Koninklijke Philips N.V.

Patent Trials and Appeals Board

Oct 27, 2020

IPR2020-00754 (P.T.A.B. Oct. 27, 2020)

Trials@uspto.gov Paper No. 11
571.272.7822 Filed: October 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

GARMIN INTERNATIONAL, INC., GARMIN USA, INC.,
GARMIN LTD., AND
FITBIT, INC.
Petitioner

v.

KONINKLIJKE PHILIPS N.V.,
Patent Owner.
_______________

IPR2020-00754
Patent 7,845,228 B2
_______________

Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
NORMAN H. BEAMER, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 314(a)

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I. INTRODUCTION
Garmin International, Inc., Garmin USA, Inc., Garmin Ltd., and Fitbit
Inc. (collectively “Petitioner”) request inter partes review of claims 1–11 of
U.S. Patent No. 7,845,228 B1 (Ex. 1001, “’228 patent”). Paper 1 (“Pet.”).
Koninklijke Philips N.V. (“Patent Owner”) filed a Preliminary Response.
Paper 7 (“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a
Reply (Paper 8, “Reply”) and Patent Owner filed a Sur-Reply (Paper 9, “Sur-
Reply”).
An inter partes review may not be instituted unless the information
presented in the petition and the preliminary response shows “there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).
Moreover, the Supreme Court has held that a decision under § 314 may not
institute review on fewer than all claims challenged in the petition. SAS Inst.,
Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018); see also PGS Geophysical AS
v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to
require “a simple yes-or-no institution choice respecting a petition,
embracing all challenges included in the petition”).
For the reasons set forth below, upon considering the Petition,
Preliminary Response, Preliminary Reply, Preliminary Sur-Reply, and
evidence of record, we exercise our discretion under 35 U.S.C. § 314(a) to
deny institution.
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II. BACKGROUND
A. Related Proceedings
Petitioner informs us of a proceeding pending before the International
Trade Commission (“ITC”), Certain Wearable Monitoring Devices, Systems,
and Components Thereof, Inv. No. 337-TA-1190 (U.S.I.T.C.) (“ITC
Proceeding”). Pet. 67. According to Petitioner, the ITC Proceeding involves
the ’228 patent and U.S. Patent Nos. 9,820,698 (“the ’698 patent”),
9,961,186, and 9,717,464 (“the ’464 patent”). Id. Patent Owner informs us
that the ITC proceeding is set for trial October 19–23, 2020, and that an
Initial Determination is due February 4, 2021. Prelim. Resp. 1.
Petitioner has filed two IPR petitions against the ’698 patent, each of
which has been denied, IPR2020-00771, Paper 14 (PTAB Oct. 19, 2020);
IPR2020-00772, Paper 14 (PTAB Oct. 19, 2020). See Paper 4, 1. Petitioner
Fitbit has filed two IPR petitions against the ’464 patent, each of which has
been denied, IPR2020-00773, Paper 13 (PTAB Sept. 30, 2020); IPR2020-
00774, Paper 13 (PTAB Sept. 30, 2020). Id.
Patent Owner informs us that in addition to the ITC Proceeding there is
a pending district court case involving the ’228 patent, Fitbit, Inc. v.
Koninklijke Philips NV, No. 4:20-cv-02246, (N.D. Cal.), which was
transferred to the District of Massachusetts, Fitbit, Inc. v. Koninklijke Philips
N.V., DMA-1-20-cv-11611 (“Boston Case”). Id. In lieu of responding to the
complaint, Patent Owner filed a motion to stay the Boston Case pending the
ITC Proceeding. Ex. 3001. Petitioner Fitbit filed a response to the motion to
stay agreeing to a stay for a few weeks pending decisions that were expected
in October 2020 from the ITC and decisions that are expected from the Board
on this Petition and the related petitions identified above. Ex. 3002, 1.
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Petitioner filed a Sur-Reply reiterating its position that the Boston Case
should be on hold “for just a few more weeks pending intervening
developments.” Ex. 3004, 1. Patent Owner filed a reply to the response,
arguing that “the [c]ourt should grant [Patent Owner]’s request to stay this
case until the ITC proceedings have fully played out,” given recent events at
the ITC. Ex. 3003, 2. These recent events include a summary determination
that Fitbit infringes the ’228 patent and summary determination in Patent
Owner’s favor regarding domestic industry. Id. On October 15, 2020, the
Boston Case was stayed “for reasons of judicial efficiency and economy.”
Ex. 3005. The stay is set to last “until at least ITC completes its
investigation.” Id.
B. The ’228 Patent
The ’228 patent relates to “[a]n activity monitor … that reduces the
amount of power consumed during a monitoring operation.” Ex. 1001,
Abstract. As described in the ’228 patent, known systems for monitoring
human activity are composed of three accelerometers that measure
accelerations of the human body. Id. at 1:18–22. In these systems, a human
wears the accelerometers over a certain period and the data from these
accelerometers is summed up and stored in memory for later processing by a
computer. Id. at 1:27–28. “However, the known system has the considerable
drawback that continuous monitoring of the accelerometer signals results in
relatively high power consumption” and this “means that large and expensive
batteries are required.” Id. at 1:38–43.
The ’228 patent seeks to reduce this power consumption by monitoring
the measurement of the motion sensor’s output in a discontinuous manner
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over time. See id. at 2:47–48. Figure 3 of the ’228 patent is reproduced
below.

Figure 3, shown above, depicts a flow diagram of the steps of a method of the
present invention. Id. at 1:60–61. As shown in Figure 3, the processor of the
’228 patent’s activity monitor remains in a standby mode (step A) for a
predefined period then inputs the measurement unit’s output and processes
that data (step B), storing the results (step C), in memory before returning to
standby mode. Id. at 2:41–46. According to the ’228 patent’s specification,
“discontinuous monitoring activity can be achieved by programming the
processor unit appropriately, so that the processor goes into a standby (or
sleep) mode after a few seconds of monitoring.” Id. at 2:60–63.
C. Illustrative Claim
Petitioner challenges claims 1–11, with claims 1 and 8 being
independent. Challenged independent claim 1 is illustrative of the challenged
claims and is reproduced below:
1. An activity monitor comprising:
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a measurement unit including a plurality of motion sensors
operable to produce respective sensor signals indicative of
motion experienced thereby; and
a processor operable to receive the sensor signals from the
measurement unit and to process the sensor signals in accordance
with a predetermined method,
characterized in that the activity monitor is operable to monitor
and process the sensor signals discontinuously in time and the
processor is operable to monitor the sensor signals in turn.
Ex. 1001, 3:17–26.
D. The Asserted Challenges to Patentability and Evidence of Record
The Petition sets forth challenges to the patentability of claims 1–11 of
the ’228 patent as follows (see Pet. 7):1
Challenged Claim(s) 35 U.S.C. §2 Reference(s)/Basis
1–11 § 102 Cunningham3
1–11 § 103 Cunningham, Swedlow4
1–11 § 103 Pacesetter ’9635, Swedlow
III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(A)
Patent Owner states that the ’228 patent is the subject of a pending ITC
proceeding. Prelim. Resp. 1–2, 11–14. Patent Owner argues we should

1 Petitioner supports its challenges with the Declaration of Joseph A.
Paradiso, Ph.D. Ex. 1003.
2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(Sept. 16, 2011) (“AIA”), included revisions to 35 U.S.C. §103 (effective
March 16, 2013). The ’228 patent issued from an application filed before
March 16, 2013, and thus, we apply the pre-AIA version of §103.
3 U.S. Pat. No. 6,077,236, issued Jun. 20, 2000 (Ex. 1005, “Cunningham”).
4 U.S. Pat. No. 5,924,979, issued Jul. 20, 1999 (Ex. 1006, “Swedlow”).
5 U.S. Pat. No. 6,002,963, issued Dec. 14, 1999 (Ex. 1007, “Pacesetter
’963”).
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exercise discretion under 35 U.S.C. § 314(a) and deny institution based on
the ITC proceeding because it involves the same parties, overlapping claims,
the same prior art, and is at an advanced stage. Id. at 22–35; Sur-Reply 1–7.
To the contrary, Petitioner argues that evaluation of the Apple v. Fintiv
factors demonstrates we should not exercise discretion to deny institution of
inter partes review. Reply 1–7.
Institution of an inter partes review is discretionary. See 35 U.S.C.
§ 314(a) (2018) (stating “[t]he Director may not authorize an inter partes
review to be instituted unless the Director determines that the information
presented in the petition . . . shows that there is a reasonable likelihood that
the petitioner would prevail with respect to at least 1 of the claims challenged
in the petition”) (emphasis added); Harmonic Inc. v. Avid Tech, Inc., 815
F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never
compelled, to institute an IPR proceeding.”). In determining whether to
exercise that discretion on behalf of the Director, we are guided by the
Board’s precedential decision in NHK Spring Co. v. Intri-Plex Techs, Inc.,
IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018).
In NHK, the Board found that the “advanced state of the district court
proceeding” was a “factor that weighs in favor of denying” the petition
under § 314(a). NHK, Paper 8 at 20. The Board determined that
“[i]nstitution of an inter partes review under these circumstances would not
be consistent with ‘an objective of the AIA . . . to provide an effective and
efficient alternative to district court litigation.’” Id. (citing Gen. Plastic
Indus. Co., Ltd. v. Canon Kabushuki Kaisha, IPR2016-01357, Paper 19, 16–
17 (PTAB Sept. 6, 2017) (precedential in relevant part)).
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The Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Fintiv”) sets forth six
factors that we consider when determining whether to use our discretion to
deny institution due to the advanced state of parallel litigation:
1. whether the court granted a stay or evidence exists that
one may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s
projected statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and
the parties;
4. overlap between issues raised in the petition and in the
parallel proceeding;
5. whether the petitioner and the defendant in the parallel
proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of
discretion, including the merits.
Id. at 6. “These factors relate to whether efficiency, fairness, and the merits
support the exercise of authority to deny institution in view of an earlier trial
date in the parallel proceeding.” Id. In evaluating these factors, we take “a
holistic view of whether efficiency and integrity of the system are best served
by denying or instituting review.” Id. (citing Patent Trial and Appeal Board
Consolidated Trial Practice Guide 58 (November 2019),
https://www.uspto.gov/TrialPracticeGuideConsolidated). We address the
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Fintiv factors in seriatim and discuss in detail our reasons for exercising
discretion to deny institution based on § 314(a).
A. Whether a Stay Exists or Is Likely to Be Granted if a Proceeding Is
Instituted
A stay of the litigation pending resolution of the PTAB trial allays
concerns about inefficiency and duplication of efforts, which fact strongly
weighs against exercising the authority to deny institution. Fintiv, Paper 11
at 6. The ’228 patent is involved in two parallel proceedings—the ITC
Proceeding and the Boston Case. Patent Owner argues that Petitioner did not
seek a stay of the ITC proceeding, that it is unlikely that the Administrative
Law Judge (“ALJ”) would have granted a stay if one was requested, and,
given the current stage of that proceeding, it is unlikely that a stay would be
granted now. Prelim. Resp. 26; Sur-Reply 1–2. The parties do not
substantively6 discuss the Boston Case, which has been stayed pending the
ITC case “for reasons of judicial efficiency and economy.” Ex. 3005.
Petitioner argues that Fintiv does not apply to ITC proceedings. Reply
1–3. According to Petitioner, “the ITC Investigation does not parallel an IPR
because the ITC lacks the authority to issue a binding ruling on invalidity.”
Id. at 1 (citing Texas Instr. Inc. v. Cypress Semiconductor Corp., 90 F.3d
1558, 1569 (Fed. Cir. 1996)) (emphasis omitted). Petitioner further contends
that even if ITC proceedings were to be considered in a Fintiv analysis, the
first factor would be neutral or even favor institution because no motion to
stay has been filed and it would be inappropriate for the Board to speculate as
to whether the ITC would stay its proceeding. Id. at 2–3.

6 Patent Owner references the Boston Case, but notes that this proceeding “is
limited to non-infringement issues.” Prelim. Resp. 14.
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Patent Owner argues that Fintiv contemplates considering an ITC
investigation. Prelim. Resp. 25–26. As noted in Fintiv,
even though the Office and the district court would not be bound
by the ITC’s decision, an earlier ITC trial date may favor
exercising authority to deny institution under NHK if the ITC is
going to decide the same or substantially similar issues to those
presented in the petition. . . . We recognize that ITC final
invalidity determinations do not have preclusive effect, but, as a
practical matter, it is difficult to maintain a district court
proceeding on patent claims determined to be invalid at the ITC.
Accordingly, the parties should also indicate whether the
patentability disputes before the ITC will resolve all or
substantially all of the patentability disputes between the parties,
regardless of the stay.
Id. (quoting Fintiv, Paper 11 at 8–9) (emphasis added).
We agree with Patent Owner that Fintiv applies here. The Board has
considered ITC proceedings in weighing if exercising discretion is warranted.
See, e.g., Samsung Elecs. Co. v. Dynamics, Inc., IPR2020-00502, Paper 34,
7–14 (PTAB Aug. 12, 2020) (evaluating Fintiv factors in light of stayed
district court case, with a primary focus on an advanced-stage ITC
proceeding); Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2019-
00231, Paper 14, 7–12 (PTAB. May 20, 2019) (evaluating NHK precedent
for related ITC proceeding). Thus, this factor and the remaining Fintiv
factors are applicable to the parallel proceedings here.
Petitioner has not requested a stay of the ITC proceeding and, we agree
with Patent Owner that a stay of the ITC proceeding is unlikely at this stage
given the impending hearing date this month, and the ITC’s projected Initial
Determination date of February 4, 2021 and the projected conclusion of the
ITC Proceeding on June 4, 2021. Ex. 2018, 6. Further, in the Boston Case,
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Patent Owner represented that “on October 2, 2020 . . . , the ITC issued a
final pre-trial order confirming that the trial will proceed on October 21–23,
2020.” Ex. 3003, 2. A motion for a stay pending the resolution of the ITC
Proceeding has been granted in the Boston Case. Ex. 3005. On balance, it is
unlikely that the ITC Proceeding will be stayed and we determine that this
weighs in favor of not instituting this proceeding.
B. Proximity of the Court’s Trial Date to the Board’s Projected
Statutory Deadline
A hearing before the ALJ is scheduled for October 21–23, 20207.
Prelim. Resp. 26; Ex. 3003, 2. The ALJ’s Initial Determination is due by
February 4, 2021, and the ITC investigation is scheduled to conclude by
June 4, 2021. Ex. 3003, 2. Patent Owner argues that these dates are all
before a final written decision would issue in this inter partes review
proceeding.
Petitioner argues that “[e]ven if the Board were to consider the ITC
Investigation schedule, this factor favors institution because the relevant
timeframe between a final ruling and the conclusion of a full trade
investigation favors the IPR.” Reply 3. Petitioner points out that the Final
Determination may be due in June 2021, but that would not be the end of the
proceeding. Id. Petitioner states that the Final Determination is followed by
a 60-day period of presidential review, and if there is an exclusion order,
further litigation could occur at the Intellectual Property Rights Branch
(“IPRB”) of U.S. Customs and Border Protection. Id. That litigation could

7 The parties have not informed us as to any last minute deviation of the
ITC’s schedule. We have no reason to believe that the hearing did not occur
as scheduled so for the purposes of this Decision we will assume that the
hearing took place as scheduled.
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be subject to an appeal at the Court of International Trade (“CIT”). Id. Thus,
Petitioner asserts that “the Board’s projected statutory deadline of
October 28, 2021 will only be a mere two months after the ITC determination
is final and well before any IPRB and CIT proceedings. Id. at 4.
We decline to speculate as to the outcome of the ITC Proceeding and
as to the probability of post-ITC activities regarding the President of the
United States, IPRB, and CIT. The current ITC schedule has an evidentiary
hearing scheduled to occur October 21–23, 2020, with an Initial
Determination scheduled for February 4, 2021, and a final ITC determination
set to pre-date the Board’s final written decision by four months. Ex. 3003,
2; Ex. 2018, 6. These facts weigh against institution of this proceeding.
C. Investment in the Parallel Proceeding by the Court and Parties
Patent Owner argues that “[t]he parties and the ALJ have already
performed, and will continue to perform, a considerable amount of work in
the ITC Investigation.” Prelim. Resp. 28. “[T]he ALJ has issued a claim
construction order and an order addressing Petitioners’ motion for summary
determination of indefiniteness as to the ’228 patent. Petitioners have
submitted two separate expert reports asserting invalidity based on
indefiniteness and prior art, including the prior art asserted in the Petition.”
Sur-Reply 5. Further, Patent Owner contends that Petitioner has served over
10,000 pages of invalidity contentions (including claim charts regarding the
prior art at issue in this proceeding), the parties have conducted more than 50
depositions, answered hundreds of interrogatories, and produced more than
500,000 pages of discovery. Prelim. Resp. 28.
Petitioner argues that this factor favors institution because “[t]he pace
of ITC investigations requires rapid investment in resources of which [Patent
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Owner] was aware when it chose the ITC.” Reply 4. Petitioner also notes
that the Board has refused to exercise discretionary denial in other cases
where the institution decision would pre-date the Initial Determination. Id.
(citing 3Shape A/S & 3Shape Inc., v. Align Tech., Inc., IPR2020-00223,
Paper 12, *34 n.15 (PTAB May 26, 2020) (“3Shape”); Wirtgen Am., Inc. v.
Caterpillar Paving Prods., IPR2018-01202, Paper 10, *11–12 (PTAB Jan. 8,
2019); Feit Elec. Co. v. Philips Lighting Holding B.V., IPR2018-00921,
Paper 9 at 8–9, 34–35 (Oct. 22, 2018)).
Patent Owner replies Petitioner’s arguments regarding the speed of the
ITC Proceeding are similar to arguments rejected in Fintiv. Sur-Reply 5.
The Board in Fintiv was unpersuaded by an argument regarding the speed of
certain forums noting that “it always has been the case that some district
courts move faster than others, and patent owners seeking to enforce patents
may be inclined to file suit in a district that moves relatively quickly.” Id.
(quoting Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 11 (May 13,
2020) (informative) (“Fintiv II”)). We note that two of the three cases cited
by Petitioner predate our precedential decision in Fintiv and our informative
decision in Fintiv II. As to the third case, the Board in 3Shape did not
conclude that this factor weighed against institution, but rather the Board
indicated that other factors outweighed the fact that the projected statutory
deadline for the IPR was after the conclusion of the ITC investigation. See
3Shape, Paper 12 at 34.
We weigh this factor somewhat against institution. The parties and the
ALJ and staff of the ITC have expended considerable resources to date on the
ITC Proceeding. Extensive discovery has been exchanged, the period of fact
discovery has concluded, and the ALJ has issued a summary determination
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and a claim construction ruling. See Prelim. Resp. 27–28; Sur-Reply 5–6;
Exs. 2018, 3003. The hearing is set for October 21–23. See Ex. 2018.
Petitioner does not dispute these facts. We credit, however, Petitioner’s
diligence in filing this Petition within a short time (less than three months)
after the ITC proceeding was instituted, thus, mitigating somewhat the
investments made in the ITC proceeding. See Ex. 3006.
D. Overlap Between Issues Raised in the Petition and in the Parallel
Proceeding
Patent Owner argues that “there is substantial overlap” between the
grounds in this proceeding and at the ITC. Prelim. Resp. 28. Patent Owner
argues that Petitioner relies on Cunningham, Swedlow, and Pacesetter ’963 in
its invalidity contentions as part of the ITC Proceeding. Id. “Indeed, on
July 22, 2020, Petitioners served an expert report of Dr. Paradiso in the ITC
Investigation that addressed, inter alia, anticipation theories based on
Cunningham and Pacesetter, as well as obviousness theories that purport to
combine those two references with Swedlow.” Id. at 29 (footnote omitted).
Thus, all of the prior art and prior art combinations at issue in this proceeding
also are at issue in the ITC Proceeding.
Petitioner argues that “[t]he Board has repeatedly held that ITC
investigations do ‘not render [an IPR] proceeding duplicative or amount to a
waste of the Board’s resources.’” Reply 2 (citing Samsung Elecs. Co. v.
BitMicro, LLC, IPR2018-01410, Paper 14, *18 (PTAB Jan. 23, 2019);
3Shape, Paper 12, *34; Wirtgen Am., Paper 10, *7–10). Petitioner points out
that the ITC uses a different evidentiary standard and burden. Id. at 5. In
addition, this proceeding challenges claim 1–11, but the ITC Proceeding only
involves claims 1–3. Id.
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Patent Owner asserts that the inclusion of claims 4–11 in this
proceeding should not weigh in favor of institution because independent
claim 8 is highly similar to challenged claim 1. Prelim. Resp. 29. Patent
Owner contends that Petitioner relies on the same analysis in this proceeding
for its challenges to claims 1 and 8. Id.; see also Pet. 37–38 (citing, without
further substantive elaboration, analysis from claim 1 for every element of
claim 8). Further, claims 1–3 are the only claims asserted by Patent Owner in
any of its pending cases and as such, the ITC validity determination would
resolve any validity issues regarding any asserted claim. Prelim. Resp. at 29–
30.
The ITC proceeding involves only claims 1–3 of the ’228 Patent
whereas Petitioner’s challenges here involve claims 1–11 of the ’228 Patent.
Therefore, resolution of the ITC proceeding would not resolve the parties’
dispute concerning patentability of claims 4–11 of the ’228 Patent. Looking
at the challenges before us, dependent claims 4–7 and 9–11 of the ’228 Patent
addresses limitations not present in the ITC proceeding. In particular, the
claims are directed to monitoring and/or standby modes. See Ex. 1001, 4:1–
14, 4:23–31; see Prelim. Resp. 29. These limitations are at issue in
Petitioner’s challenges before the Board, but are not at issue in the ITC
proceeding. We note, however, that Petitioner’s assertions regarding both
independent claims appears to be squarely in front of the ALJ. Claim 1 is
explicitly a part of the ITC proceeding and is challenged over the same art as
in this proceeding and Petitioner’s arguments regarding claim 8 are
substantially identical to those for claim 1. Thus, despite the fact that claim 8
is not a part of the ITC Proceeding, Petitioner’s assertions regarding claim 8
are substantially in front of the ALJ.
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Although there is significant overlap between the prior art challenges
asserted before the Board and the ITC proceeding, the challenge in the
Petition is directed to some substantively different claims than those before
the ITC, on balance, weighs slightly in favor of institution.
E. Whether the Petitioner and the Defendant in the Parallel
Proceeding Are the Same Party
The parties in the ITC proceeding and this proceeding are the same.
Prelim. Resp. 30. Petitioner does not dispute this fact. Reply 5. Petitioner
argues, however, that the application of this factor is “questionable” because
a party’s status as a defendant in another forum should not be sufficient to
weigh against institution. Id. at 5–6. Petitioner has not provided sufficient
explanation as to why this factor should not be weighed against it. On its
face, Fintiv indicates that this is a factor that should be considered as part of
this analysis. See Fintiv, Paper 11 at 6. Thus, this factor weighs against
institution.
F. Other Circumstances that Impact the Board’s Exercise of
Discretion, Including the Merits
We are persuaded that the merits of Petitioner’s asserted ground are
strong and as such, this factor weighs in favor of Petitioner on the evidence
presented thus far. For example, Petitioner notes that “the ’228 Patent’s
foreign counterparts were invalidated in both [European Patent Office] and
Japan using the same art presented here.” Reply 7 (citing Ex. 1016 (EPO
with Pacesetter) and Ex. 1025 (Japan with Cunningham and Pacesetter)). We
note that claims 1–11 rejected by the European Patent Office are
substantively identical to claims 1–11 of the ’228 patent. Compare Ex. 1016,
44–45 with Ex. 1001, 3:16–4:31. According to Petitioner, Pacesetter ’963,
which is before us and the ITC, is “nearly identically includes all of the
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disclosure[s] of Ex. 10178, including the disclosures cited by the [European
Patent Office] as teaching the limitations of the [European] Application
claims.” Pet. 42. Thus, Petitioner presents argument regarding claims 4–7
and 9–11 that are not at issue in the ITC proceeding and are substantially
similar to arguments that were found to be meritorious by the European
Patent Office. Pet. 34–38; Ex. 1016.
Patent Owner, however, disputes the strength of Petitioner’s case and
asserts that Petitioner’s “lack of candor” and gamesmanship regarding its
purportedly “inconsistent” claim construction positions should guide us to
denying institution. Prelim. Resp. 30–31. Patent Owner points out that
Petitioner asserted certain claims to be indefinite during the ITC Proceeding,
but does not refer to those assertions in this proceeding. Id.
We are not persuaded that advocating different claim construction
positions in the manner asserted here rises to the level of gamesmanship. In
the ITC Proceeding, Petitioner was asserting that certain limitations were
indefinite and such arguments are not permissible as part of this proceeding.
The Federal Circuit has held “that the Board may not cancel claims for
indefiniteness in an IPR proceeding.” Samsung Elecs. Am., Inc. v. Prisua
Eng'g Corp., 948 F.3d 1342, 1350 (Fed. Cir. 2020). Further, it is improper
for petitioners in an inter partes review to seek indefiniteness rulings from
this body. Id. In other contexts, the Board has been ordered to analyze the
patentability of a claim even if that claim is indefinite. Id. at 1355. There
may well be situations where a difference in claim construction positions

8 Exhibit 1017 is the Pacesetter reference, which is a European Patent
Publication that claims priority to Pacesetter ’963.
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rises to the level of gamesmanship, but we are not persuaded that this is the
situation that is before us in this proceeding.
Accordingly, we find this factor weighs in favor of institution.
G. Balancing the Fintiv Factors
We have considered the circumstances and facts before us in view of
the Apple v. Fintiv factors. Our analysis is fact driven and no single factor is
determinative of whether we exercise our discretion to deny institution under
§ 314(a). Here, Factors 1, 2, and 5 weigh against institution and Factor 3
weighs somewhat against institution. In short, the ITC will evaluate
Petitioner’s assertions regarding the art cited in the Petition and the ITC will
complete its proceeding before this matter will reach a Final Written
Decision. The parties and the ITC have made significant investment in the
ITC Proceeding with a half-million pages of discovery, 50 depositions, and
10,000 pages of invalidity contentions along with the ITC’s claim
construction and summary determinations. Factor 6 weighs in favor of
institution, however, we are persuaded that in this case the benefits that may
be gained from analyzing Petitioner’s grounds in this forum are largely (but
not completely) available to the public and Petitioner from the ITC’s analysis
of the cited art. Factor 4 weighs somewhat in favor of institution because the
overlap between the asserted claims is not complete. However, all of the
claims that have been asserted by Patent Owner in its patent infringement
cases are part of the ITC proceeding so much (but not all) of the analysis and
evaluation of the challenged claims may be gained from the analysis and
evaluation done by the ITC. Thus, evaluating the Apple v. Fintiv factors with
a holistic view of whether the efficiency and integrity of the system are best
served by denying or instituting review, we determine that the specific facts
IPR2020-00754
Patent 7,845,228 B1
19
of this case weigh in favor of exercising discretion under § 314(a) to deny
institution of inter partes review.
IV. CONCLUSION
After considering all the evidence and arguments presently before us,
we determine that exercising our discretion under 35 U.S.C. § 314(a) to not
institute trial is warranted. Accordingly, we do not institute an inter partes
review.
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied.

IPR2020-00754
Patent 7,845,228 B1
20
PETITIONER:

Adam Seitz
Kathleen Fitterling
ERISE IP, P.A.
adam.seitz@eriseip.com
kathleen.fitterling@eriseip.com

Naveen Modi
Joseph Palys
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
PH-Fitbit-Philips-IPR@paulhastings.com

PATENT OWNER:

George C. Beck
Eley O. Thompson
Foley & Lardner LLP
GBeck@foley.com
EThompson@foley.com