Joinder : CAFC Alert

CAFC Remands Back To PTAB Instructing Them To Conduct The Analysis And Correct The Mistakes In Wearable Technology IPR Case

| July 22, 2020

Fitbit, Inc., v. Valencell. Inc.

July 8, 2020

Before Newman, Dyk and Reyna. Opinion by Newman


Apple Inc., petitioned the Board for IPR (Inter Partes Review) of claims 1 to 13 of the U.S. Patent No., 8,923,941 (the ‘941 patent) owned by Valencell, Inc. The Board granted the petition in part, instituting review of claims 1, 2 and 6 to 13, but denying claims 3 to 5.

Fitbit then filed an IPR petition for claims 1, 2 and 6 to 13, and moved for joinder with Apple. The Board granted Fitbit’s petition and granted the motion for joinder.

After the PTAB trial, but before the Final Written Decision, the Supreme Court decided SAS Insitute, Inc., v. Iancu, 138 S. Ct 1348 (2018), holding that all patent claims challenged in an IPR petition must be reviewed by the Board, if the petition is granted. Thus, the Board re-instituted the Apple/Fitbit IPR to add claims 3 to 5.

The Board issued a Final Written Decision that held claims 1, 2 and 6 to 13 unpatentable, and claims 3 to 5 not unpatentable. Apple withdrew and Fitbit appealed the decision on claims 3 to 5. Valencell challenged Fitbit’s right to appeal claims 3 to 5.



“Valencell’s position was that Fitbit did not have standing to appeal the portion of the Board’s decision that related to claims 3 to 5, because Fitbit’s IPR petition was for claims 1, 2 and 6 to 13.”  Citing Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272, 1285 (Fed. Cir. 2017), Valencell argued that Fitbit had “waived any argument it did not present in its petition for IPR.” That is, Valencell argued that Fitbit does not have the status of “party” for the purpose of the appeal because “Fitbit did not request review of claims 3 to 5 in its initial IPR petition.”

Fitbit countered that although it did not “seek to file a separate brief after claims 3 to 5 were added to the IPR” the briefs were not required in order to present the issues, and the CAFC agreed that the circumstances do not override Fitbit’s statutory right of appeal.

The CAFC concluded that “Fitbit’s rights as a joined party applies to the entirety of the proceeding” including the right of appeal.


Claims 3 to 5 at issue are as follows:

3. The method of claim 1, wherein the serial data output is parsed out such that an application-specific interface (API) can utilize the physiological information and motion-related information for an application.

4. The method of claim 1, wherein the application is configured to generate statistical relationships between subject physiological parameters and subject physical activity parameters in the physiological information and motion-related information.

5. The method of claim 4, wherein the application is configured to generate statistical relationships between subject physiological parameters and subject physical activity parameters via at least one of the following: principal component analysis, multiple linear regression, machine learning, and Bland-Altman plots.

  • CLAIM 3

The Board did not review patentability of claim 3 on the asserted grounds of obviousness holding that the claim is “not unpatentable” based solely on their “rejection of Fitbit’s proposed construction of the term application-specific interface (API).

Specifically, Fitbit argued that the “broadest reasonable interpretation of “application-specific interface (API)…include[s] at least an application interface that specifies how some software component should interest with each other.” Fitbit’s interpretation was based heavily on the use of “API” which followed application-specific interface. API meaning ‘application programming interface.’  

Valencell argued for a narrower meaning, based upon the specification and the prosecution history. In particular, during prosecution the applicant had relied upon the narrow scope to distinguish from a cited reference.

The Board concluded the narrower claim construction was correct, and rejected Fitbit’s broader construction. The CAFC agreed with the Boards conclusion as to the correct claim construction.

However, following the Boards rejection of Fitbit’s claim construction they did not review the patentability of claim 3, as construed, on the asserted ground of obviousness. The Board explained that because “Petitioner’s assertions challenging claim 3 are based on the rejected construction…the evidentiary support relied upon is predicated upon the same” and so “[W]e do not address this claim further.”

CAFC held this was erroneous, vacated the Board’s decision and remanded for determination of patentability in light of the cited references. 


The Board held that claims 4 and 5 were “not unpatentable” because “the Board could not determine the meaning of the claims due to the term “the application” lacking antecedent basis.

The mistake had occurred due to the cancellation of claim 2, and erroneous renumbering of claim 4. Both Fitbit and Valencell agreed to this. Board declined to accept the parties’ shared view, stating:

Although we agree that the recitation of the term “the application” in claim 4 lacks antecedent basis in claim 1, we declined to speculate as to the intended meaning of the term.   Although Petitioner and Patent Owner now seem to agree on the nature of the error in claims 4 and 5 [citing briefs], we find that the nature of the error in claims 4 and 5 is subject to reasonable debate in view of the language of claims 1 and 3–5 and/or that the prosecution history does not demonstrate a single interpretation of the claims.

The CAFC disagreed with the Board, holding that althoughthe Board states that the intended meaning of the claims is “subject to reasonable debate,” we perceive no debate. Rather, the parties to this proceeding agree as to the error and its correction.”

The CAFC concluded that on remand the Board shall fixed the error and determine patentability of corrected claims 4 and 5:

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. Although the Board does not discuss its authority to correct errors, there is foundation for such authority in the America Invents Act, which assured that the Board has authority to amend claims of issued patents. See 35 U.S.C. § 316(d). . . . The concept of error correction is not new to the Agency, which is authorized to issue Certificates of Correction.


A joined party has full rights to appeal a PTAB final decision.

During an IPR, the Board has authority to correct mistakes in the claims of an issued patents, in particular those where a certificate of correction would be fitting. 

Always, be careful when renumbering claims for antecedent issues.  


| April 10, 2020


March 18, 2020

Prost, Plager and O’Malley (Opinion by Prost)

SummaryPlaintiff/Patent Holder Windy Citysuccessfully cross-appealed against Facebook on the issue of improper joinder of IPRs under 35 U.S.C. § 315(c).  Facebook had filed IPRs within one year of Windy City’s District Court complaint and then joined later filed IPRs adding new claims. The PTAB had allowed the joinder.  The CAFC vacated the Board’s joinder finding that Facebook could not join their own already filed IPRs.


In June 2016, exactly one year after being served with Windy City’s complaint for infringement of four patents related to methods for communicating over a computer-based net-work, Facebook timely petitioned for inter partes review (“IPR”) of several claims of each patent. At that time, Windy City had not yet identified the specific claims it was asserting in the district court proceeding. The four patents totaled 830 claims. The Patent Trial and Appeal Board (“Board”) instituted IPRs of each patent.

In January 2017, after Windy City had identified the claims it was asserting in the district court litigation, Facebook filed two additional petitions for IPR of additional claims of two of the patents.  Facebook concurrently filed motions for joinder to the already instituted IPRs on those patents.    By the time of filing the new IPRs, the one-year time bar of §315(b) had passed.  The Board nonetheless instituted Facebook’s two new IPRs, and granted Facebook’s motions for joinder.

The Board agreed with Facebook that Windy City’s district court complaint generally asserting  the  “claims” of the asserted patents “cannot reasonably be considered  an  allegation  that  Petitioner  infringes  all  830  claims of the several patents asserted.”  The Board therefore found that Facebook could not have reasonably determined which claims were asserted against it within the one-year  time  bar.  Once Windy City identified the asserted claims after the one-year time bar, the  Board  found  that  Facebook did not delay in challenging the newly asserted claims  by  filing  the  second  petitions  with  the  motions  for joinder.

The Board found that Facebook had shown by a  preponderance  of  the  evidence  that  some  of  the  challenged  claims are unpatentable, many  of  these  claims  had only been challenged in the later filed and joined IPRs.  Facebook appealed and Windy City cross-appealed on the Board’s  obviousness  findings.   Further, Windy City also challenged the Board’s joinder decisions allowing Facebook to join its new IPRs to its existing  IPRs  and  to  include new claims in the joined proceedings.  Windy City’s cross-appeal on the joinder issue is addressed here.


In its cross-appeal, Windy City argued that the Board’s decisions granting joinder were improper on the basis that 35 U.S.C. § 315(c): (1) does not permit a person to be joined as a party to a proceeding in which it was already a party (“same-party” joinder); and (2) does not permit new issues to be added to an existing IPR through joinder (“new issue”  joinder),  including  issues  that  would  otherwise  be  time-barred.

Sections 315(b) and (c) recite:  

(b) Patent Owner’s Action. —An inter partes review may not be instituted if the petition requesting  the  proceeding  is  filed  more  than  1  year  after  the date on which the petitioner, real party in interest,  or  privy  of  the  petitioner  is  served  with  a  complaint alleging infringement of the patent.  The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (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 partes review under section 314.

The CAFC noted that §315(b) articulates the time-bar for when an IPR “may not be instituted.” 35 U.S.C. §315(b). But §315(b) includes a specific exception to the time bar, namely “[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).”

Regarding the propriety of Facebooks joinder, the Court held the plain language of §315(c) allows the  Director  “to  join  as  a  party  [to  an  already  instituted  IPR]  any  person”  who  meets  certain  requirements.    However, when the Board instituted Facebook’s later petitions and granted its joinder motions, the Board did not purport to  be  joining  anyone as a party.  Rather, the Board understood Facebook to be requesting that its later proceedings be joined to its earlier proceedings.  The CAFC concluded that the Boards interpretation of §315(c) was incorrect because their decision authorized two proceedings to be joined, rather than joining a person as a party to an existing proceeding.

Section 315(c) authorizes the Director to “join as a party to [an IPR] any person who” meets certain requirements, i.e., who properly files a petition the Director finds warrants the institution of an IPR under § 314. No part of § 315(c) provides the Director or the Board with the authority to put two proceedings together. That is the subject of § 315(d), which provides for “consolidation,” among other options, when “[m]ultiple proceedings” involving the patent are before the PTO.35 U.S.C. § 315.

The Court went on to explain that the clear and unambiguous language of § 315(c) confirms that it does not allow an existing party to be joined as a new party, noting that subsection (c) allows the Director to “join as a party to [an IPR] any person who” meets certain threshold requirements. They noted that it would be an extraordinary usage of the term “join as a party” to refer to persons who were already a party.  Finding the phrase “join as a party to a proceeding” on its face limits the range of “person[s]” covered to those who, in normal legal discourse, are capable of being joined as a party to a proceeding (a group further limited by the own-petition requirements), and an existing party to the proceeding is not so capable.

            Regarding the second issue raised by Windy City that the Joinder cannot include newly raised issues, the CAFC found the language in §315(c) does no more than authorize the Director to join 1) a person 2) as a party, 3) to an already instituted IPR. Finding this language does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding, particularly when those new issues are other-wise time-barred.

            The Court noted that under the statute, the already-instituted IPR to which a person may join as a party is governed by its own petition and is  confined  to  the  claims  and  grounds  challenged in that petition.

            In reaching these conclusions, the Court did acknowledge the rock and hard place Facebook is left in.

            We do not disagree with Facebook that the result in this particular case may seem in tension with one of the AIA’s objectives for IPRs “to provide ‘quick and cost effective alternatives’ to litigation in the courts.” [Citations omitted] Indeed, it is fair to assume that when Congress imposed the one-year time bar of § 315(b), it did not explicitly contemplate a situation where an accused infringer had not yet ascertained which specific claims were being asserted against it in a district court proceeding before the end of the one-year time period. We also recognize that our analysis here may lead defendants, in some circumstances, to expend effort and expense in challenging claims that may ultimately never be asserted against them.

            However, the Court gave little remedy to bearing an enormous “effort and expense” of filing IPRs to 830 claims, asserting that they are bound by the unambiguous nature of the statute.

Petitioners who, like Facebook, are faced with an enormous number of asserted claims on the eve of the IPR filing deadline, are not without options. As a protective measure, filing petitions challenging hundreds of claims remains an available option for accused infringers who want to ensure that their IPRs will challenge each of the eventually asserted claims. An accused infringer is also not obligated to challenge every, or any, claim in an IPR. Accused infringers who are unable or unwilling to challenge every claim in petitions retain the ability to challenge the validity of the claims that are ultimately asserted in the district court. Accused infringers who wish to protect their option of proceeding with an IPR may, moreover, make different strategy choices in federal court so as to force an earlier narrowing or identification of asserted claims. Finally, no matter how valid, “policy considerations cannot create an ambiguity when the words on the page are clear.” SAS, 138 S. Ct. at 1358. That job is left to Congress and not to the courts.

            Hence, the CAFC concluded that the clear and unambiguous  language of §315(c) does not authorize same-party joinder, and also does not authorize joinder of new issues, including issues that would otherwise be time-barred. As a result, they vacated the Board’s decisions on all claims which were asserted in the later filed IPRs.

Take AwayA loop-hole between the one-year time bar, joinder statute for IPRs and District Court timing potentially gives a Plaintiff/Patent holder the ability to render an IPR more cost inefficient to a Defendant/Petitioner.  By not identifying the claims to be asserted within one year of filing a patent infringement complaint, the patent holder can place a large burden on filing an IPR.  Plaintiffs/Patent holders can strategize to assert infringement ambiguously to a prohibitive number of claims early in a District Court proceeding.  Defendants will need to attempt to counter such a strategy by requesting District Courts to force Plaintiffs to identify the specific claims which will be asserted within one year of filing the complaint.


| June 12, 2014

STC.UNM v. Intel Corp.

June 6, 2014

Panel: Rader, Dyk, and Newman. Opinion by Rader. Dissent by Newman


The ‘998 patent was a CIP of the ‘312 patent, which was jointly owned by STC.UNM and Sandia.  Because a terminal disclaimer (which required a common ownership of both patents) was filed during prosecution of the ‘998 patent, STC.UNM and Sandia are co-owners of the ‘998 patent even if Sandia did not make any contribution to the ‘998 patent.  STC.UNM filed an infringement suit concerning the ‘998 patent against Intel, and Sandia refused to join the lawsuit.  The district court dismissed the case for a lack of standing, and the CAFC affirmed by holding that all co-owners must ordinarily consent to join as plaintiffs in an infringement suit.  Furthermore, both the district court and the CAFC refused to involuntarily join Sandia to the case as a necessary party (FRCP Rule 19).

본사건은연방지방법원뉴멕시코지원의판결에불복하여 STC/UNM이연방순회항소법원 (CAFC)에항소한사건이다.  CAFC는연방지방법원과같이‘312 특허를바탕으로일부계속출원된특허 (continuation-in-part)인‘998 특허심사도중원고STC/UNM가존속기간포기서 (terminal disclaimer)를제출함으로써특허심사거절을극복하였으므로, STC/UNM과 Sandia는‘998 특허의공동소유자(co-owners)라고판단하였다 (Sandia는‘998 특허발명에공헌을하지않았다).  또한CAFC는 Sandia의소송참여의사에상관없이 STC/UNM이인텔을상대로‘998 특허침해소송을제기한것에대해STC/UNM은원고적격(standing)이없다고판단하여소송을기각하였다.  왜냐하면특허침해소송에서는특허의모든공동소유자가원고로참여해야하지만Sandia는소송참여를하지않기로결정하였기때문이다.  마지막으로CAFC는연방지방법원과마찬가지로본사건은연방민사소송규칙 19조의involuntary joinder rule이적용되지않아Sandia를원고로강제참여시킬수없다고판단하였다.

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