In the past two weeks, the ITC has made patent invalidity determinations in two Section 337 investigations, each of which is noteworthy in its own right.
In Certain Activity Tracking Devices, Systems, and Components Thereof, Inv. No. 337-TA-963, the Commission affirmed ALJ Lord’s summary determination that the asserted claims of two of the patents-in-suit are invalid because they are directed to ineligible subject matter under 35 U.S.C. § 101. Tracking Devices is a suit brought by Jawbone against Fitbit over the well-known activity monitoring devices. The patents found to be invalid are entitled “System for Monitoring and Managing Body Weight and Other Physiological Conditions Including Iterative and Personalized Planning, Intervention and Reporting Capability” and “General Health and Wellness Management Method and Apparatus for a Wellness Application Using Data from a Data-Capable Band.”
In Certain Beverage Brewing Capsules, Components Thereof, and Products Containing Same, Inv. No. 337-TA-929, the Commission issued an opinion finding that all of the patent claims asserted against the non-defaulting respondents were invalid. The products at issue were reusable beverage brewing capsules designed to replace the prior art cup-shaped cartridge (such as the Keurig “K-Cup”) with a reusable capsule version. Among the grounds for finding invalidity was the Commission’s holding, reversing the ALJ, that the claim phrase “a container . . . adapted to hold brewing material” failed for lack of written description under 35 U.S.C. § 112, first paragraph. According to the Commission opinion, the written description for this term was inadequate because the specification only described the invention narrowly as “a pod adaptor assembly.” Opinion at 29.
Both cases are significant for their findings of invalidity on grounds other than the more common bases of Section 102 (anticipation) or Section 103 (obviousness) and in their detailed recitation and application of the Federal Circuit cases dealing with patentability and written description. (In a somewhat unusual turn, the Brewing Capsules case’s written description ruling even prompted a dissent on the ground that the majority’s application of the Federal Circuit cases was inapt.) However, theTracking Devices case is especially significant as it is the first ITC ruling involving patentable subject matter under Section 101 since the Supreme Court’s seminal decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). It is also significant in that the Section 101 issue was resolved on a motion for summary determination (the ITC equivalent of summary judgment). Unlike district courts, the ITC does not typically dispose of cases on motions, and it is even rarer for the ITC to do so on a validity issue. Indeed, despite the deluge of Section 101 invalidity rulings by district court judges on motions since the Alice case, the ITC ALJs have not followed suit.
It remains to be seen if and how these rulings will be handled by the Federal Circuit in the event they are appealed.