mistake : 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.  

Every Patent Practitioner’s Nightmare – Prosecution Mistakes That Can’t Be Fixed

| April 25, 2012

Landmark Screens, LLC, v. Morgan Lewis & Bockius, LLP, and Thomas D. Kohler

April 23, 2012

Panel: Bryson, Clevenger and O’Malley. Opinion by Clevenger.  Concurring opinion by O’Malley.


Patent prosecution can be forgiving when a mistake is made. However, given the right set of circumstances, a simple mistake can turn into a nightmare for both the client and attorney. This decision illustrates that a given set of circumstances can lead to a mistake which cannot be fully corrected, which leads to charges of malpractice and fraud against the prosecuting attorney as well as loss of a client. This decision also illustrates that full claim scope can be lost as a result of the mistake.

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