Is a patent directed to electronic communications between computing devices patent eligible? As with many legal questions, the answer to this question is not black and white. In the recent Fitbit, Inc. v. Aliphcom decision, the district court for the Northern district of California held that claims in Fitbit’s patent directed to a specific approach to pairing a wireless device to client or server is patent eligible.
The Defendants, AliphCom d/b/a Jawbone and Bodymedia, Inc. (collectively referred to by the court as “Jawbone”), filed a motion for judgement on the pleadings arguing that the asserted patents were invalid for failure to claim patent-eligible subject matter. In considering the motion, the court applied the Alice/Mayo framework. This framework follows a two-step test that determines whether the claims at issue are directed to an abstract idea (step one). If the claims are so directed, then the court should determine whether there is an inventive concept that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the abstract idea itself (step two).
Step One of the Alice/Mayo Framework
Although there were multiple patents and claims at issue, the district court determined that claim 1 of the U.S. Patent No. 9,026,053 was representative of the other claims. Thus, the court focused its analysis on claim of the ’053 patent. Claim 1 of the ’053 patent is directed to a wireless communication method for pairing a portable biometric device with a second device using a server to assist with the pairing process.
The court began its analysis by considering the character of the claim as a whole. Jawbone argued that claim 1 focuses on a fundamental building block of the Internet, wirelessly connecting two computer devices together, and is thus an abstract idea. The court disagreed, and stated that Jawbone was overly broad in its characterization of the claim. In disagreeing with Jawbone, the court stated that the claim does not recite any process for connecting two devices, but instead recites a specific process for connecting devices. Thus, the court declared that the character of the claim as a whole was not directed to all variations of device pairing, but to a “specific flavor” of portable device pairing that relies on a “server” that is separate from the two devices to be paired and “tapping” as a means of user validation. In the context of the claim, tapping refers to a user tapping one or more times on the exterior of a device, such as a portable biometric device, to indicate the user’s agreement to validate a pairing request between the device and another device. This tapping may be detected by a motion sensor. Both parties agreed, and the court did not dispute, that device pairing in its most basic form is an abstract idea. Thus, the question raised by the court is whether the particular claimed “flavor” of device pairing is an abstract idea.
In attempting to answer this question, the court weighed two competing considerations. In a first consideration, the court noted that the claim appears to provide an improvement over previous device pairing solutions that lacked the insertion of a server and the use of tapping in the device pairing process. In a second, competing consideration, the court stated that the steps of the claim appear to be relatively simple and could be performed manually. Given these competing considerations, the court stated that determining whether the claim is directed to an abstract idea is a close call. The court therefore declined to make a ruling under step one of the Alice/Mayo framework and instead decided to assess the claim under step two of the framework.
Step Two of the Alice/Mayo Framework
In analyzing claim 1 under step two of the Alice/Mayo framework, the court focused on two aspects of the claim, the tapping and the server. Jawbone argued that the tapping cannot supply an inventive concept because it was known in the art. In dismissing Jawbone’s argument, the court stated that the argument conflates patent eligibility with novelty. Further, the court stated that “even if tapping was a known form of validation, this does not necessarily prevent it from having a transformative effect on an abstract idea and bringing it within the realm of patentable subject matter.”
In addition to dismissing Jawbone’s tapping-related argument as conflating patent eligibility with novelty, the court further agreed with Fitbit’s argument that the ordered combination of claim elements contains inventive concepts. However, the court did not explain how the ordered combination of elements results in an inventive concept. Instead, the court focused on two features of the claim that it considered to be inventive concepts.
First, the court held that the use of tapping as a form of validation is an inventive concept. Further, the court found that using tapping transformed an abstract pairing process to a narrowly tailored pairing process for a certain class of devices that enable the devices to be paired despite lacking buttons or keyboards. In the court’s view, the ability to pair devices despite buttons or keyboards expanded the scope of devices that can be paired and this expanded scope provides the “something more” required to satisfy step two of the Alice/Mayo framework.
Second, the court stated that using a server as part of the pairing process supplies an inventive concept because it adds a third device into a process the court deemed as normally occurring between a pair of devices. The court viewed favorably the statement in the patent specification that using the server minimizes “the amount of user interaction and input required in the pairing process” because the server can automatically provide eligibility information that a user might normally be required to provide. The court held that the server limitation also transforms an abstract device pairing process into “something more.”
Based on Fitbit, it may be beneficial for the patent owner to identify the inventive concepts of a claim when defending the patent eligibility of the claim. Demonstrating how specific features of the claim are used in a unique environment, like the “tapping” concept of the ’053 patent, or highlighting an atypical element in a system, like the inclusion of a third system in a pairing process, may help convince a court of the patent eligibility of a claim. Conversely, when attempting to invalidate a claim, it may be beneficial to demonstrate that the context of the alleged invention does not transform a claim element into an inventive concept.