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.
`____________
`
`IPR2017-01554
`Patent 8,886,269 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, JAMES B. 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 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2017-01554
`Patent 8,886,269 B2
`
`I. INTRODUCTION
`
`
`
`Petitioner Fitbit, Inc. (“Fitbit”) filed a Petition requesting inter partes
`
`review of claims 1–10 of U.S. Patent No. 8,886,269 B2 (Exhibit 1001, “the
`
`’269 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 IPR2017-00318. 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 IPR2017-00318 challenges claims 1–10 of the ’269 patent. We
`
`instituted trial in Case IPR2017-00318 on June 5, 2017, on the grounds that:
`
`(1) claims 1, 2, 6, and 7 would have been unpatentable as obvious over
`
`Asada; (2) claim 3 would have been unpatentable as obvious over Asada and
`
`Hicks; (3) claims 4 and 5 would have been unpatentable as obvious over
`
`Asada and Hannula; (4) claim 8 would have been unpatentable as obvious
`
`over Asada and Delonzor; (5) claims 9 and 10 would have been unpatentable
`
`as obvious over Asada and Al-Ali; (6) claims 1 and 2 would have been
`
`unpatentable as obvious over Goodman; (7) claim 3 would have been
`
`unpatentable as obvious over Goodman and Hicks; (8) claim 4 would have
`
`been unpatentable as obvious over Goodman and Hannula; (9) claim 5
`
`would have been unpatentable as obvious over Goodman, Hannula, and
`
`Asada; (10) claims 6 and 7 would have been unpatentable as obvious over
`
`Goodman and Asada; (11) claim 8 would have been unpatentable as obvious
`
`over Goodman and Delonzor; and (12) claims 9 and 10 would have been
`
`unpatentable as obvious over Goodman and Al-Ali. IPR2015-00318, Paper
`
`7. These same grounds are those on which Fitbit now seeks institution of
`
`inter partes review of claims 1–10 in this case. Pet. 6–7.
`
`
`
`2
`
`

`

`IPR2017-01554
`Patent 8,886,269 B2
`
`
`
`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 year after
`
`service of an infringement complaint, and institution of inter partes review
`
`under this circumstance is impermissible under 35 U.S.C. § 315(b). Id. 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
`
`Director institutes 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.” Id. When determining whether
`
`to grant a motion for joinder we consider factors such as timing and impact
`
`of joinder on the trial 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, which is timely filed within one month after we
`
`instituted trial in IPR2017-00318. 37 C.F.R. § 42.122(b). Fitbit’s Petition is
`
`based only on identical grounds, with substantially identical evidence and
`
`argument, on which we instituted inter partes review in Case IPR2017-
`
`00318. Mot. 1. The Petition, therefore, is based on “same claims, prior art,
`
`
`
`3
`
`

`

`IPR2017-01554
`Patent 8,886,269 B2
`
`and grounds for unpatentability” raised in Case IPR2017-00318. Id. Fitbit
`
`proposes to streamline discovery and briefing by taking an “understudy
`
`role.” Id. at 1, 6–7. Fitbit asserts that it relies upon the same expert and a
`
`substantially identical expert declaration as Case IPR2017-00318, so only a
`
`single deposition of the expert would be required. Id. 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 seek to raise new
`
`grounds not already instituted; (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 beyond that
`
`permitted for Apple. Id. at 7. With all this, Fitbit contends that its joinder
`
`will not negatively impact the existing trial schedule in Case IPR2017-
`
`00318. Id. at 5–6.
`
`
`
`Fitbit’s Petition raises the same grounds and substantially identical
`
`arguments to those presented by Apple in Case IPR2017-00318. Pet. 1–75.
`
`Patent Owner’s Preliminary Response also has substantially identical
`
`arguments against institution to those presented in its Preliminary Response
`
`in Case IPR2017-00318. Prelim. Resp. 1–45.
`
`
`
`Some of Patent Owner’s arguments in opposition to the Motion are
`
`based upon the constitutionality of inter partes review generally. At this
`
`time, no court has found inter partes review unconstitutional. The matter is
`
`before the U.S. Supreme Court, and, consequently, Patent Owner’s
`
`arguments as to denial of this Petition on this basis are premature.
`
`
`
`Further, we do not agree with Patent Owner’s argument that § 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, joinder of a
`
`
`
`4
`
`

`

`IPR2017-01554
`Patent 8,886,269 B2
`
`party “to that [instituted] inter partes review any person who properly 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 exception to the time bar for
`
`‘request[s] for joinder’ was plainly designed to apply where time-barred
`
`Party A seeks to join an existing IPR timely commenced by Party B when
`
`this would not introduce any new patentability 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 upon the conditions stated by Fitbit in its Motion for Joinder will have
`
`little or no impact on the timing, cost, or presentation of the trial on the
`
`instituted ground. Thus, the Motion for Joinder is granted.
`
`III. ORDER
`
`Accordingly, it is
`
`ORDERED that trial is instituted in IPR2017-01554 as to the
`
`following grounds: (1) claims 1, 2, 6, and 7 would have been unpatentable
`
`as obvious over Asada; (2) claim 3 would have been unpatentable as obvious
`
`over Asada and Hicks; (3) claims 4 and 5 would have been unpatentable as
`
`obvious over Asada and Hannula; (4) claim 8 would have been unpatentable
`
`as obvious over Asada and Delonzor; (5) claims 9 and 10 would have been
`
`unpatentable as obvious over Asada and Al-Ali; (6) claims 1 and 2 would
`
`have been unpatentable as obvious over Goodman; (7) claim 3 would have
`
`been unpatentable as obvious over Goodman and Hicks; (8) claim 4 would
`
`have been unpatentable as obvious over Goodman and Hannula; (9) claim 5
`
`would have been unpatentable as obvious over Goodman, Hannula, and
`
`Asada; (10) claims 6 and 7 would have been unpatentable as obvious over
`
`
`
`5
`
`

`

`IPR2017-01554
`Patent 8,886,269 B2
`
`Goodman and Asada; (11) claim 8 would have been unpatentable as obvious
`
`over Goodman and Delonzor; and (12) claims 9 and 10 would have been
`
`unpatentable as obvious over Goodman and Al-Ali;
`
`FURTHER ORDERED that Fitbit’s Motion for Joinder with
`
`IPR2017-00318 is granted;
`
`FURTHER ORDERED that IPR2017-01554 is terminated and joined
`
`to IPR2017-00318, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the
`
`conditions stated in Fitibit’s Motion for Joinder (Paper 3);
`
`FURTHER ORDERED that the Amended Scheduling Order in place
`
`for IPR2017-00318 (Paper 28) shall govern the joined proceedings;
`
`FURTHER ORDERED that all future filings in the joined proceeding
`
`are to be made only in IPR2017-00318;
`
`FURTHER ORDERED that the case caption in IPR2017-00318 for all
`
`further submissions shall be changed to add Fitbit as a named Petitioner, and
`
`to indicate by footnote the joinder of IPR2017-01554 to that proceeding, as
`
`indicated in the attached example; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2017-00318.
`
`
`
`
`
`
`6
`
`

`

`IPR2017-01554
`Patent 8,886,269 B2
`
`
`PETITIONER:
`
`Harper Batts
`Jeremy Taylor
`BAKER BOTTS, 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
`
`
`
`
`7
`
`

`

`IPR2017-01554
`Patent 8,886,269 B2
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC. and FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00318
`Patent 8,886,269 B21
`_______________
`
`
`
`
`1 Case IPR2017-01554 has been joined with this proceeding.
`
`
`
`8
`
`

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