Fitbit Survives 12(b)(6) Motion Attacking Patent-Eligibility

Fitbit sued Jawbone, its rival, alleging infringement of three patents directed to preparing wearable activity trackers with client and/or server computers, whereupon Jawbone unsuccessfully brought a Rule 12 motion to dismiss alleging patent-ineligible subject matter. Fitbit, Inc. v. AliphCom, No. 15-cv-04073-EJD (N.D. Cal. Feb 9, 2017.)  The asserted patents were U.S. Patent Nos. 9,026,053, 9,106,307, and 9,048,923; “[a]ll of the asserted claims recite a method or system for pairing that involves three discrete entities: a portable monitoring device, a ‘client,’ and a ‘server.’”  Skirting the question of whether claims were directed to a patent-ineligible abstract idea, the court found that the claims recite an inventive combination of elements.

The court discussed claim 1 of the ’053 patent, which you can find here, as representative. Jawbone alleged that “the asserted claims are directed to the abstract ideas of ‘identifying and validating electronic device’ through ‘minimal user interaction.’” Fitbit’s counter was “that the claims are directed to a narrow improvement in device pairing that is specific to portable monitoring devices.”

The court agreed that “Jawbone’s characterization of the claims sweeps to broad,” because Fitbit’s “claims do not recite any process for connecting to devices, but a specific one.”  Further, “the steps of the asserted claims are all relatively simple actions that could be performed manually, and their description is largely functional.” Nonetheless, whether the claims were drawn to nothing more than the admittedly abstract idea of device pairing was a question the court deferred.

Concerning the second prong of the Alice/Mayo test, “the Court agree[d] with jawbone that none of the claim elements, assessed individually, provide an inventive concept.” However, alluding to the fact that the court was confronted with the patent-eligibility question at the pleading stage, the court agreed “with Fitbit that the ordered combination of claim elements, interpreted in the light most favorable to Fitbit, contains inventive concepts.”

Specifically, the court pointed to “the addition of tapping as the form of validation.” Even if a form of validation known in the art, tapping could nonetheless have “a transformative effect on the abstract idea and bring[] it within the realm of patentable subject matter.” The court also stated that “the use of a server as a part of the claimed pairing process supplies and inventive concept.”

Lessons for Practice

First, I should note that this case belies my recent observation that courts rarely separate the two prongs of the Alice/Mayo test.  That is, this case is a bit unusual for the fact that the court explicitly relied on the inventive concept prong of the Alice test - and only on that second prong - in deciding the patent-eligibility question before it.

I will stand by my earlier observation, but this case does offer the good lesson that long claims - where you can argue that combining a lot of elements is an innovation that overcomes an abstract idea - may stand a better chance surviving Section 101 challenges than short claims. A second lesson is one often-noted in this blog, that the procedural stage of a case matters when a patent-eligibility question is presented. Here, the court was pretty clear that it was going to give Fitbit’s patents the benefit of the doubt at the Rule 12 stage – and it did so.

Upcoming Webinar

Business Methods and Patent-Eligibility at the USPTO
September 22, 2017 at 12:00 pm EDT
During the webinar, Charles Bieneman will discuss recent trends and current practices with respect to patent-eligibility at the USPTO’s business methods arts units – including a looks at how some cases are surviving Section 101 rejections. Register

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