On August 9, 2016, ALJ Thomas B. Pender issued the public version of Order No. 24 (dated July 19, 2016) in Certain Wearable Activity Tracking Devices, Systems, and Components Thereof (Inv. No. 337-TA-973), granting summary determination of invalidity and terminating the investigation in its entirety.
By way of background, this investigation is based on a November 2, 2015 complaint filed by Fitbit, Inc. alleging violation of Section 337 in the importation into the U.S. and sale of certain wearable activity tracking devices, systems, and components thereof that infringe one or more claims of U.S. Patent Nos. 8,920,332; 8,868,377; and 9,089,760. See our November 2, 2015 and December 3, 2015 posts for more details on the complaint and Notice of Investigation, respectively.
According to the Order, Respondents AliphCom d/b/a Jawbone and BodyMedia Inc. (collectively, “Jawbone”) filed a motion for summary determination of invalidity under 35 U.S.C. § 101 against all three asserted patents. The ‘332 patent relates to biometric monitoring devices which gather data regarding activities performed by the user or the user’s physiological state. The ‘377 patent relates to a portable activity monitoring device including a plurality of sensors to calculate the activity points corresponding to the physical activity of the user. The ‘760 patent relates to a system and method for encouraging physical activity using one or more motion sensors to monitor physical activity.
The ‘332 Patent
Jawbone asserted that the ‘332 patent is directed to the abstract idea of measuring a user’s heart rate when the heart rate monitor is in close proximity to the user (i.e., worn), and that this process could be carried out manually by a human using a watch. Jawbone also argued that the ‘332 patent claims do not include any inventive concept but merely use conventional, prior art computing devices and sensors. Fitbit argued that the ‘332 patent is directed to concrete, technological improvements and embodies an inventive concept. The Commission Investigative Staff (OUII) agreed with Fitbit that the ‘332 patent is directed to patent-eligible subject matter.
In the first step of the 35 U.S.C. § 101 analysis, ALJ Pender found that the claims of the ‘332 patent are directed to an abstract idea, merely automating human behaviour of turning off and on the heart rate function when the user wears or removes the device. According to the ALJ, “the mere automation or computerization of human behaviour is an abstract concept.” Having found the claims to embody an abstract idea, the ALJ moved to the next step of the analysis, determining whether or not the claims contain an inventive concept. ALJ Pender agreed with Jawbone, finding that each step of the claimed method is conventional or generic. As such, ALJ Pender determined that the ‘332 patent is invalid under 35 U.S.C. § 101.
The ‘377 Patent
Jawbone asserted that the claims of the ‘377 patent are directed to the abstract idea of calculating activity points, and that this process is conducted using generic computing and sensor equipment and well-known components. Fitbit opposed, arguing that the claims are directed to a specific, physical device with improved capabilities over prior art devices and directed to a solution overcoming a problem specifically arising in the realm of wearable fitness monitors. OUII agreed with Fitbit that the ‘377 patent is directed to patent-eligible subject matter.
According to the Order, the ALJ found that the claims of the ‘377 patent are directed to the abstract idea of calculating activity points. Furthermore, ALJ Pender also determined that the claims of the ‘377 patent do not contain an inventive concept, noting that each element of the claimed device is generic and conventional. As such, ALJ Pender determined that the ‘377patent is invalid under 35 U.S.C. § 101.
The ‘760 Patent
Jawbone asserted that the ‘760 patent is directed to the abstract concept of setting a threshold activity, a “familiar concept applied in many contexts.” Jawbone also argued that the asserted claims contain no inventive concept and simply implement the method using standard computer equipment and movement sensors. OUII agreed with Jawbone that the ‘760 patent is directed to patent-ineligible subject matter. Fitbit opposed, arguing that the ‘760 patent is directed to a specific device with a removable component that provides a specific improvement in the functionality of wearable fitness monitoring devices. Fitbit also argued that the ‘760 claims embody an inventive concept because they are directed to solving a technological problem unique to wearable fitness devices.
According to the Order, ALJ Pender found that the claims of the ‘760 patent are directed to the abstract idea of collecting information about a user’s physical activity based on thresholds stored in a computer memory, and the apparatus “merely performs functions that can be and have been performed by the human mind or by a human using pen and paper.” Moreover, the ALJ determined that the asserted claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible invention because the elements are generic and conventional. As such, ALJ Pender determined that the ‘760 patent is invalid under 35 U.S.C. § 101.
* * * * *
Accordingly, Jawbone’s summary determination motion was granted with respect to all three asserted patents, and the Investigation was terminated in its entirety.