Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 12
` 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.
`_______________
`
`Case IPR2017-01552
`Patent 8,929,965 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 12
` 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.
`_______________
`
`Case IPR2017-01552
`Patent 8,929,965 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122
`
`
`
`IPR2017-01552
`Patent 8,989,965 B2
`
`
`INTRODUCTION
`Fitbit, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–12 of U.S. Patent No. 8,929,965 B2 (Ex. 1001 (“the ’965
`patent”). Paper 2 (“Pet.”). Petitioner also concurrently filed a Motion for
`Joinder, seeking to join this proceeding with Apple Inc. v. Valencell, Inc.,
`Case IPR2017-00315 (“the 315 IPR”). Paper 3 (“Mot.”). Patent Owner
`filed a Preliminary Response (Paper 11 (“Prelim. Resp.”)) and an Opposition
`to Petitioner’s Motion for Joinder (Paper 10 (“Opp.”)). For the reasons set
`forth below, we institute an inter partes review of claims 1–12 of the ’965
`patent, and grant Petitioner’s Motion for Joinder.
`INSTITUTION OF INTER PARTES REVIEW
`On June 2, 2017, we instituted a trial in IPR2017-00315 based on the
`following grounds of unpatentability (the 315 IPR, slip op. at 30–31 (PTAB
`June 2, 2017) (Paper 9)):
`Claims 1, 2, and 12 as unpatentable under 35 U.S.C. § 103(a) as
`obvious over Numaga1;
`Claims 3 and 4 as unpatentable under 35 U.S.C. § 103(a) as obvious
`over Numaga in view of Vetter2;
`Claim 5 as unpatentable as under 35 U.S.C. § 103(a) as obvious over
`Numaga in view of Vetter and in further view of Dekker3;
`
`
`1 Japanese Patent Appl. Publication No. 2005/040261 A to Numaga et al.,
`published February 17, 2005
`2 U.S. Patent Appl. Publication No. 2003/0065269 A1 to Vetter et al.,
`published April 3, 2003
`3 U.S. Patent No. 6,702,752 B2 to Dekker, issued March 9, 2004
`
`
`
`2
`
`
`
`IPR2017-01552
`Patent 8,989,965 B2
`
`
`Claims 6 and 7 as unpatentable under 35 U.S.C. § 103(a) as obvious
`over Numaga in view of Debreczeny4;
`Claims 8 and 9 as unpatentable under 35 U.S.C. § 103(a) as obvious
`over Numaga in view of Rafert5;
`Claim 10 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Numaga in view of Negley6;
`Claim 11 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Numaga in view of Miao7;
`Claims 1 and 8–12 as unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Fraden8;
`Claims 2–4 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Fraden in view of Verjus9;
`Claim 5 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Fraden in view of Verjus and in further view of Fricke10; and
`Claims 6–7 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Fraden in view of Debreczeny.
`
`The instant Petition presents the same grounds of unpatentability, the
`same prior art, and the same declarant testimony as those in the petition in
`the 315 IPR. Mot. 3–4. Patent Owner has filed a Preliminary Response
`
`4 U.S. Patent Appl. Publication No. 2008/0081972 A1 to Debreczeny,
`published April 3, 2008
`5 U.S. Patent No. 5,817,008 to Rafert et al., issued October 6, 1998
`6 U.S. Patent Appl. Publication No. 2005/0212405 A1 to Negley, published
`September 29, 2005
`7 International Patent Appl. Publication No. 2005/036212 A2 to Miao et al.,
`published April 21, 2005
`
`
`
`3
`
`
`
`IPR2017-01552
`Patent 8,989,965 B2
`
`responsive to the grounds asserted in the Petition. Paper 11. The
`Preliminary Response presents arguments and evidence substantially
`identical to arguments challenging these same grounds in the preliminary
`response filed in the inter partes review to which joinder is sought. In view
`of the identity of the grounds in the instant Petition and in the 315 IPR
`petition, and, for the same reasons stated in our Decision on Institution in the
`315 IPR, we institute inter partes review in this proceeding on the same
`grounds discussed above for which we instituted inter partes review in the
`315 IPR.
`
`GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`§ 315(c):
`(c) Joinder.—If 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 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`
`8 U.S. Patent Appl. Publication No. 2005/0209516 A1 to Fraden, published
`September 22, 2005
`9 U.S. Patent Appl. Publication No. 2003/0233051 A1 to Verjus et al.,
`published December 18, 2003
`10 U.S. Patent Appl. Publication No. 2009/0105556 A1 to Fricke et al.,
`published April 23, 2009
`
`
`
`4
`
`
`
`IPR2017-01552
`Patent 8,989,965 B2
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`asked-questions.
`Petitioner asserts it has grounds for standing because, in accordance
`with 35 U.S.C. § 315(c), Petitioner filed a Motion for Joinder concurrently
`with the Petition and not later than one month after institution of the 315
`IPR. Mot. 2–3. Petitioner’s Motion also states that: (1) Petitioner presents
`the identical challenges and arguments as those on which we instituted inter
`partes review in the 315 IPR; (2) Petitioner will rely on consolidated filings
`with Apple, Inc. (the Petitioner in the 315 IPR), will not seek to introduce
`new arguments, will be bound by all discovery and deposition agreements
`between Apple, Inc. and Patent Owner, and will assume a primary role only
`if Apple, Inc. ceases to participate in the proceeding; and (3) Petition
`anticipates that no additional filings or depositions will be required of Patent
`Owner. Mot. 4–7.
`In an Opposition, Patent Owner argues that inter partes review
`proceedings are unconstitutional either because a patent creates a property
`right that cannot be revoked or cancelled by a non-Article III tribunal, such
`as the Board, or that the question of patent validity must be tried to a jury
`pursuant to the Seventh Amendment. Opp. 3–4. 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 are at best
`premature.
`
`
`
`5
`
`
`
`IPR2017-01552
`Patent 8,989,965 B2
`
`We also are do not agree with Patent Owner’s argument that § 315(b)
`
`bars institution of inter partes review under these circumstances. Opp. 4–5.
`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 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.”
`CONCLUSION
`We find that Petitioner has met its burden of showing that joinder is
`appropriate. The Petition here is substantively identical to the petition in the
`315 IPR. Mot. 3–4. The evidence also is identical, including the reliance on
`the same Declaration of Majid Sarrafzadeh, Ph.D. Id. Petitioner further has
`shown that the trial schedule will not be affected by joinder. Id. at 5–6. No
`changes in the schedule are anticipated or necessary, and the limited
`participation, if at all, of Petitioner will not impact the timeline of the
`ongoing trial or create additional unreasonable burdens on Patent Owner. In
`view of the foregoing, we find that joinder will have little or no impact on
`the timing, cost, or presentation of the trial on the instituted grounds. We
`institute inter partes review and grant Petitioner’s Motion for Joinder.
`
`
`
`
`6
`
`
`
`IPR2017-01552
`Patent 8,989,965 B2
`
`
`ORDER
`In view of the foregoing, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`Claims 1, 2, and 12 as unpatentable under 35 U.S.C. § 103(a) as
`obvious over Numaga;
`
`Claims 3 and 4 as unpatentable under 35 U.S.C. § 103(a) as obvious
`over Numaga in view of Vetter;
`
`Claim 5 as unpatentable as under 35 U.S.C. § 103(a) as obvious over
`Numaga in view of Vetter and in further view of Dekker;
`
`Claims 6 and 7 as unpatentable under 35 U.S.C. § 103(a) as obvious
`over Numaga in view of Debreczeny;
`
`Claims 8 and 9 as unpatentable under 35 U.S.C. § 103(a) as obvious
`over Numaga in view of Rafert;
`
`Claim 10 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Numaga in view of Negley;
`
`Claim 11 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Numaga in view of Miao;
`
`Claims 1 and 8–12 as unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Fraden;
`
`Claims 2–4 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Fraden in view of Verjus;
`
`Claim 5 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Fraden in view of Verjus and in further view of Fricke; and
`
`
`
`7
`
`
`
`IPR2017-01552
`Patent 8,989,965 B2
`
`
`Claims 6–7 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Fraden in view of Debreczeny
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-00315 is granted;
`FURTHER ORDERED that the grounds on which trial in
`IPR2017-00315 was instituted are unchanged, and no other grounds are
`included in the joined proceeding;
`FURTHER ORDERED that the Amended Scheduling Order entered
`on November 28, 2017 in IPR2017-00315 (Paper 27) shall govern the
`schedule of the joined proceeding;
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2017-00315 will be consolidated, and no filing by Petitioner
`alone will be considered without prior authorization by the Board;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2017-00315;
`FURTHER ORDERED that IPR2017-01552 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2017-00315; and
`FURTHER ORDERED that the case caption in IPR2017-00315 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2017-01552
`Patent 8,989,965 B2
`
`
`
`For PETITIONER
`
`Harper Batts
`Jeremy Taylor
`BAKER BOTTS LLP
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`
`
`For PATENT OWNER
`
`Justin B. Kimble
`Nicholas C. Kliewer
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`jrastegar@bcpc-law.com
`
`
`
`
`
`
`9
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 12
` Entered: December 1, 2017
`
`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 IPR2017-00315
`Patent 8,989,965 B21
`_______________
`
`
`
`1 Case IPR2017-01552 has been joined with this proceeding.
`
`
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