throbber
Trials@uspto.gov
`571-272-7822
`
`Paper No. 9
`Entered: December 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FITBIT, INC.
`Petitioner,
`
`V.
`
`VALENCELL,INC.
`Patent Owner.
`
`IPR2017-01553
`Patent 8,989,830 B2
`
`Before BRIAN J. MCNAMARA, JAMESB. ARPIN,and
`SHEILA F. McSHANE,Administrative Patent Judges.
`
`McSHANE,Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 CFR. § 42.108; 37 C.F.R. § 42.122(b)
`
`

`

`IPR2017-01553
`Patent 8,989,830 B2
`
`I.
`
`INTRODUCTION
`
`Petitioner Fitbit, Inc. (“Fitbit”) filed a Petition requesting inter partes
`
`review of claims 1—6, 8-16, and 18—20 of U.S. Patent No. 8,989,830 B2
`
`(Exhibit 1001, “the ’830 patent’). Paper 2 (“Petition”or “Pet.”). Fitbit also
`
`filed a Motion for Joinder under 35 U.S.C. § 315(c) requesting joinder of the
`
`present proceeding with Apple Inc. v. Valencell, Inc., Case IPR2017-00317.
`
`Paper 3 (“Mot.”). Valencell, Inc. (“Patent Owner’’) filed a Preliminary
`
`Response and Opposition to Petitioner’s Motion for Joinder. Paper 8
`
`(“Prelim. Resp.”); Paper 7 (“Opp.”).
`
`Case IPR2017-00317 challenges claims 1-6, 8-16, and 18—20 ofthe
`
`°830 patent. Weinstituted trial in Case IPR2017-00317 on June 5, 2017, on
`
`the groundsthat: (1) claims 1-4 and 11-14 would have been obvious over
`
`Goodman(Ex. 1007); (2) claims 5 and 15 would have been obvious over
`
`Goodmanand Hicks (Ex. 1008); (3) claims 6 and 16 would have been
`
`obvious over Goodman, Hannula (Ex. 1009), and Asada (Ex. 1005);
`
`(4) claims 8, 9, 18, and 19 would have been obvious over Goodmanand
`
`Asada; and (5) claims 10 and 20 would have been obvious over Goodman
`
`and Delonzor(Ex. 1010). IPR2015-00317, Paper 7. These same grounds
`
`are those on-whichFitbit now seeksinstitution of inter partes review of
`
`claims 1—6, 8-16, and 18—20 in this case. Pet. 7.
`
`In its Opposition to the Motion for Joinder, Patent Owner contends
`
`that the Motion should be denied because inter partes reviews are
`
`unconstitutional, as addressed in Oil States Energy Services LLC v. Greene’s
`
`Energy Group, presently pending before the U.S. Supreme Court. Opp. 2-4,
`
`6; see Oil States Energy Services LLC v. Greene’s Energy Group, LLC, No.
`
`16-712, 137 S. Ct. 2293, 2017 WL 2507340 (June 12, 2017). Patent Owner
`
`additionally asserts that Fitbit filed its Petition more than one yearafter
`
`

`

`IPR2017-01553
`Patent 8,989,830 B2
`service of an infringement complaint, and institution of inter partes review
`
`underthis circumstanceis impermissible under 35 U.S.C. § 315(b). Jd.at 5.
`
`II. DISCUSSION
`
`Based on authority delegated to us by the Director, we have discretion
`
`to join an inter partes review to a previously instituted inter partes review.
`35 U.S.C. § 315(c). Section 315(c) provides,in relevant part, that “[i]f the
`
`Directorinstitutes an inter partes review, the Director, in his or her
`
`discretion, may join as a party to that inter partes review any person who
`properly files a petition under section 311.” Jd. When determining whether
`to grant a motionfor joinder we consider factors such as timing and impact
`ofjoinderonthetrial schedule, cost, discovery, and potential simplification
`of briefing. Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004,slip op.
`
`at 4 (PTAB April 24, 2013) (Paper 15).
`
`Fitbit filed the Petition and Motion for Joinder in the present
`
`proceeding on June 9, 2017, whichis timely filed within one month after we
`instituted trial in IPR2017-00317. 37 C.F.R. § 42.122(b). Fitbit’s Petition is
`
`based only on identical grounds, with substantially identical evidence and
`argument, on which weinstituted inter partes review in Case IPR2017-
`00317. Mot. 1. The Petition, therefore, is based on “same claims, prior art,
`and groundsfor unpatentability” raised in Case IPR2017-00317. Jd. Fitbit
`proposes to streamline discovery and briefing by taking an “understudy
`role.” /d. at 1, 6-7. Fitbit asserts that it relies upon the same expert and a ©
`substantially identical expert declaration as Case IPR2017-00317, so only a
`single deposition of the expert would be required.
`/d. at 6. Fitbit also
`alleges, that as long as Apple remains an active party:
`(1) all Fitbit filings
`will be consolidated with those of Apple; (2) Fitbit will not be permitted to
`
`

`

`IPR2017-01553
`Patent 8,989,830 B2
`raise new groundsnotalreadyinstituted; (3) Fitbit will be bound by any
`
`agreement between Patent Owner and Apple concerning discovery and/or
`
`depositions; and (4) Fitbit shall not receive any additional deposition time
`beyondthat permitted for Apple. /d. at 7. With all this, Fitbit contends that
`
`its joinder will not negatively impact the existing trial schedule in Case
`
`IPR2017-00317. Id. at 5-6.
`
`Fitbit’s Petition raises the same grounds and substantially identical
`
`arguments to those presented by Apple in Case IPR2017-00317. Pet. 1-60.
`
`Patent Owner’s Preliminary Responsealso has substantially identical
`
`arguments against institution to those presented in its Preliminary Response
`
`in Case IPR2017-00317. Prelim. Resp. 1-48.
`
`Someof Patent Owner’s arguments in opposition to the Motion are
`
`based upontheconstitutionality of inter partes review generally. At this
`time, no court has foundinter partes review unconstitutional. The matteris
`
`before the U.S. Supreme Court, and, consequently, Patent Owner’s
`
`argumentsas to denial of this Petition on this basis are premature.
`Further, we do not agree with Patent Owner’s argumentthat § 315(b)
`
`bars institution of inter partes review under the circumstances here. Section
`315(b) states that the one year bar “shall not apply to a request for joinder
`under subsection (c),” and § 315(c) authorizes, at our discretion,joinderof a
`party “to that [instituted] inter partes review any person whoproperly files a
`petition.” See Dell Inc. v. Network-1 Security Solution, IPR2013-00385, slip
`op. at 4-6 (PTAB July 29, 2013)(Paper 17); see also Nidec Motor Corp.v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1020 (Fed.Cir.
`2017) (Dyk,J., concurring) (“Thus, the exceptionto the time bar for
`‘request[s] for joinder’ wasplainly designed to apply where time-barred
`
`

`

`IPR2017-01553
`Patent 8,989,830 B2
`Party A seeksto join an existing IPR timely commenced by Party B when
`
`this would not introduce any newpatentability issues.”).
`
`Here, Fitbit’s Motion for Joinder has been timely filed and the Petition
`
`has been properly filed. And, in view of the foregoing, we find that joinder
`
`based uponthe conditions stated by Fitbit in its Motion for Joinder will have
`
`little or no impact on the timing, cost, or presentation ofthetrial on the
`
`instituted ground. Thus, the Motion for Joinder is granted.
`
`Ill. ORDER
`
`Accordingly,it is
`
`ORDEREDthattrial is instituted in IPR2017-01553 asto the
`
`following grounds: claims 14 and 11—14 would have been obvious over
`
`Goodman; claims 5 and 15 would have been obvious over Goodman and
`
`Hicks; claims 6 and 16 would have been obvious over Goodman, Hannula,
`
`and Asada; claims 8, 9, 18, and 19 would have been obvious over Goodman
`
`and Asada; and claims 10 and 20 would have been obvious over Goodman
`
`and Delonzor—the samegrounds on which weinstituted trial in IPR2017-
`
`00317;
`
`FURTHER ORDEREDthatFitbit’s Motion for Joinder with
`
`IPR2017-00317 is granted;
`
`FURTHER ORDEREDthat IPR2017-01553 is terminated and joined
`
`to IPR2017-00317, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the
`
`conditions stated in Fitibit’s Motion for Joinder (Paper3);
`
`FURTHER ORDEREDthat the Amended Scheduling Order in place
`
`for IPR2017-00317 (Paper 25) shall govern the joined proceedings;
`
`FURTHER ORDEREDthatall future filings in the joined proceeding
`
`are to be madeonly in IPR2017-00317;
`
`

`

`IPR2017-01553
`Patent 8,989,830 B2
`FURTHER ORDEREDthatthe case caption in IPR2017-00317 for all
`
`further submissions shall be changed to add Fitbit as a named Petitioner, and
`
`to indicate by footnote the joinder of IPR2017-01553 to that proceeding,as
`
`indicated in the attached example; and
`
`FURTHER ORDEREDthat a copy of this Decision shall be entered
`
`into the record of IPR2017-00317.
`
`

`

`IPR2017-01553
`Patent 8,989,830 B2
`
`PETITIONER:
`
`Harper Batts
`Jeremy Taylor
`BAKERBotts, L.L.P.
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`
`PATENT OWNER:
`
`Justin B. Kimble
`Nicholas C Kliewer
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`
`

`

`IPR2017-01553
`Patent 8,989,830 B2
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC. and FITBIT, INC.,
`Petitioner,
`
`Vv.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-00317
`Patent 8,989,830 B2!
`
`' Case IPR2017-01553 has been joined with this proceeding.
`
`8
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket