FITBIT, INC. v. VALENCELL, INC., Appeal No. 2019-1048 (Fed. Cir. July 8, 2020).  Before Newman, Dyk, and Reyna.  Appealed from the Patent Trial and Appeal Board.  (Inter Partes Review)


Fitbit and Apple filed separate petitions for inter partes review (IPR) of Valencell’s patent to a method of physical activity monitoring.  Apple petitioned for review of claims 1-13, but the Board only initiated the IPR for claims 1, 2, and 6-13.  Fitbit only sought review of claims 1, 2, and 6-13, which was granted.  The Board then granted Fitbit’s motion to merge the separate IPR proceedings.

The Supreme Court decided SAS Institute, Inc. v. Iancu after the trial, but before a decision was rendered in the merged IPR.  SAS Institute established a requirement that the Board decide all of the challenged claims in a patent if an IPR is instituted.  Thus, the Board re-instituted the merged IPR to add claims 3-5 of Valencell’s patent.

The Board found that claims 3-5 were not unpatentable.  In so doing, the Board declined to fix an antecedent basis problem in the claims that was an undisputed clerical error.  Apple withdrew from the case after the Board’s decision, and Fitbit appealed the finding that claims 3-5 were not unpatentable.  Valencell contested Fitbit’s standing to appeal the decision on claims that it did not challenge.


Does a party having standing to appeal an IPR decision on claims that it did not challenge?  (continue reading)

Summary by:  Brian Repper

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