FitBit has right to appeal PTAB post-SAS, rules Fed Circuit
FitBit has taken advantage of the US Supreme Court’s SAS Institute ruling to score a major patent victory at the US Court of Appeals for the Federal Circuit.
In its ruling, issued yesterday, July 8, the Federal Circuit ruled that FitBit, as a joining party, had the status of a “party” in an inter partes review (IPR), even though it didn’t challenge the patent claims at issue.
The court also overturned the Patent Trial and Appeal Board’s (PTAB) decision not to invalidate certain claims of a patent owned by biometric sensor developer Valencell. The patent covers a method of generating data using physiological and motion sensors.
The case will now return to the PTAB, which will review three claims of the Valencell patent for obviousness in light of the prior art cited by FitBit.
Joiner’s rights
The dispute stems from a petition for IPR filed by Apple, which sought the cancellation of a patent owned by biometric sensor developer Valencell.
Apple had petitioned for IPR of claims 1-13 of the patent, but the US Patent Trial and Appeal Board only instituted review for claims 1, 2, and 6-13.
FitBit then joined Apple in the proceedings by filing its own petition for IPR, but only covering those claims already under review.
While the case was ongoing, the US Supreme Court in 2018 issued its landmark decision in SAS Institute v Iancu, requiring the PTAB to review all the claims cited in a petition for IPR, or not institute IPR at all.
This ended the PTAB’s so-called ‘pick-and-choose’ approach of deciding to review only some of the claims under petition for IPR—as it did with Apple’s original petition for review of the Valencell patent.
On the back of the Supreme Court’s decision, the PTAB then added claims 3-5 of the patent to the proceedings.
These were the only claims not invalidated by the PTAB, which held claims 1, 2, and 6-13 to be unpatentable.
Apple ended its involvement in the proceedings after that initial PTAB decision, but FitBit filed an appeal at the Federal Circuit seeking the invalidation of claims 3-5 as well.
Valencell challenged FitBit’s right to appeal the PTAB’s decision on claims 3-5, as it hadn’t included these in its own petition for IPR when it joined the proceedings.
But in yesterday’s decision, a panel of Federal Circuit judges ruled that “FitBit’s rights as a joined party applies to the entirety of the proceedings and includes the right of appeal”.
“FitBit acknowledges that it did not seek to file a separate brief after claims 3–5 were added to the IPR, and states that such separate brief was not required in order to present the issues,” the Federal Circuit decision stated.
The judges concluded that “these circumstances do not override Fitbit’s statutory right of appeal”.
Patentability
Having ruled on FitBit’s right to appeal the PTAB’s decision, the Federal Circuit also sided with the fitness tech company on the patentability of the Valencell claims.
FitBit had argued before the PTAB that the claims should be invalidated over prior art references. But after adopting Valencell’s proposed claim construction for claim 3, the PTAB did not consider whether it should be invalidated for obviousness.
The PTAB also declined to consider claims 4-5 for obviousness because of an error in the wording of the claim regarding the term “the application”.
The error arose after the claims were renumbered in light of claim 2 having already been invalidated, meaning “the application” had no “antecedent basis”, or in other words, was not explained in claim 1.
Both FitBit and Valencell were in agreement on how the error arose, but the PTAB ruled it could not consider claims 4-5 for obviousness.
The Federal Circuit panel wrote: “It appears that neither the applicant nor the examiner caught the error. However, the error has come to light, and the board declined to accept the parties’ shared view of the correct antecedent.”
The court did not, as FitBit requested, analyse whether the patents were invalid as obvious, but instructed the PTAB to do so.
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