October 28, 2018. See 35 U.S.C. § 154(a)(2). Fitbit
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`filed its petition for inter partes review on August 29, 2017. Thus, the ’212 Patent
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`will expire approximately 14 months after the filing date of Fitbit’s petition. It is
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`unlikely that the Board will issue a final determination prior to the ’212 Patent’s
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`expiration, given that the proceedings could take 18 months. Therefore, it is
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`appropriate for the Board to apply a district court-type claim construction. See
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`Samsung Elecs. Co. at 3 (“[W]hen a patent expires during an inter partes review,
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`the Board has applied the district court-type construction.”). The Patent Owner
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`does not oppose this motion.
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`
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`2
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`
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`Dated: September 27, 2017
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`
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`
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`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.
`
`
`
`3
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on September 27, 2017, a true and
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`correct copy of the foregoing motion was served via electronic mail to:
`
`
`
`
`
`Counsel for Patent Owner:
`
`Walter D. Davis, Jr. (Reg. No. 45,137)
` Email: wdavis@dbjg.com
`Wayne M. Helge (Reg. No. 56,905)
` Email: whelge@dbjg.com
`Aldo Noto (Reg. No. 35,628)
` Email: anoto@dbjg.com
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`Phone: (571)765-7700
`Fax: (571)765-7200
`
`
`
`
`
`
`Dated: September 27, 2017
`
`
`
`
`
`By:
`
`
`
`
`/Harper Batts/
`Harper Batts
`Reg. No. 56,160
`Attorney for Petitioner Fitbit, Inc.
`
`
`
`4
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`
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