Case 1:19-cv-11586-FDS Document 265-6 Filed 01/04/22 Page 1 of 75
`Case 1:19-cv-11586-FDS Document 265-6 Filed 01/04/22 Page 1 of 75
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`EXHIBIT 6
`EXHIBIT 6
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`Case 1:19-cv-11586-FDS Document 265-6 Filed 01/04/22 Page 2 of 75
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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 No. IPR2020-00828
`U.S. Patent No. 8,277,377
`_______________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
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`Patent Owner Preliminary Response
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`TABLE OF CONTENTS
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`I. 
`II. 
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` 
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` 
`
` 
`
`INTRODUCTION ........................................................................................... 1 
`BACKGROUND ............................................................................................. 4 
`A. 
`The ’377 Patent ..................................................................................... 4 
`The Patented Technology ........................................................... 4 
`Challenged Claims ...................................................................... 8 
`Prosecution History ..................................................................... 9 
`The Parties’ Related District Court Litigation .................................... 15 
`B. 
`III.  THE BOARD SHOULD DENY INSTITUTION PURSANT TO 35
`U.S.C. § 314(a) .............................................................................................. 16 
`A. 
`The Fintiv Factors Weigh Against Institution ..................................... 19 
`Petitioner Has Not Sought to Stay the Fitbit Litigation ............ 19 
`The Progression of the Fitbit and Garmin Litigations
`Weigh Heavily in Favor of Denial ............................................ 19 
`The District Courts and the Parties Have Invested a
`Significant Amount of Resources in the District Court
`Litigations ................................................................................. 21 
`The Issues Raised in the Petition Will Be Resolved by
`the District Court Litigations .................................................... 22 
`Petitioner Is Also a Party to the Fitbit Litigation ...................... 22 
`The Weakness of the Petition Also Weighs in Favor of
`Denying Institution ................................................................... 23 
`IV.  THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF SUCCESS. ....... 23 
`A.  Ground 1 .............................................................................................. 23 
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`i
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`Patent Owner Preliminary Response
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` 
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` 
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` 
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`The Asserted Prior Art .............................................................. 23 
`The Petition Fails to Show Why a POSA Would Have
`Been Motivated to Combined Browne, Ausems and Hsu ........ 33 
`The Petition Fails to Show How the Browne-Ausems-
`Hsu Combination Discloses Would Have Included All
`Features of the Challenged Claims ........................................... 44 
`Ground 2 .............................................................................................. 46 
`The Asserted Prior Art .............................................................. 46 
`The Petition Fails to Show Why a POSA Would Have
`Been Motivated to Combine Hickman With Theimer .............. 52 
`The Petition Fails to Show How the Hickman-Theimer
`Combination Discloses Would Have Included All
`Features of the Challenged Claims ........................................... 58 
`Ground 3 .............................................................................................. 60 
`Vaisanen .................................................................................... 60 
`For the Same Reasons as Explained Above for Ground 2,
`Ground 3 Fails ........................................................................... 60 
`BOTH GROUNDS SHOULD BE DENIED UNDER § 325(d) ................... 60 
`A.  Discretionary Denial Is Appropriate for Ground 1 ............................. 61 
`Advanced Bionics Prong 1 ........................................................ 61 
`Advanced Bionics Prong 2 ........................................................ 66 
`The Petition Fails to Show Why a § 325(d) Denial Would Not
`Be Appropriate With Respect to Ground 2 ......................................... 67 
`VI.  CONCLUSION .............................................................................................. 68
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`B. 
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`C. 
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`B. 
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`V. 
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`ii
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`Exhibit No.
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`EXHIBITS
`
`Description
`
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`Complaint for Patent Infringement, filed July 22, 2019 in Philips
`North America LLC v. Fitbit, Inc., Case 1:19-cv-11586 (D. Mass.)
`
`Defendant Fitbit, Inc.’s Renewed Rule 12(b)(6) Motion to Dismiss
`Plaintiff Philips North America LLC’s First Amended Complaint
`Under 35 U.S.C. § 101, filed Dec. 12, 2019 in Philips North
`America LLC v. Fitbit, Inc., Case 1:19-cv-11586 (D. Mass.)
`
`Scheduling Order filed Mar. 25, 2020 in Philips North America
`LLC v. Fitbit, Inc., Case 1:19-cv-11586 (D. Mass.)
`
`Garmin’s P.R. 3-3 Disclosures, in Philips North America LLC v.
`Garmin International, Inc. and Garmin Ltd., Case No. 2:19-cv-
`06301-AB-KS (C.D. Cal.)
`
`Defendant Fitbit’s Invalidity and Noninfringement Contentions,
`March 13, 2020, Philips North America LLC v. Fitbit, Inc., Case
`1:19-cv-11586 (D. Mass.)
`
`Text Only Scheduling Notice dated July 28, 2020, in Philips North
`America LLC v. Garmin International, Inc. and Garmin Ltd., Case
`No. 2:19-cv-06301-AB-KS (C.D. Cal.)
`
`Order Re: Jury/Court Trial filed Jan. 8, 2020, in Philips North
`America LLC v. Garmin International, Inc. and Garmin Ltd., Case
`No. 2:19-cv-06301-AB-KS (C.D. Cal.)
`
`Notice Resetting a Hearing filed June 4, 2020, in Philips North
`America LLC v. Fitbit, Inc., Case 1:19-cv-11586 (D. Mass.)
`
`Excerpt from Microsoft Press Computer Dictionary Third Edition
`(1997)
`
`U.S. Patent No. 6,013,007 (Root et al.)
`
`U.S. Patent No. 6,790,178 (Mault)
`
`iii
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`2012
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`Joint Stipulation to Modify the Scheduling Order, filed Aug. 7,
`2020, in Philips North America LLC v. Garmin International, Inc.
`and Garmin Ltd., Case No. 2:19-cv-06301-AB-KS (C.D. Cal.)
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`
`iv
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`Patent Owner Preliminary Response
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`I.
`
`INTRODUCTION
`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. (“Petitioner”) challenging claims 1, 4-6, 9,
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`and 12 of U.S. Patent No. 8,277,377 (“the ’377 patent”). The Petition should be
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`denied for at least the following reasons.
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`First, the Board should deny institution on discretionary grounds in view of
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`the advanced state of parallel district court actions and the Petition’s reliance on
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`issues previously addressed by the Office during prosecution. By the time that the
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`Board would issue any final written decision, two district courts will likely have
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`addressed the validity of each of the challenged claims over the same prior art
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`references cited in the Petition. Patent Owner’s related district court litigation with
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`Fitbit, Philips N. Am. LLC v. Fitbit, Inc., Case No. 1:19-cv-11586-IT (D. Mass.)
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`(“Fitbit Litigation”), will likely go to trial in the summer of 2021. Another district
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`court action, Philips N. Am. LLC v. Garmin Int’l, Inc., et al., Case No. 1:19-cv-
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`06301-AB-KS (D. Mass.) (“Garmin Litigation”), is even further advanced, with a
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`trial scheduled in March 2021. In both cases, Fitbit and Garmin are challenging
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`the same claims based on the same prior art references. In fact, the similarities in
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`the invalidity contentions and claim construction positions of the litigations
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`strongly indicate that Fitbit and Garmin are coordinating their litigation efforts.
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`1
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`Thus, instituting inter partes review here would not be an efficient use of
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`resources.
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`Second, the Petition fails to establish a reasonable likelihood of prevailing as
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`to any challenged claim. Each of the three grounds of the Petition relies wholly on
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`improper hindsight to combine unrelated references using the claims of the ’377
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`patent as a template. Among other features, all challenged claims require
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`downloading an application to a web-enabled wireless phone over the internet,
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`coupling the phone to an exercise device, using the application to receive data
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`indicating a physiologic status of a subject, using the application to receive data
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`indicating the amount of exercise performed, sending the information to an internet
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`server, receiving a calculated response from the server, and using the application to
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`display the response. As found during prosecution, this combination of features
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`was not found in the prior art as of December 17, 1999.1
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`As the Petition admits, the primary reference for Ground 1, U.S. Patent No.
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`5,598,849 (“Browne”) (Ex. 1005) makes no use of a web-enabled wireless phone,
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`and does not teach or disclose downloading an application from a server and using
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`the application as recited in the claims. There is no teaching or suggestion in the
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`secondary references, U.S. Patent No. 6,434,403 (“Ausems”) (Ex. 1008) and U.S.
`
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`1 The Petition does not challenge the earliest claimed priority date of
`December 17, 1999, at least for purposes of this proceeding.
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`2
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`Patent No. 6,587,684 (“Hsu”) (Ex. 1009), which would lead a person of ordinary
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`skill in the art (“POSA”) to modify Browne in the manner claimed. As the Petition
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`also admits, Ausems does not disclose downloading any application over the
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`Internet, much less one that is used to receive physiological status information
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`from a device and receive exercise related information from a server. In relevant
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`part, Hsu discloses a cell phone that can receive “control” software, and fails to
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`disclose or suggest downloading and using an “application” in the manner claimed.
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`Grounds 2 and 3 also fail to establish obviousness. Both of those grounds
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`rely primarily on U.S. Patent No. 6,059,692 (“Hickman”) (Ex. 1004), a reference
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`that was explicitly applied by the examiner during prosecution and found not to
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`establish obviousness together with U.S. Patent No. 6,353,839 (“King”) (Ex.
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`1024). Hickman does not utilize a web-enabled phone. Petitioner’s reliance on
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`U.S. Patent No. 6,519,241 (“Theimer”) (Ex. 1006) in place of King fails to raise
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`any new issue that should be addressed by the Board. Theimer does not disclose
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`use of a downloaded application to receive a calculated response from a server
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`based on exercise related information. Further, the Petition fails to establish how
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`or why a POSA would modify Hickman in view of Theimer.
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`Indeed, the Petition fails to establish any material differences between the
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`asserted grounds and the prior art considered by the Office during prosecution or
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`any error by the examiner in finding the challenged claims patentable. Thus, the
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`3
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`issues raised by the Petition are indistinguishable from those addressed in NHK,
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`where the Board denied institution under § 314 and § 325 in view of the
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`weaknesses in the petition and the advanced state of parallel litigation. The
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`Petition should be denied for the same reasons.
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`II. BACKGROUND
`A. The ’377 Patent
`The Patented Technology
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`The ’377 patent issued on October 2, 2012 and claims a priority date of
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`December 17, 1999. The patent addresses problems associated with the prior art
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`by providing an apparatus for monitoring exercise with wireless internet
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`connectivity including downloading an application to a web-enabled wireless
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`phone, using the application to receive data indicating a physiological status of an
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`individual, sending the exercise-related information to an internet server, and
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`receiving a calculated response from the server where the response is associated
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`with a calculation performed by the server based on the exercise-related
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`information.
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`The ’377 patent discloses an embodiment that implements “a health or
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`lifestyle management plan.” Id., 3:6-7. In this embodiment,
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`a person interested in tracking an exercise program may take the WWD
`to the local health club and attach the same to an exercise machine, send
`data output from various exercise machines over the Internet, and
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`4
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`receive a personalized response from the server of a company
`specializing in Health & Lifestyle Management.
`Id., 3:21-27.
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`The ’377 patent explains that “[t]he present invention may be connected to
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`various HMDs, both medical and exercise-related in nature, and may communicate
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`information via a wireless connection such as a wireless Internet connection.” Id.
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`3:48-51. A major advantage of this invention is that it frees the user “from the
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`constraints of wired systems” and “allows users with consumer ‘off-the-shelf’
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`wireless devices to significantly extend the range of connectivity over that of wired
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`computer, television, or even wireless telemetry systems.” Id., 3:53-57.
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`Indeed, the WWD can be “a web-enabled cellular phone.” Id., 3:58-59.
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`And, in the “healthy lifestyle management embodiment,” the HMD “may be an
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`exercise machine, including treadmills, rowers, steppers, exercise cycles, or other
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`aerobic or anaerobic exercisers, or a monitor, include monitors for temperature,
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`heart rate, blood pressure, amount of work or rate of work performed, etc.” Id.,
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`5:65-6:3.
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`The ’377 patent further explains that the user can connect “to a specific
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`Internet site and a software program, resident on a remote server located on the
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`Internet, downloads an interactive user interface for that patient and an application
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`for the measurement of the physiological data.” Id. at 4:44-47. The application
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`can provide “a personalized display for the user and configures the WWD to
`5
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`control and monitor devices connected via a generic input/output port to the
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`WWD.” Id. at 4:50-52.
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`Figure 4 shows an example of the wireless health monitoring apparatus
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`(“WHMA”).
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`
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`In Figure 4, WHMA 10 “is shown in signal communication with server 22 via a
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`connection 72.” Id., 7:66-8:1. “WHMA 10 includes an application that may be
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`viewed as having two components: a base wireless or device application 70 and an
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`application presentation layer or user interface 68.” Id., 8:3-5. “These applications
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`may accept as inputs data from a sensor 24 as well as from a manual input 36.”
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`Id., 8:10-12.
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`The ’377 patent further explains that “[t]o initialize the system, the program
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`starts and a wireless application is loaded into the WWD,” and “[t]he loading of
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`6
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`the wireless application may occur via synchronization from a desktop or via
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`downloading from a server over the internet.” Id. at 9:6-9.
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`Figure 6 of the ’377 patent shows an example where “the HMD is an
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`exercise machine.” Id., 10:23-26.
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`
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`In the system, “a sensor measures a health parameter (step 216).” Id., 10:27-29.
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`“The sensor may send the parameter to the exercise machine (step 218).” Id.,
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`10:29-34. “The exercise machine then sends the parameter to the WWD (step
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`220)” and “[t]he WWD wirelessly communicates the parameter to the application
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`server (step 222), e.g., via the wireless web.” Id., 10:35-38.
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`“The application server processes the parameter (step 224 and optionally
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`step 225), and calculates a response (step 226) based at least in part on the
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`parameter.” Id., 10:47-49. “The application server then sends the response to the
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`WWD (step 228), where the response is displayed.” Id., 10:51-53.
`7
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`Patent Owner Preliminary Response
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`Challenged Claims
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`The Petition seeks to have claims 1, 4-6, 9, and 12 of the ’377 Patent found
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`unpatentable. Claim 1 is the only independent claim. Claims 4-6, 9, and 12 each
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`depend from claim 1. Claim 1 recites:
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`A method for interactive exercise monitoring, the method comprising
`the steps of:
`a. downloading an application to a web-enabled wireless phone
`directly from a remote server over the internet;
`b. coupling the a web-enabled wireless phone to a device which
`provides exercise-related information;
`c. rendering a user interface on the web-enabled wireless phone;
`d. using the application, receiving data indicating a physiologic
`status of a subject;
`e. using the application, receiving data indicating an amount of
`exercise performed by the subject;
`f. wherein at least one of the data indicating a physiologic status
`of a subject or the data indicating an amount of exercise
`performed by the subject is received from the device which
`provides exercise-related information, and wherein the data
`indicating a physiologic status of a subject is received at least
`partially while the subject is exercising;
`g. sending the exercise-related information to an internet server
`via a wireless network;
`h. receiving a calculated response from the server, the response
`associated with a calculation performed by the server based on
`the exercise-related information; and
`8
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`i. using the application, displaying the response.
`Prosecution History
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`The Petition mischaracterizes the prosecution history by asserting that the
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`“applicant overcame a rejection over Hickman and King during prosecution by
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`convincing the examiner that King ‘taught against the Applicant’s invention’ and
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`thus ‘did not provide support for an obviousness rejection in combination with
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`Hickman (or Rautila). Pet., 7. While Applicant did argue against the combination
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`of Hickman and King, that argument was unsuccessful and did not overcome the
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`examiner’s rejection. Rather, as summarized below, the examiner allowed the
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`claims only after Applicant amended them to explicitly require “downloading an
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`application to a web-enabled wireless phone directly from a remote server over the
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`internet” (step a), “using the application” for receiving data indicating a
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`physiologic status of a subject (step d), receiving data indicating an amount of
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`exercise performed by the subject (step e), and “displaying the response (step i).
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`In fact, during prosecution, the examiner carefully scrutinized the challenged
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`claims in view of several references, in addition to Hickman and King, and
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`ultimately found them patentable. As discussed further below, the prior art cited
`
`asserted in the Petition is cumulative or identical to what the examiner considered,
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`and the Petition fails to show how it is being applied in a manner different from
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`what the Office already considered.
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`9
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`On August 13, 2010, the examiner rejected application claims 1-4, 6-18, and
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`20-21 under 35 U.S.C. 102(e) as being anticipated by U.S. Patent No. 6,013,007
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`(“Root”) (Ex. 2010). Ex. 1010, 210. The examiner asserted that Root teaches the
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`use of a personal athletic performance monitor (device 101) with a communication
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`network (Internet 803) to remotely monitor a user while he/she is exercising (Figs.
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`1-3, 6-8). Id. The examiner interpreted Root’s performance monitor as disclosing
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`meeting the claimed “web-enabled wireless phone.” Id. The examiner also found
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`that Root’s “monitor is optionally connected to physiological sensors such as a
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`heart rate sensor 611 and temperature sensor 612 (Fig.6) via a wired or wireless
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`connection,” and that the monitor is “capable of transmitting stored data to an
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`Internet web site for performance trending . . . and receiving feedback from said
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`web site regarding personal fitness recommendations.” Id., 211.
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`On September 20, 2010, the Applicant traversed the rejection by arguing that
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`Root (1) did not explicitly disclose wireless communications and (2) “fails to
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`disclose receiving a calculated response, the calculation based on the
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`exercise/physiologic data, and displaying the response.” Id., 238, 241. In doing
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`so, the Applicant explained that Root can only transmit information to a remote
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`computer via a “standard telephone line” and does not have the capability to
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`transmit data wirelessly. Id., 238. As the Applicant explained, “[t]he Root
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`reference clearly is for storing data about exercise and then uploading the same at a
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`later time . . .” Id., 240. Similarly, data indicating a physiologic status can only be
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`received when data is uploaded and “consequently is not disclosed to be used in a
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`calculated response to a web-enabled wireless device.” Id., 241.
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`On March 18, 2011, the examiner agreed with these arguments and
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`withdrew the rejection based on Root. Id., 264. The examiner, however, issued
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`new rejections, finding the pending claims to be anticipated by U.S. Patent No.
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`6,790,178 to Mault (Ex. 2011), and obvious over on Hickman (Ex. 1004) in view
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`of U.S. Patent No. 6,353,839 (“King”) (Ex. 1024). Id., 266-270.
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`The March 18, 2011 Office Action found that Mault taught, inter alia, (1) “a
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`wireless computing device, such as a PDA or a cellular phone (web enabled
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`wireless phone),” (2) “a plurality of physiological monitors (hereinafter ‘plug-in
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`modules’) adapted to interface with the PDA, and a remote internet based server
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`communicatively coupled with the PDA to receive physiological data and to
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`provide feedback to the PDA’s user” and (3) “[t]he PDA is equipped with health
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`management software that includes the ability to . . . tracking the user’s exercise,
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`diet and physiological parameters, [and] communicates this information to a
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`remote internet server where the data is further analyzed and/or reviewed by a
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`health professional so that feedback is provided to the user via the PDA.” Id., 266-
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`267.
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`The March 18, 2011 Office Action found that Hickman disclosed all of the
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`limitations of then-pending claim 1 except for “using a web enabled wireless
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`phone as a computing device.” Id., 268-269. The examiner, however, asserted that
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`this limitation was taught by King. According to the examiner, King “discloses
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`that the rapid growth of the Internet has led to increases in data processing
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`capabilities in portable devices such as web-enabled mobile phones and PDAs”
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`and that “[w]eb enabled mobile phones and PDAs are able to serve as a medium
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`for receiving data from an input and then bi-directional communicating the data
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`between a user end and a remote server end.” Id., 269. And, “as such, it would
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`have been obvious to one of ordinary skill in the art at the time of the invention to
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`replace Hickman’s local computer with a portable device such as a web-enabled
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`wireless phone because more and more people are carrying mobile devices, as such
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`it would be beneficial to a user to carry Hickman’s ‘virtual personal trainer’ to
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`keep track and receive feedback on his/her daily exercise routines.” Id.
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`On June 14, 2011, Applicant traversed these rejections. As to Mault,
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`Applicant submitted a declaration under Rule 131 (id., 314-315) to establish an
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`earlier date of invention in addition to arguing that Mault failed to meet each of the
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`claim limitations. Id., 305-309. As to the Hickman-King rejection, Applicant
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`argued that the claimed invention was “designed to suit the constraints of the small
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`display screens of a mobile phone” whereas “the purpose of King was to improve
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`the display functionality of a mobile wireless device by reducing the delay
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`involved in interacting with a back-end server” and, consequently, “does not teach
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`or disclose the use of mobile phones to control and monitor devices connected via
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`a generic input/output port to the mobile phone.” Id., 310-11.
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`Applicant also argued that Hickman “specifically uses a script system to
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`control and monitor the operation of the exercise apparatus” and “King specifically
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`teaches away from script systems.” Id., 311. In support of this argument,
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`Applicant cited King’s disclosure that “scripting language, such as JavaScript and
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`ActiveX, . . . proves to be too complicated to be used in the mobile devices.” Ex.
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`1024, 2:6-11.
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`Contrary to Petitioner’s representation (Pet., 7), there is no evidence that the
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`examiner ultimately accepted these arguments. On August 30, 2011, the examiner
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`maintained the rejection is a final office action. Id., 369. In response, Applicant
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`appealed the rejections set forth in the final action, filing an appeal brief on March
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`12, 2012. Id., 419-440.
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`As reflected in an Applicant Interview Summary record, on April 4, 2012,
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`the examiner, the examiner’s supervisor, inventor Roger Quy, and Applicant’s
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`representative conducted an interview in which they discussed Mault, Hickman
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`and King. Id., 446. According to the interview record, the participants the Rule
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`131 declaration relative to Mault as well as “possible claim amendments to further
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`distinguish the claims over the applied prior art references.” Id., 450 (emphasis
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`added). The examiner advised that “the applicant may choose to maintain the
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`Appeal filed on 03/12/2012, or to submit an RCE with the discussed claim
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`amendments. Id.
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`Shortly after this amendment, on May 17, 2012, Applicant filed an RCE and
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`amendment, which amended independent claim 1 to explicitly recite “(a)
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`downloading an application to a web-enabled wireless phone directly from a
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`remote server over the internet” and “using the application” in regard to what are
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`steps d., e., and i. of issued claim 1. Id., 461. The amendment added similar
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`language to independent claim 8. Id., 462. In the remarks, Applicant stated that in
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`accordance with the April 9, 2012 interview, “the attached amended claims are
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`respectfully submitted to define over the applied references and thus should be in
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`allowable condition.” Id., 465.
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`The examiner then allowed the claims with minor clarifying amendments to
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`the computer readable media claims. The accompanying reasons for allowance
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`stated that “[t]he prior art does not disclose or fairly suggest a web-enabled
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`wireless phone for interfacing with a device which receive exercise related
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`information; wherein said web-enabled wireless phone downloads a software
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`application directly from a remote server via the Internet, and uses said
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`application to receive and transmit a user’s exercise information for management
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`and analysis by said remote server.” Id., 480 (emphasis added). The reasons for
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`allowance further explained that “Mault fails to teach a direct connection with said
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`remote server for downloading said software application; in fact Mault specifically
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`discloses that downloading and installing of software applications are done via
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`another memory module.” Id. (emphasis added).
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`B.
`The Parties’ Related District Court Litigation
`The Fitbit Litigation has progressed significantly. The complaint was filed
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`over a year ago on July 22, 2019 in the District of Massachusetts. Ex. 2001. Since
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`then, Fitbit has filed a motion to dismiss seeking to have all of the challenged
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`claims found invalid pursuant to 35 U.S.C. § 101 (this issue remains pending
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`before the court) (Ex. 2002); the parties have served extensive infringement and
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`invalidity contentions (totaling thousands of pages); and the parties have
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`completed claim construction briefing and the Markman hearing has been held.
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`Ex. 2008.
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`The Fitbit Litigation is expected to continue at a brisk pace. Fact discovery
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`is set to close October 14, 2020 – two weeks before the deadline for the institution
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`decision, October 28. Ex. 2003, 3. Expert discovery is set to close February 18,
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`2021. Id. Thereafter, the parties will begin preparing for trial with the initial
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`pretrial conference set for June 23, 2021 with trial expected to occur shortly after
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`that. Id.
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`The Garmin Litigation has also progressed significantly. Like the Fitbit
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`Litigation, the complaint was filed on July 19, 2020. Since then, the parties have
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`served extensive infringement and invalidity contentions (totaling thousands of
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`pages); and the parties have completed claim construction briefing (the Markman
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`hearing has been vacated and the court will issue its ruling based on the papers).
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`Exs. 2006, 2008. Notably, Garmin’s invalidity contentions with respect to the ’377
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`patent are nearly identical to Fitbit’s invalidity contentions. See, e.g., Exs. 2004
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`and 2005. Garmin’s and Fitbit’s contentions assert the same prior art and
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`challenge the same claims.
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`The Garmin Litigation is nearing its final stages. Fact discovery is set to
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`close September 4, 2020 – nearly two months before the deadline for the institution
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`decision. Ex. 2012, 1. Expert discovery is set to close November 6, 2020. Id.
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`Thereafter, the parties will begin preparing for trial and trial is expected to begin
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`March 30, 2021 – months before any final written decision would issue. Ex. 2007,
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`3.
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`III. THE BOARD SHOULD DENY INSTITUTION PURSANT TO 35
`U.S.C. § 314(a)
`Congress intended inter partes review as a “complete substitute” for and an
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`“alternative” to district court litigation for assessing §§ 102/103 validity disputes
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`over prior art patents and printed publications. WesternGeco LLC v. ION
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`Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018) (citing H. Rep. No. 112-
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`98 at 48 (2011)). The Petition seeks review of the patentability of claims whose
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`validity will be addressed in the Fitbit and Garmin Litigations. Review of the same
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`issues, involving the same parties, will not serve the purpose intended by Congress.
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`Accordingly, the Board should exercise its discretion under 35 U.S.C. § 314(a) to
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`deny institution. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed.
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`Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR
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`proceeding.”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
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`IPR2016-01357, Paper 19, 15-19 (PTAB, Sept. 6, 2017) (Section II.B.4.i
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`designated as precedential)