IP Law Daily Fitbit wins partial victory in challenge to physical activity monitoring patent
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Wednesday, July 8, 2020

Fitbit wins partial victory in challenge to physical activity monitoring patent

By Brian Craig, J.D.

As a joined party, Fitbit had a right to appeal the PTAB’s ruling on the validity of a physical activity monitoring patent after Apple withdrew.

In a challenge initially brought by Apple, Inc. and then joined by Fitbit, Inc. concerning the validity of Valencell, Inc.’s patent for monitoring a person’s physical activity, the U.S. Court of Appeals for the Federal Circuit has held that Fitbit had a right to appeal and join in the entirety of the proceedings. While the Federal Circuit concluded that the Patent Trial and Appeal Board correctly ruled Fitbit was entitled to fully join in the inter partes review (IPR) proceedings, the Board erred in its analysis that certain patent claims were not unpatentable. Accordingly, the Federal Circuit remanded the case for the Board to examine the validity of the patent based on obviousness (Fitbit, Inc. v. Valencell, Inc., July 8, 2020, Newman, P.).

Valencell owns United States Patent No. 8,923,941 ("the ’941 patent") entitled "Methods and Apparatus for Generating Data Output Containing Physiological and Motion-Related Information," concerning systems for obtaining and monitoring information such as blood oxygen level, heart rate, and physical activity. Apple originally petitioned the Board for IPR of all claims relating to the ’941 patent. The Board granted the petition in part, instituting review of certain claims but denying review of claims 3–5. Fitbit then filed an IPR petition for claims 1, 2, and 6–13 and moved for joinder with Apple’s IPR. The Board granted Fitbit’s petition, granted the motion for joinder, and terminated Fitbit’s separate proceeding.

Following the U.S. Supreme Court decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), which held that all patent claims challenged in an IPR petition must be reviewed by the Board if the petition is granted, the Board re-instituted the Apple/Fitbit IPR to add claims 3–5 of the ’941 patent. The Board then concluded that claims 1, 2, and 6–13 are unpatentable and that claims 3–5 are not unpatentable. Apple subsequently withdrew from the proceeding. Fitbit appealed the Board’s decision on claims 3–5. Valencell challenged Fitbit’s right to appeal as to claims 3–5 and defended the Board’s decision on patentability.

Joinder. The Federal Circuit first concludedFitbit’s rights as a joined party applied to the entirety of the proceedings and included the right of appeal. 35 U.S.C. § 319 provides for IPR appeal by "any party." Specifically, the Patent Act provides that "[a]ny party to the inter partes review shall have the right to be a party to the appeal." The court noted that precedent has confirmed that joined parties may appeal pursuant to section 319.

Valencell argued that Fitbit did not have the status of "party" for purposes of appeal because Fitbit did not request review of claims 3–5 in its initial IPR petition, did not request leave to amend its initial petition after the Supreme Court’s decision in SAS Institute, and did not submit a separate brief with respect to claims 3–5 after the joined IPR was re-instituted. Fitbit acknowledged that it did not seek to file a separate brief after claims 3–5 were added to the IPR, but stated that such separate brief was not required in order to present the issues. The Federal Circuit agreed with Fitbit that these circumstances did not override Fitbit’s statutory right of appeal. The Federal Circuit held that FitBit’s joinder conformed to the statutory purpose of avoiding redundant actions by facilitating consolidation, while preserving statutory rights, including judicial review.

Patentability. While the Board correctly decided the joinder issue, the Federal Circuit held that the Board erred in its patentability analysis of the ’941 patent.Fitbit argued before the Board that claim 3 and dependent claims 4 - 5 are invalid as obvious over several cited prior art references. However, after the Boardrejected Fitbit’s claim construction, the Board conducted nofurther analysis, and did not assess patentability of claim3 against the cited prior art references. The Board held claims 4 and 5 not unpatentable, on the ground that the Board could not determine the meaning of the claims because the term "the application" lacked antecedent basis.

The Federal Circuit concluded that the Board’s decision on patentability was not a reasonable resolution and did not comport with the assignment to resolve patentability issues. The Board did not apply the cited prior art references, on which there were evidence and argument, instead stating that the meaning of the claims were "speculative." The Board also improperly declined to accept the parties’ shared view of the correct antecedent for claims 4 and 5 and resolve an inadvertent error. "The preferable agency action is to seek to serve the agency’s assignment under the America Invents Act, and to resolve the merits of patentability," the court said.

Therefore, the Federal Circuit vacated the Board’s decision on patentability. On remand, the Federal Circuit directed the Board to determine patentability of claim 3 and corrected claims 4 and 5 on the asserted grounds of obviousness.

This case is No. 19-1048.

Attorneys: Harper Batts (Sheppard, Mullin, Richter & Hampton LLP) for Fitbit, Inc. Jeffrey Bragalone (Bragalone Conroy PC) for Valencell, Inc.

Companies: Fitbit, Inc.; Valencell, Inc.

MainStory: TopStory Patent GCNNews FedCirNews

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