`571-272-7822
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`Paper No. 9
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` Entered: December 1, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`FITBIT, INC.
`Petitioner,
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`v.
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`VALENCELL, INC.
`Patent Owner.
`____________
`
`IPR2017-01554
`Patent 8,886,269 B2
`____________
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`
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`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
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`
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`DECISION
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`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
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`IPR2017-01554
`Patent 8,886,269 B2
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`I. INTRODUCTION
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`Petitioner Fitbit, Inc. (“Fitbit”) filed a Petition requesting inter partes
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`review of claims 1–10 of U.S. Patent No. 8,886,269 B2 (Exhibit 1001, “the
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`’269 patent”). Paper 2 (“Petition” or “Pet.”). Fitbit also filed a Motion for
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`Joinder under 35 U.S.C. § 315(c) requesting joinder of the present
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`proceeding with Apple Inc. v. Valencell, Inc., Case IPR2017-00318. Paper 3
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`(“Mot.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary Response
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`and Opposition to Petitioner’s Motion for Joinder. Paper 8 (“Prelim.
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`Resp.”); Paper 7 (“Opp.”).
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`Case IPR2017-00318 challenges claims 1–10 of the ’269 patent. We
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`instituted trial in Case IPR2017-00318 on June 5, 2017, on the grounds that:
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`(1) claims 1, 2, 6, and 7 would have been unpatentable as obvious over
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`Asada; (2) claim 3 would have been unpatentable as obvious over Asada and
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`Hicks; (3) claims 4 and 5 would have been unpatentable as obvious over
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`Asada and Hannula; (4) claim 8 would have been unpatentable as obvious
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`over Asada and Delonzor; (5) claims 9 and 10 would have been unpatentable
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`as obvious over Asada and Al-Ali; (6) claims 1 and 2 would have been
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`unpatentable as obvious over Goodman; (7) claim 3 would have been
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`unpatentable as obvious over Goodman and Hicks; (8) claim 4 would have
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`been unpatentable as obvious over Goodman and Hannula; (9) claim 5
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`would have been unpatentable as obvious over Goodman, Hannula, and
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`Asada; (10) claims 6 and 7 would have been unpatentable as obvious over
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`Goodman and Asada; (11) claim 8 would have been unpatentable as obvious
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`over Goodman and Delonzor; and (12) claims 9 and 10 would have been
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`unpatentable as obvious over Goodman and Al-Ali. IPR2015-00318, Paper
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`7. These same grounds are those on which Fitbit now seeks institution of
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`inter partes review of claims 1–10 in this case. Pet. 6–7.
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`2
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`IPR2017-01554
`Patent 8,886,269 B2
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`In its Opposition to the Motion for Joinder, Patent Owner contends
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`that the Motion should be denied because inter partes reviews are
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`unconstitutional, as addressed in Oil States Energy Services LLC v. Greene’s
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`Energy Group, presently pending before the U.S. Supreme Court. Opp. 2–4,
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`6; see Oil States Energy Services LLC v. Greene’s Energy Group, LLC, No.
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`16-712, 137 S. Ct. 2293, 2017 WL 2507340 (June 12, 2017). Patent Owner
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`additionally asserts that Fitbit filed its Petition more than one year after
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`service of an infringement complaint, and institution of inter partes review
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`under this circumstance is impermissible under 35 U.S.C. § 315(b). Id. at 5.
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`II. DISCUSSION
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`Based on authority delegated to us by the Director, we have discretion
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`to join an inter partes review to a previously instituted inter partes review.
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`35 U.S.C. § 315(c). Section 315(c) provides, in relevant part, that “[i]f the
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`Director institutes an inter partes review, the Director, in his or her
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`discretion, may join as a party to that inter partes review any person who
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`properly files a petition under section 311.” Id. When determining whether
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`to grant a motion for joinder we consider factors such as timing and impact
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`of joinder on the trial schedule, cost, discovery, and potential simplification
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`of briefing. Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004, slip op.
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`at 4 (PTAB April 24, 2013) (Paper 15).
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`Fitbit filed the Petition and Motion for Joinder in the present
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`proceeding on June 9, 2017, which is timely filed within one month after we
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`instituted trial in IPR2017-00318. 37 C.F.R. § 42.122(b). Fitbit’s Petition is
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`based only on identical grounds, with substantially identical evidence and
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`argument, on which we instituted inter partes review in Case IPR2017-
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`00318. Mot. 1. The Petition, therefore, is based on “same claims, prior art,
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`3
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`IPR2017-01554
`Patent 8,886,269 B2
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`and grounds for unpatentability” raised in Case IPR2017-00318. Id. Fitbit
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`proposes to streamline discovery and briefing by taking an “understudy
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`role.” Id. at 1, 6–7. Fitbit asserts that it relies upon the same expert and a
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`substantially identical expert declaration as Case IPR2017-00318, so only a
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`single deposition of the expert would be required. Id. at 6. Fitbit also
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`alleges, that as long as Apple remains an active party: (1) all Fitbit filings
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`will be consolidated with those of Apple; (2) Fitbit will not seek to raise new
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`grounds not already instituted; (3) Fitbit will be bound by any agreement
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`between Patent Owner and Apple concerning discovery and/or depositions;
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`and (4) Fitbit shall not receive any additional deposition time beyond that
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`permitted for Apple. Id. at 7. With all this, Fitbit contends that its joinder
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`will not negatively impact the existing trial schedule in Case IPR2017-
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`00318. Id. at 5–6.
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`Fitbit’s Petition raises the same grounds and substantially identical
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`arguments to those presented by Apple in Case IPR2017-00318. Pet. 1–75.
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`Patent Owner’s Preliminary Response also has substantially identical
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`arguments against institution to those presented in its Preliminary Response
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`in Case IPR2017-00318. Prelim. Resp. 1–45.
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`Some of Patent Owner’s arguments in opposition to the Motion are
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`based upon the constitutionality of inter partes review generally. At this
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`time, no court has found inter partes review unconstitutional. The matter is
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`before the U.S. Supreme Court, and, consequently, Patent Owner’s
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`arguments as to denial of this Petition on this basis are premature.
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`Further, we do not agree with Patent Owner’s argument that § 315(b)
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`bars institution of inter partes review under the circumstances here. Section
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`315(b) states that the one year bar “shall not apply to a request for joinder
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`under subsection (c),” and § 315(c) authorizes, at our discretion, joinder of a
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`4
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`IPR2017-01554
`Patent 8,886,269 B2
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`party “to that [instituted] inter partes review any person who properly files a
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`petition.” See Dell Inc. v. Network-1 Security Solution, IPR2013-00385, slip
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`op. at 4–6 (PTAB July 29, 2013)(Paper 17); see also Nidec Motor Corp. v.
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`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1020 (Fed. Cir.
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`2017) (Dyk, J., concurring) (“Thus, the exception to the time bar for
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`‘request[s] for joinder’ was plainly designed to apply where time-barred
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`Party A seeks to join an existing IPR timely commenced by Party B when
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`this would not introduce any new patentability issues.”).
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`Here, Fitbit’s Motion for Joinder has been timely filed and the Petition
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`has been properly filed. And, in view of the foregoing, we find that joinder
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`based upon the conditions stated by Fitbit in its Motion for Joinder will have
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`little or no impact on the timing, cost, or presentation of the trial on the
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`instituted ground. Thus, the Motion for Joinder is granted.
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`III. ORDER
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`Accordingly, it is
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`ORDERED that trial is instituted in IPR2017-01554 as to the
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`following grounds: (1) claims 1, 2, 6, and 7 would have been unpatentable
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`as obvious over Asada; (2) claim 3 would have been unpatentable as obvious
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`over Asada and Hicks; (3) claims 4 and 5 would have been unpatentable as
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`obvious over Asada and Hannula; (4) claim 8 would have been unpatentable
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`as obvious over Asada and Delonzor; (5) claims 9 and 10 would have been
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`unpatentable as obvious over Asada and Al-Ali; (6) claims 1 and 2 would
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`have been unpatentable as obvious over Goodman; (7) claim 3 would have
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`been unpatentable as obvious over Goodman and Hicks; (8) claim 4 would
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`have been unpatentable as obvious over Goodman and Hannula; (9) claim 5
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`would have been unpatentable as obvious over Goodman, Hannula, and
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`Asada; (10) claims 6 and 7 would have been unpatentable as obvious over
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`5
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`IPR2017-01554
`Patent 8,886,269 B2
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`Goodman and Asada; (11) claim 8 would have been unpatentable as obvious
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`over Goodman and Delonzor; and (12) claims 9 and 10 would have been
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`unpatentable as obvious over Goodman and Al-Ali;
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`FURTHER ORDERED that Fitbit’s Motion for Joinder with
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`IPR2017-00318 is granted;
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`FURTHER ORDERED that IPR2017-01554 is terminated and joined
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`to IPR2017-00318, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the
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`conditions stated in Fitibit’s Motion for Joinder (Paper 3);
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`FURTHER ORDERED that the Amended Scheduling Order in place
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`for IPR2017-00318 (Paper 28) shall govern the joined proceedings;
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`FURTHER ORDERED that all future filings in the joined proceeding
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`are to be made only in IPR2017-00318;
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`FURTHER ORDERED that the case caption in IPR2017-00318 for all
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`further submissions shall be changed to add Fitbit as a named Petitioner, and
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`to indicate by footnote the joinder of IPR2017-01554 to that proceeding, as
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`indicated in the attached example; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2017-00318.
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`6
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`IPR2017-01554
`Patent 8,886,269 B2
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`PETITIONER:
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`Harper Batts
`Jeremy Taylor
`BAKER BOTTS, L.L.P.
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
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`PATENT OWNER:
`
`Justin B. Kimble
`Nicholas C Kliewer
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
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`7
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`IPR2017-01554
`Patent 8,886,269 B2
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`APPLE INC. and FITBIT, INC.,
`Petitioner,
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`v.
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`VALENCELL, INC.,
`Patent Owner.
`_______________
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`Case IPR2017-00318
`Patent 8,886,269 B21
`_______________
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`1 Case IPR2017-01554 has been joined with this proceeding.
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`8
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