Federal Circuit Holds that Petitioners Have a Right to Appeal PTAB Decisions Directed to Any Challenged Claim, Regardless of Whether the Petitioner Addressed the Claims in Their Initial Petition

In Fitbit, Inc. v. Valencell, Inc. (Fed. Cir. 2020), an appeal from the Patent Trial and Appeal Board’s decision, the Federal Circuit held that a party’s standing to appeal specific claims at issue in an IPR is not limited to the claims challenged in the party’s initial petition.   The Federal Circuit explained that Fitbit’s failure to file a separate brief after claims 3-5 were added to the IPR do not override Fitbit’s statutory right of appeal.  Relying on Thryv, Inc. v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), the Federal circuit explained that “Fitbit’s rights as a joined party applies to the entirety of the proceedings and includes the right of appeal,” which conforms to “the statutory purpose of avoiding redundant actions by facilitating consolidation, while preserving statutory rights, including judicial review.”  The Federal Circuit also held that the Board erred in declining to correct a renumbering error that both parties agree with.  The Court explained that the PTAB is provided authority to correct errors “in the America Invents Act, which assured that the Board has authority to amend claims of issued patents.”

The full opinion is accessible via http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1048.OPINION.7-8-2020_1615429.pdf