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)
`
`
`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
`
`
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