Paper No. 10
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`Trials@uspto.gov
`571-272-7822 Entered: May 16, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAHOO FITNESS LLC.,
`Petitioner,
`v.
`BLACKBIRD TECH LLC. d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
`____________
`
`Case IPR2018-00275
`Patent 6,434,212
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Decision on Institution and Motion for Joinder
`37 C.F.R. § 42.1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 16, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAHOO FITNESS LLC.,
`Petitioner,
`v.
`BLACKBIRD TECH LLC. d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
`____________
`
`Case IPR2018-00275
`Patent 6,434,212
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Decision on Institution and Motion for Joinder
`37 C.F.R. § 42.1
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00275
`Patent 6,434,212
`
`
`INTRODUCTION
`
`Wahoo LLC. (“Petitioner”) filed a Petition for an inter partes review
`of claims 2, 5, and 6 of U.S. Patent No. 6,434,212 B2 (Ex. 1001, “the ’212
`patent”) (Paper 1 (“Pet.”)) and concurrently filed a Motion for Joinder
`(Paper 3, “Mot.”). The Motion for Joinder seeks to join the proceeding with
`Fitbit, Inc. v. Blackbird Tech LLC d/b/a Blackbird Technologies, IPR2017-
`02012 (“Fitbit IPR”)(Mot. 1). Blackbird Tech LLC d/b/a Blackbird
`Technologies (“Patent Owner”) has not filed an Opposition to the Motion for
`Joinder. Blackbird Tech LLC d/b/a Blackbird Technologies (“Patent
`Owner”) filed a Preliminary Response (Paper 7 (“Prelim. Resp.”)). For the
`reasons described below, we institute an inter partes review of all the
`challenged claims and grant Petitioner’s Motion for Joinder.
`
`
`INSTITUTION OF INTER PARTES REVIEW
`
`On March 12, 2018, we instituted a trial in IPR2017-02012 (“Fitbit
`IPR”) on the following grounds:
`Claim(s)
`Basis
`References
`
`2 and 5
`
`§ 103
`
`§ 103
`
`6
`
`
`
`Amano et al., U.S. Patent Number 6,241,684 B1
`(“Amano”) (IPR2017-02012, Exhibit 1003)
`Kato et al. U.S. Patent Number 5,033,013
`(“Kato”) (IPR2017-02012, Exhibit 1004) and
`Amano
`
`2
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`
`
`IPR2018-00275
`Patent 6,434,212
`
`(Fitbit, Inc. v. Blackbird Tech LLC d/b/a Blackbird Technologies, IPR2017-
`02012, Paper 8). Petitioner asserts the same grounds of unpatentability in
`this Petition as those asserted in the Fitbit IPR (Pet. 1). Petitioner also
`presents testimony from the same declarant relied on in the Fitbit IPR
`(compare Ex. 1005, with Fitbit IPR, Ex. 1005).
`
`In view of the identity of the challenge in the instant Petition and in
`the petition in the IPR2017-02012, we institute an inter partes review in this
`proceeding on the same grounds as those on which we instituted inter partes
`review in IPR2017-02012. We do not institute inter partes review on any
`other grounds.
`
` GRANT OF MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`review, subject to the provisions of 35 U.S.C. § 315(c), which governs
`joinder of inter partes review proceedings:
`(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
`
`3
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`IPR2018-00275
`Patent 6,434,212
`
`review (see Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/appealing-patent-decisions/trials/patent-review-
`processing-system-prps-0),
`Petitioner asserts it has grounds for joinder because, in accordance
`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
`with the Petition, prior to one month after the institution date of the Fitbit
`IPR, the inter partes review with which joinder is requested (Mot. 1 (citing
`37 C.F.R. 42.122(b)). More specifically, as noted by Petitioner, the Petition
`was filed before the March 12, 2018 institution date of the Fitbit IPR (see
`Mot. 1 (see Fitbit IPR, Paper 8)). Further, Patent Owner has not filed an
`opposition to the Motion.
`In its Preliminary Response, Patent Owner relies on Petitioner’s
`representation that this Petition “is identical to the Fitbit IPR [(IPR2017-
`02012)] in all substantive respects, including reliance on the same exhibits
`and reliance on the same expert declaration testimony” and in response,
`submits a Preliminary Response “that is substantially identical to the Patent
`Owner Response” that Patent Owner submitted in the Fitbit IPR (Prelim.
`Resp. 6).
`
`Petitioner asserts joinder is appropriate because the instant Petition
`presents the same grounds of invalidity as have been raised in the
`Fitbit IPR. In addition, the Petition filed by [Petitioner] is identical to
`the Fitbit IPR Petition in all substantive respects, including reliance on
`the same exhibits and reliance on the same expert declaration
`testimony. The only differences relate to the identification of the
`correct Petitioner, mandatory notices, and other non-substantive
`matter
`
`4
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`IPR2018-00275
`Patent 6,434,212
`
`(Mot. 1). Petitioner represents that “Petitioner has copied the substance of
`Fitbit’s petition and accompanying declaration” and “does not seek to
`introduce grounds or claims not in the Fitbit IPR” of “broaden the scope of
`the Fitbit IPR” (id. at 6). Petitioner further represents “Petitioner has
`retained the same expert, who has submitted a substantively-identical
`declaration as in the Fitbit IPR” (id.).
`
`Petitioner agrees to:
` Adhere to all applicable deadlines in the Fitbit IPR;
`
`
`
` Submit “consolidated” filings with the Fitbit Petitioner, . . . ;
`
` Refrain from requesting or reserving any additional
`depositions or deposition time;
`
` Refrain from requesting or reserving additional oral hearing
`time; and
`
`
`
`
`
`
`
` Assume an “understudy” role
`
`
`(id. at 6–7). Petitioner further “agrees to withdraw any grounds the Board
`denies in the Fitbit IPR” and “not introduce any new prior art, expert
`declarations, or grounds of unpatentability” (id. at 7).
`In addition, Petitioner asserts “joinder of this proceeding with the
`Fitbit IPR will not require a change to any existing schedule” (id. at 7–8).
`
`
`IV. DISCUSSION
`We find that the Motion is timely (see 37 C.F.R. § 42.122). We also
`find that Petitioner has met its burden of showing that joinder is appropriate.
`
`5
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`IPR2018-00275
`Patent 6,434,212
`
`Specifically, based on Petitioner’s representation, we determine the Petition
`here is substantively identical to the petition in the Fitbit IPR (see Mot. 1, 6).
`The evidence also is identical, including the reliance on the same declaration
`of Dr. Choudhury (id. at 1; compare Ex. 1005, with Fitbit IPR Ex. 1005).
`Petitioner has further shown that the trial schedule will not be affected
`by the joinder (id. at 6–8).
`No changes in the schedule are expected or necessary, and the limited
`participation, if at all, of Petitioner will not impact the timeline of the
`ongoing trial. In particular, the trial schedule set forth in IPR2017-02012
`(Fitbit IPR, Paper 9) shall apply to the consolidated trial. Petitioner shall
`adhere to the existing schedule of IPR2017-02012 and the understudy role it
`has agreed to assume (Mot. 8). More specifically, so long as Fitbit, Inc. is a
`party to IPR2017-02012, all filings of Petitioner shall be consolidated with
`the filing of Fitbit, Inc. and Petitioner shall not file any separate paper or
`briefing without prior authorization from the Board. The page limits set
`forth in 37 C.F.R. 42.24 will apply to all consolidated filings.
`In addition, Petitioner is bound by any discovery agreements between
`Patent Owner and Fitbit, Inc. and shall not seek any discovery beyond that
`sought by Fitbit, Inc. Patent Owner shall not be required to provide any
`additional discovery or deposition time as a result of joinder. Furthermore,
`if an oral hearing is requested and scheduled, Petitioners in IPR2017-02012
`shall collectively designate an attorney(s) to present at the oral hearing in a
`consolidated argument.
`The Board expects Petitioner to attempt to resolve any disputes among
`the entities involved and to contact the Board only if such matters cannot be
`6
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`IPR2018-00275
`Patent 6,434,212
`
`resolved. This arrangement promotes the just and efficient administration of
`the ongoing trial and the interests of Petitioner and Patent Owner.
`Accordingly, on this record, we find that joinder is appropriate and we
`grant Petitioner’s Motion for Joinder.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that IPR2018-00275 is hereby instituted on the following
`grounds:
`Claim(s)
`
`References
`
`Basis
`
`2 and 5
`
`§ 103
`
`6
`
`§ 103
`
`Amano et al., U.S. Patent Number 6,241,684 B1
`(“Amano”) (IPR2017-02012, Exhibit 1003)
`Kato et al. U.S. Patent Number 5,033,013
`(“Kato”) (IPR2017-02012, Exhibit 1004) and
`Amano
`
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-02012 is granted, and Petitioner is joined as a petitioner in
`IPR2017-02012;
`FURTHER ORDERED that the grounds on which trial in IPR2017-
`02012 was instituted are unchanged and no other grounds are included in the
`joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-02012 (IPR2012-02012, Paper 8) and any schedule changes agreed
`
`7
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`IPR2018-00275
`Patent 6,434,212
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`to by the parties in IPR2017-02012 (pursuant to the Scheduling Order) shall
`govern the schedule of the joined proceeding;
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2017-02012 will be consolidated and no filing by Petitioner
`alone will be allowed without prior authorization by the Board;
`FURTHER ORDERED that Petitioner is bound by any discovery
`agreements between Patent Owner and Fitbit, Inc. in IPR2017-02012 and
`Petitioner shall not seek any discovery beyond that sought by Fitbit, Inc.;
`FURTHER ORDERED that Petitioners in IPR2017-02012 shall
`collectively designate an attorney(s) to present at the oral hearing in a
`consolidated argument;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2017-02012;
`FURTHER ORDERED that IPR2018-00275 is terminated under 37
`C.F.R. § 42.72 and all further filings in the joined proceeding are to be made
`in IPR2017-02012; and
`FURTHER ORDERED that the case caption in IPR2017-02012, from
`now on, shall reflect joinder with this proceeding in accordance with the
`attached example.
`
`PETITIONER:
`Matthew L. Cutler
`mcutler@hdp.com
`
`Douglas A. Robinson
`drobinson@hdp.com
`
`8
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`IPR2018-00275
`Patent 6,434,212
`
`PATENT OWNER:
`
`Walter Davis
`wdavis@dbjg.com
`
`Wayne Helge
`whelge@dbjg.com
`
`Aldo Noto
`anoto@dbjg.com
`
`
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`9
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`IPR2018-00275
`Patent 6,434,212
`
`
`Example of Case Caption for Joined Proceeding
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC. and WAHOO FITNESS LLC.,
`Petitioner,
`v.
`BLACKBIRD TECH LLC. d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
`____________
`
`Case IPR2017-020121
`Patent 6,434,212
`____________
`
`
`
`
`
`1 Wahoo Fitness LLC, which filed a petition in IPR2018-00275, has been
`joined as a petitioner in this proceeding.
`10
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`
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