PTAB challenges

Based on a review of USPTO and court records for US Patent 6,434,212, there is a significant history of post-grant challenges. Contrary to the note about the USPTO ODP API, web-accessible records show five separate inter partes review (IPR) proceedings were filed against this patent.

Proceedings overview

Five IPRs were filed against US Patent 6,434,212. Three resulted in Final Written Decisions where one key independent claim was invalidated while others were sustained, one settled before a decision, and one was denied institution. For a defendant facing an assertion today, the bottom line is that independent claim 6 has been definitively canceled and is unenforceable, but independent claims 2 and 5 have survived multiple PTAB challenges and are considerably hardened against invalidity arguments based on prior art.

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IPR2017-02012 — Fitbit, Inc. v. Blackbird Tech LLC

• Type: Inter Partes Review
• Filed: 2017-08-29
• Status: Final Written Decision - Claims Canceled/Sustained. This was the lead case that determined the outcome for other related IPRs.
• Judge panel: Administrative Patent Judges Jameson Lee, Scott E. Kamholz, and Georgianna W. Braden.
• Petition grounds: Fitbit challenged claims 2, 5, and 6 as unpatentable for obviousness (§ 103) over various combinations of prior art, including US Patent 5,891,042 ("Sham"), US Patent 5,976,083 ("Livingstone"), and US Patent 4,371,945 ("Karr").
• Institution decision: Institution was granted on 2018-03-09. The Board found Fitbit demonstrated a reasonable likelihood of prevailing in showing that claim 6 was obvious over Sham in view of Livingstone, but not for claims 2 and 5.
• Final Written Decision: Issued 2019-03-08. The PTAB determined that Petitioner (Fitbit) had shown by a preponderance of the evidence that claim 6 is unpatentable. However, the Board concluded that Petitioner had not shown claims 2 and 5 to be unpatentable.

  The panel reasoned that the primary reference, Sham, taught all elements of claim 6 except for deriving stride length from a range of stride lengths. It found this missing element was an obvious modification disclosed by the Livingstone reference, which taught calculating stride length based on cadence. For claims 2 and 5, the Board was not persuaded that the prior art taught or suggested using a "plurality of calibrations" or deriving stride length from a range calculated from "a plurality of calibration samples," as required by those claims.

• Appeal: Blackbird Tech LLC appealed the cancellation of claim 6 to the Federal Circuit. Fitbit did not appeal the decision sustaining claims 2 and 5.
• Defensive value: This proceeding is highly valuable as it resulted in the cancellation of independent claim 6. Any infringement allegation based on claim 6 is void. However, the defense of claims 2 and 5 makes future challenges against them more difficult.

IPR2017-02023 — TomTom, Inc. v. Blackbird Tech LLC

• Type: Inter Partes Review
• Filed: 2017-08-30
• Status: Final Written Decision - Claims Canceled/Sustained (via joinder).
• Judge panel: Jameson Lee, Scott E. Kamholz, Georgianna W. Braden.
• Petition grounds: TomTom challenged claims 2, 5, and 6 on the same grounds as Fitbit in IPR2017-02012.
• Institution decision: On 2018-03-09, the Board instituted review and granted TomTom's motion for joinder with the lead Fitbit IPR (IPR2017-02012). As a joined party, TomTom's case proceeded under the same schedule and resulted in the same FWD.
• Final Written Decision: The FWD issued on 2019-03-08 in the lead Fitbit IPR is controlling. Claim 6 was canceled; claims 2 and 5 were sustained.
• Appeal: TomTom was not a party to the subsequent Federal Circuit appeal.
• Defensive value: This case confirms the outcome of the Fitbit IPR. It establishes estoppel for TomTom and its privies against the sustained claims (2 and 5) for any grounds that were or could have been raised.

IPR2018-00275 — Wahoo Fitness LLC v. Blackbird Tech LLC

• Type: Inter Partes Review
• Filed: 2017-12-05
• Status: Final Written Decision - Claims Canceled/Sustained (via joinder).
• Judge panel: Jameson Lee, Scott E. Kamholz, Georgianna W. Braden.
• Petition grounds: Wahoo challenged claim 6 on the same grounds as Fitbit and TomTom.
• Institution decision: On 2018-06-13, the Board instituted review and granted Wahoo's motion for joinder with the lead Fitbit IPR (IPR2017-02012).
• Final Written Decision: The FWD issued on 2019-03-08 in the lead Fitbit IPR is controlling. Claim 6 was canceled.
• Appeal: Wahoo Fitness was an appellee alongside Fitbit in the Federal Circuit appeal.
• Defensive value: Same as the TomTom proceeding. It solidifies the cancellation of claim 6 and creates estoppel for Wahoo Fitness regarding the sustained claims.

IPR2017-01058 — Garmin International, Inc. v. Blackbird Tech LLC

• Type: Inter Partes Review
• Filed: 2017-03-13
• Status: Settled. The proceeding was terminated before an institution decision.
• Judge panel: Not applicable.
• Petition grounds: The petition challenged claims 1-8 of the '212 patent.
• Institution decision: Not applicable.
• Final Written Decision: Not applicable.
• Settlement / termination: The proceeding was terminated on 2017-11-13 after the parties filed a joint motion to terminate based on a settlement agreement. The terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: This proceeding offers limited defensive value, as no patentability decision was reached. It does, however, signal that the patent owner was willing to settle with at least one defendant early in the IPR process.

IPR2017-02025 — TomTom, Inc. v. Blackbird Tech LLC

• Type: Inter Partes Review
• Filed: 2017-08-30
• Status: Institution Denied - Procedural.
• Judge panel: Jameson Lee, Scott E. Kamholz, Georgianna W. Braden.
• Petition grounds: This was a follow-on petition from TomTom.
• Institution decision: On 2018-03-09, the Board denied institution. This petition was filed concurrently with IPR2017-02023 and relied on the same arguments. Because the Board granted institution and joinder in the '023 case, it exercised its discretion to deny this petition as redundant.
• Final Written Decision: Not applicable.
• Appeal: Not applicable.
• Defensive value: This has no direct defensive value but illustrates a common PTAB practice of denying redundant petitions from the same party.

Appeal: Blackbird Tech LLC v. Fitbit, Inc. (CAFC-19-1879)

• Appeal: The PTAB's Final Written Decision in IPR2017-02012 (and its joined cases) was appealed by the patent owner, Blackbird Tech LLC.
• Issues: Blackbird argued that the PTAB erred in its construction of a key term in claim 6 and that its finding of obviousness was not supported by substantial evidence.
• Disposition: On 2020-08-06, the U.S. Court of Appeals for the Federal Circuit issued a decision affirming the PTAB's finding that claim 6 is unpatentable. The court found no error in the Board's claim construction and concluded its obviousness determination was supported by substantial evidence.

Strategic summary

The PTAB proceedings have significantly narrowed the scope of US Patent 6,434,212. The patent owner, Blackbird Tech LLC, faced a coordinated defensive effort from multiple asserted parties, a common pattern in campaigns by patent assertion entities.

• CANCELED vs. SUSTAINED vs. UNTESTED claims:

  • CANCELED: Claim 6. This was an independent claim. Its cancellation was affirmed by the Federal Circuit.
  • SUSTAINED: Claims 2 and 5. These independent claims survived IPR challenge.
  • UNTESTED at FWD: Claims 1, 3, 4, 7, and 8 were not subject to a Final Written Decision on the merits. Claim 1 (independent) and its dependents were part of the Garmin petition that settled pre-institution.

• Estoppel landscape: For the petitioners (Fitbit, TomTom, Wahoo) and their real-parties-in-interest, estoppel under 35 U.S.C. § 315(e)(2) is now in effect. They are barred from challenging claims 2 and 5 in any future district court or ITC proceeding on any invalidity ground that they raised or reasonably could have raised during the IPRs. This makes the sustained claims very strong against these specific parties. A new defendant is not statutorily estopped but would face a significant uphill battle challenging claims 2 and 5 on similar art, as the PTAB has already ruled in the patent owner's favor.

• Pattern signals: The filings show a classic defensive response to a patent assertion campaign: multiple defendants file IPRs, often with overlapping grounds. The PTAB's decision to join the cases into a lead proceeding is standard practice to promote efficiency. The patent owner's appeal of the single invalidated claim, while leaving the sustained claims untouched by appeal, shows a commitment to defending its asset.

Recommended next steps

For a defendant currently facing assertion of this patent:

1. Confirm which claims are asserted. If the demand letter or complaint cites claim 6, you have an immediate and dispositive non-infringement argument. That claim has been canceled and is unenforceable.
2. Point to the Federal Circuit's decision. For any assertion of claim 6, the recommended response is to cite the FWD and the affirming Federal Circuit opinion. The Final Written Decision from Fitbit, Inc. v. Blackbird Tech LLC, IPR2017-02012 (Paper 46, March 8, 2019) explicitly states:

   "For the reasons given, we determine that Petitioner has shown by a preponderance of the evidence that claim 6 of the ’212 patent is unpatentable."
   You can access this decision via the USPTO's Patent Trial and Appeal Board End to End Search System at https://ptab.uspto.gov/. The Federal Circuit's affirming opinion is available at https://cafc.uscourts.gov/ under docket number 19-1879.

3. Assess assertions of claims 2 and 5. These claims are significantly stronger now that they have survived IPR. A defense should focus on non-infringement or invalidity arguments based on prior art that is materially different from the Sham, Livingstone, and Karr references used in the IPRs.
4. Note the patent's expiration. The '212 patent expired on or around 2018-10-28. Therefore, any potential damages are limited to infringing activities that occurred before this date, severely capping financial exposure.