A Petitioner that Joins an IPR Can Appeal PTAB Rulings on Claims Raised Only by the Other Petitioner

In Fitbit, Inc. v. Valencell, Inc., No. 2019-1048 (Fed. Cir. July 8, 2020), the Federal Circuit held that, after joining an IPR proceeding, petitioner Fitbit had the right to appeal the PTAB’s ruling for all instituted claims, including those not appearing in Fitbit’s own petition.

Apple filed a petition for inter partes review (“IPR”) of claims 1-13 of the U.S. Patent No. 8,923,941 (“the ’941 patent”).  The PTAB granted the petition in part, instituting review of claims 1-2 and 6-13.  Fitbit subsequently filed its own IPR petition seeking review of claims 1-2 and 6-13 of the ’941 patent and moved for joinder with Apple’s IPR, both of which were granted.  After trial, but before the final written decision, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that the PTAB must review all claims challenged in a petition if the petition is granted.  In light of this decision, the PTAB re-instituted the combined IPR and added claims 3-5 of the ’941 patent.  In its final written decision, the PTAB held that claims 1-2 and 6-13 of the ’941 patent were unpatentable and held that claims 3-5 of the ’941 patent were not unpatentable.

After the Board issued a final written decision, Apple withdrew from the proceeding, and Fitbit alone appealed the PTAB’s decision as to claims 3-5 of the ’941 patent.  Patent owner Valencell argued that Fitbit had no right to appeal since it did not seek review of claims 3-5 of the ’941 patent in its own IPR petition. The Federal Circuit concluded that Fitbit’s rights as a joined party “appl[y] to the entirety of the proceeding,” and therefore Fitbit had the right to challenge the PTAB’s finding as to claims 3-5 of the ’941 patent.