Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 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.
`_______________
`
`Case IPR2017-01555
`Patent 8,923,941 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 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.
`_______________
`
`Case IPR2017-01555
`Patent 8,923,941 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`
`
`IPR2017-01555
`Patent 8,923,941 B2
`
`I.
`
`INTRODUCTION
`Fitbit, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1, 2, and 6–13 of U.S. Patent No. 8,923,941 B2 (Ex. 1001
`(“the ’941 patent”). Paper 2 (“Pet.”). Petitioner also concurrently filed a
`Motion for Joinder, seeking to join this proceeding with Apple Inc. v.
`Valencell, Inc., Case IPR2017-00319 (“the 319 IPR”). Paper 3 (“Mot.”).
`Patent Owner filed a Preliminary Response (Paper 8 (“Prelim. Resp.”)) and
`an Opposition to Petitioner’s Motion for Joinder (Paper 7 (“Opp.”)).
`For the reasons set forth below, we institute an inter partes review of
`claims 1, 2, and 6–13 of the ’941 patent, and grant Petitioner’s Motion for
`Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`On June 6, 2017, we instituted a trial in IPR2017-00319 based on the
`following grounds of unpatentability (the 319 IPR, slip op. at 55–56 (PTAB
`June 6, 2017) (Paper 10)):
`Challenged Claim(s)
`Basis
`References
`35 U.S.C. § 103(a) 1, 2, 9, and 11–13
`Luo and Craw
`35 U.S.C. § 103(a) 6 and 8
`Luo, Craw, and Fricke
`Luo, Craw, Fricke, and
`35 U.S.C. § 103(a) 7
`Comtois
`35 U.S.C. § 103(a) 10
`Luo, Craw, and Aceti
`35 U.S.C. § 103(a) 1, 2, 9, 11, and 12
`Mault and Al-Ali
`35 U.S.C. § 103(a) 6–8
`Mault, Al-Ali, and Han
`Mault, Al-Ali, and Numaga 35 U.S.C. § 103(a) 10
`Mault, Al-Ali, and Ali
`35 U.S.C. § 103(a) 13
`The instant Petition presents the same grounds of unpatentability, the
`same prior art, and the same declarant testimony as the petition in the 319
`IPR. Pet. 8−9; Mot. 5. In view of the identity of the grounds in the instant
`
`
`
`2
`
`
`
`IPR2017-01555
`Patent 8,923,941 B2
`
`Petition and in the 319 IPR petition, and, for the same reasons stated in our
`Decision on Institution in the 319 IPR, we institute inter partes review in
`this proceeding on the same grounds discussed above and for the same
`claims that we instituted inter partes review in the 319 IPR.
`
`III. 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
`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 that the Motion for Joinder is timely because, in
`accordance with 35 U.S.C. § 315(c), Petitioner filed the Motion concurrently
`with the Petition and not later than one month after institution of the 319
`IPR. Mot. 4. We find that the Motion for Joinder is timely.
`
`We also find that Petitioner has met its burden of showing that joinder
`is appropriate. The Petition here is substantively identical to the petition in
`
`
`
`3
`
`
`
`IPR2017-01555
`Patent 8,923,941 B2
`
`the 319 IPR. Mot. 5−6. The evidence also is identical, including the
`reliance on the same Declaration of Majid Sarrafzadeh, Ph.D. Id. at 6.
`
`Petitioner further has shown that the trial schedule will not be affected
`by joinder. Id. at 6−8. 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. We limit Petitioner’s participation in the
`joined proceeding, such that Petitioner shall require prior authorization from
`the panel before filing any further paper. This arrangement promotes the
`just and efficient administration of the ongoing trial and the interests of
`Petitioner and Patent Owner.
`Nevertheless, Patent Owner has filed an Opposition to Petitioner’s
`Motion for Joinder and a Preliminary Response responsive to the grounds
`asserted in the Petition.1 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. Despite Patent Owner’s arguments and evidence, we are
`persuaded that Petitioner demonstrates a reasonable likelihood of prevailing
`in showing the challenged claims are unpatentable under the asserted
`grounds.
`In its 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
`
`
`1 Patent Owner’s Opposition to Petitioner’s Motion For Joinder
`acknowledges that a Petition accompanied by a Motion for Joinder is not
`subject to the time bar provisions of 35 U.S.C. § 315(b). Opp. 5.
`
`
`
`4
`
`
`
`IPR2017-01555
`Patent 8,923,941 B2
`
`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.
`
`We also 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.”).
`
`III. 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
`319 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
`
`
`
`5
`
`
`
`IPR2017-01555
`Patent 8,923,941 B2
`
`the timing, cost, or presentation of the trial on the instituted grounds. We
`institute inter partes review and, because Petitioner has shown that it is
`entitled to the requested relief, we grant Petitioner’s Motion for Joinder.
`
`IV. 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:
`
`Challenged Claim(s)
`Basis
`References
`35 U.S.C. § 103(a) 1, 2, 9, and 11–13
`Luo and Craw
`35 U.S.C. § 103(a) 6 and 8
`Luo, Craw, and Fricke
`Luo, Craw, Fricke, and
`35 U.S.C. § 103(a) 7
`Comtois
`35 U.S.C. § 103(a) 10
`Luo, Craw, and Aceti
`35 U.S.C. § 103(a) 1, 2, 9, 11, and 12
`Mault and Al-Ali
`35 U.S.C. § 103(a) 6–8
`Mault, Al-Ali, and Han
`Mault, Al-Ali, and Numaga 35 U.S.C. § 103(a) 10
`Mault, Al-Ali, and Ali
`35 U.S.C. § 103(a) 13
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-00319 is granted;
`FURTHER ORDERED that the grounds on which trial in
`IPR2017-00319 was instituted are unchanged, and no other grounds are
`included in the joined proceeding;
`FURTHER ORDERED that the Amended Scheduling Order entered
`in IPR2017-00319 (Paper 26) shall govern the schedule of the joined
`proceeding;
`
`
`
`6
`
`
`
`IPR2017-01555
`Patent 8,923,941 B2
`
`
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2017-00319 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 IPR2017-00319;
`FURTHER ORDERED that IPR2017-01555 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2017-00319; and
`FURTHER ORDERED that the case caption in IPR2017-00319 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2017-01555
`Patent 8,923,941 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
`
`
`
`
`
`
`
`8
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
` 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 IPR2017-00319
`Patent 8,923,941 B21
`_______________
`
`
`
`1 Case IPR2017-01555 has been joined with this proceeding.
`
`
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