`Case 2:19-cv-06301-AB-KS Document 121-2 Filed 01/27/21 Page 1 of 6 Page ID #:3996
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`EXHIBIT B
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`EXHIBIT B
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`
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`Case 2:19-cv-06301-AB-KS Document 121-2 Filed 01/27/21 Page 2 of 6 Page ID #:3997
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`FITBIT, INC.,
`Petitioner
`
`v.
`
`PHILIPS NORTH AMERICA LLC,
`Patent Owner
`
`_______________
`Case Nos. IPR2020-00782
`U.S. Patent No. 6,976,958
`_______________
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
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`Case 2:19-cv-06301-AB-KS Document 121-2 Filed 01/27/21 Page 3 of 6 Page ID #:3998
`IPR2020-00782
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`Patent Owner Preliminary Response
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`
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`Exhibit No.
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`EXHIBITS
`
`Description
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`2001
`
`Disclaimer of Claims 15-17 of U.S. Patent No. 6,976,958 Under 37
`CFR § 1.321(a)
`
`
`
`i
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`Case 2:19-cv-06301-AB-KS Document 121-2 Filed 01/27/21 Page 4 of 6 Page ID #:3999
`IPR2020-00782
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`Patent Owner Preliminary Response
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner Philips
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`North America LLC (“Patent Owner”) submits this Patent Owner Preliminary
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`Response to the Petition of Fitbit, Inc. (“Fitbit”) (IPR2020-00782) challenging
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`claims 15-17 of U.S. Patent No. 6,976,958 (“the ’958 patent”).
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`Patent Owner has filed a statutory disclaimer with the United States Patent
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`and Trademark Office, disclaiming claims 15-17 of the ’958 patent pursuant to 35
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`U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2001. These are the only claims
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`challenged in the Petitions. Thus, the Petitions are now moot and the Board should
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`deny institution of further proceedings.
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`When a patent owner files a statutory disclaimer with its preliminary
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`response, “no inter partes review will be instituted based on disclaimed claims.”
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`37 C.F.R. § 42.107(e). Significantly, when claims in a patent are properly
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`disclaimed, such claims are “treated as though [] [they] never existed.” HTC Corp.
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`v. Lemaire Illumination Tech. LLC, IPR2019-00091, Paper 7 at 1 (PTAB Apr. 10,
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`2019) (citing Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1983 (Fed. Cir.
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`1998)).
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`The Board routinely denies institution of inter partes review under 37 C.F.R.
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`§ 47.107(e) when the patent owner has disclaimed each of the challenged claims.
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`See, e.g., Apple Inc. v. INVT SPE LLC, IPR2019-01574, Paper 9 (PTAB Jan. 15,
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`2020); Am. Honda Motor Co., Inc. v. Intellectual Ventures II LLC, IPR2018-
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`1
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`
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`Case 2:19-cv-06301-AB-KS Document 121-2 Filed 01/27/21 Page 5 of 6 Page ID #:4000
`IPR2020-00782
`
`Patent Owner Preliminary Response
`
`00350, Paper 12 (PTAB June 21, 2018); Facebook, Inc. v. Skky LLC, IPR2017-
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`00641, Paper 9 (PTAB Jul. 13, 2017); Borealis AG v. Berry Plastics Corp.,
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`IPR2016-00235, Paper 11 at 3 (PTAB Mar. 24, 2016); RPX Corp. v. Cedatech
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`Holdings, LLC, IPR2015-00736, Paper 8 at 2 (PTAB Aug. 13, 2015).
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`Here, Patent Owner has disclaimed each and every claim challenged in the
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`Petitions, in accordance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a).
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`Because the Board treats these claims as though they never existed, the Petitions
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`are accordingly moot and no longer provide any basis for institution. Further,
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`institution would be an inefficient use of resources.
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`For these reasons, the Board should deny institution of the Petitions.
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`
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`
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`Date: August 10, 2020
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`Respectfully submitted,
`
`/George C. Beck/
`George C. Beck
`Registration No. 38,072
`Counsel for Patent Owner
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`
`
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`2
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`Case 2:19-cv-06301-AB-KS Document 121-2 Filed 01/27/21 Page 6 of 6 Page ID #:4001
`IPR2020-00782
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`Patent Owner Preliminary Response
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing Patent Owner
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`Preliminary Response and Exhibit 2001 is being served on August 10, 2020, by
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`filing these documents through the Patent Trial and Appeal Board End-to-End
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`(E2E) system as well as delivering copies via email to the following counsel for
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`the Petitioners:
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`
`
`
`
`
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`Naveen Modi
`
`Yar R. Chaikovsky
`
`Joseph E. Palys
`
`David Beckwith
`
`David Okano
`
`PH-Fitbit-Philips-IPR@paulhastings.com
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`
`
`
`/George C. Beck/
`George C. Beck
`Registration No. 38,072
`Counsel for Patent Owner
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`
`
`
`
`
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`3
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`
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