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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1048.OPINION.7-8-2020_1615429.pdf" target="_blank" rel="noreferrer noopener">Fitbit, Inc. v. Valencell, Inc.</a>, No. 19-1048 (July 8, 2020), vacating and remanding the Patent Trial and Appeal Board’s determination on the patentability of claims 3-5 of Valencell’s U.S. Patent No. 8,923,941 (“the ’941 patent”).

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Apple Inc. petitioned for inter partes review (IPR) of claims 1-13 of the ’941 patent, which “concerns systems for obtaining and monitoring information such as blood oxygen level, heart rate, and physical activity.” The Board instituted review on all claims except claims 3-5. Fitbit filed its own IPR petition addressed to only the instituted claims and moved for joinder with Apple’s IPR. The Board granted the petition and the motion. Following the Supreme Court’s decision in SAS Institute v. Iancu, the Board re-instituted the IPR to include claims 3-5. In its final written decision, the Board held those claims were not unpatentable. Fitbit appealed.

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On appeal, the Federal Circuit first addressed the issue of standing. Valencell argued Fitbit lacked standing to appeal the Board’s decision on claims 3-5 because Fitbit’s original IPR petition did not include those claims. The Court disagreed, holding that “Fitbit’s rights as a joined party applies to the entirety of the proceedings and includes the right of appeal, conforming to the statutory purpose of avoiding redundant actions by facilitating consolidation, while preserving statutory rights, including judicial review.” Because the final decision in the consolidated proceeding addressed the patentability of claims 3-5, Fitbit had the right to appeal that decision.

On the issue of patentability, the Court vacated and remanded the Board’s decision. Regarding claim 3, the Court affirmed the Board’s claim construction, but held the Board “erred in holding that since it did not adopt Fitbit’s claim construction, that decided the question of patentability.” The Court instructed the Board, on remand, to assess the patentability of the claim in view of the asserted grounds of obviousness. Regarding claims 4 and 5, the Court held the Board erred in refusing to consider patentability because an inadvertent error in numbering the dependent claims caused them to lack antecedent basis. The Court noted the Board had authority to correct the error, and that its failure to do so “does not comport with [its] assignment to resolve patentability issues.” The Court directed the Board, on remand, to determine the patentability of the corrected claims on the asserted grounds of obviousness.

This blog post was co-authored by Ivan Wang and Dan McDonald

CAFC Confirms Joined Party’s Right to Appeal Extends to Whole Proceeding; Vacates Patentability Determination