Fitbit, Inc. v. AliphCom (N.D. Cal. 2017)

by McDonnell Boehnen Hulbert & Berghoff LLP
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Software Patent Directed to Pairing Activity Trackers to a Device Considered Patent-Eligible

In the U.S. District Court for the Northern District of California (San Jose Division), Fitbit, Inc., sued Aliphcom (d/b/a Jawbone) for infringement of U.S. Patent Nos. 9,026,053; 9,106,307; and 9,048,923.  Jawbone filed a motion for judgment on the pleadings that the patents are invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101.  The Court denied the motion and found that the patents recite eligible subject matter because the claim limitations, when considered as an ordered combination, supply an inventive concept that transforms the abstract idea into patent eligible subject matter.

The patents relate to a specific approach to pairing a wireless device, such as a wearable activity tracker, to a "client" and/or "server."  All of the asserted patents share the same specification, and all 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."  Pairing begins when a user enters account login information (e.g., creates an account or logs into an existing account) in the client.  Next, the client sends a signal to the server to indicate that the pairing process has been triggered, and the server sends back a user interface or user data for use in the pairing process.  The client then wirelessly detects nearby monitoring device(s), requests response(s) from these device(s), and then sends those response(s) to the server.  The server then sends back the list of responsive device(s) that are eligible for pairing (because, for example, they are not already paired with another user account, they are compatible with the user's account, etc.).  The client then sends the eligible device(s) a request to pair.  These device(s) then cue the user, who "taps" the particular device they wish to pair.  The "tapped" device identifies itself to the client, and the client and server complete the pairing process.

The asserted independent claims generally follow this process.  For example, claim 1 of the '053 patent recites:

1.  A wireless communication method comprising:
    a first portable biometric device and a second device communicating wirelessly to initiate a pairing process between the first portable biometric device and the second device, wherein the first portable biometric device comprises, at least one sensor, and wireless communication circuitry in a unit suitable to be worn by a moving human device user, wherein initiating the pairing process comprises,
    the second device receiving user login information to log the user into a user account;
    the second device sending a signal to a server that indicates the start of the pairing process;
    the server sending a user interface for pairing to the second device;
    the second device wirelessly detecting the first biometric device, and requesting a response from the first biometric device;
    the second device receiving a response from the first biometric device, including a device identification;
    in response to the second device forwarding the received response to the server, the server sending a list of detected devices eligible for pairing to the second device; and
    when the first biometric device is on the list of detected devices, the second device sending a command to the first biometric device to enter pairing mode;
    the first portable biometric device generating a cue to the first portable biometric device user requesting the first portable biometric device user to validate the pairing between the first portable biometric device and the second device;
    the first portable biometric device receiving input from the user indicating the user's agreement to validate the pairing request, wherein input comprises tapping only the first portable biometric device one or more times anywhere on its exterior;
    the first portable biometric device detecting the tapping using a motion sensor;
    the first portable biometric device responding to the user input by remotely signaling the second device to complete the pairing process;
    the second device and the first portable biometric device remotely communicating to complete the pairing process, wherein the first portable biometric device and a second device are remote from each other throughout the pairing process, after which the first portable biometric device and the second device are able to recognize each other; and
    the first portable biometric device and the second device automatically communicating to wirelessly exchange data subsequent to pairing when the first portable biometric device and the second device are within wireless communication range;
    wherein data comprises sensor data collected and stored by the first portable biometric device.

The Court followed the two-step process to determine whether the claims satisfied section 101.  First, the court must determine whether the claims at issue are directed to a patent-ineligible concept.  Second, if the claims are directed to patent-ineligible subject matter, the Court must consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.

Step One

The Court noted that, to date, the Federal Circuit has provided two examples of software claims that are not directed to an abstract idea.  First, in Enfish, the Federal Circuit determined that claims directed to a specific type of self-referential table for a computer database were not abstract because they focused on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) instead of a process that qualifies as an abstract idea for which computers are invoked merely as a tool.  Second, in McRO, Inc. v. Bandai Namco Games Am. Inc., the Federal Circuit found that patents that automated part of a preexisting method for 3-D facial expression animation were not abstract because they focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type.

Jawbone argued that the asserted claims are directed to the abstract ideas of identifying and validating an electronic device through minimal user interaction, and as such, they focus on a fundamental building block of today's internet-based society -- wirelessly connecting two computerized devices to enable the exchange of data.

The Court found that Jawbone's characterization of the claims sweeps too broad, and the "character as a whole" of the claims is not directed to device pairing generally, but a specific flavor of portable device pairing, which is aware of user account information, relies on a "server" to regulate the list of eligible devices, and uses "tapping" as the means of user validation.  The Court highlighted the claims' use of (1) a server to identify eligible devices and (2) tapping to indicate user validation, which specifically improves portable monitoring device technology, as this overcomes the problem that portable monitoring devices are small and often do not have keyboards or buttons that could be used in a pairing process.

While device pairing, in its most basic form, constitutes an abstract idea according to the Court, the claims are more specific.  The claim features of a server and tapping confine the asserted claims to less than device pairing generally, and appear to provide an improvement to device pairing solutions that lack these steps.  But the Court found that the claims present a close call about how to characterize what the claims are directed to, and in such cases, an analysis of whether there are arguably concrete improvements in the recited computer technology could take place under step two.  Thus, the Court declined to decide whether the claims' particular variant of portable device pairing is an abstract idea, and assessed whether, even if it is, the concrete improvements they recite are inventive concepts under step two.

Step Two

In assessing step two, courts must consider the elements of each claim both individually and as an ordered combination and assess whether there are any additional features in the claims that constitute an inventive concept.

The Court found that none of the claim elements, assessed individually, provide an inventive concept.  The Court also found that the claims' relation to wearable activity tracker technology, in and of itself, does not make them patent-eligible.

But the Court found that the ordered combination of claim elements, interpreted in the light most favorable to Fitbit, contains inventive concepts.  First, the addition of tapping as the form of validation is an inventive concept.  As the background section of the patents highlights, one problem that confronted the process of pairing small, portable devices was that they were purposefully designed to eliminate keyboards and multiple buttons in order to satisfy other design criteria.  Tapping overcame this problem in an inventive way because it took advantage of the inherent, technical capabilities of the portable monitoring device -- its ability to detect motion with a motion sensor -- to provide a manner of validating the device that was different from traditional forms of input (i.e., buttons and keyboards).

Jawbone nevertheless contended that tapping cannot supply an inventive concept because it was known in the art.  The Court noted that this argument conflates patent eligibility with novelty, which are inquiries that, although they might sometimes overlap, are separate.  Thus, 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.  Adding in tapping to a portable device pairing process -- even if tapping was a known form of validation -- transforms a more abstract device pairing process into something specific:  a pairing process narrowly tailored to a certain class of devices, which enables them to be paired even though they lack buttons or keyboards.  In this sense, the Court determined that it "improves an existing technological process" by expanding the scope of devices that can be paired.

The Court found that the use of a server as a part of the claimed pairing process also supplies an inventive concept.  As the name suggests, the concept of pairing traditionally involves two devices:  the device that gets paired and the device it is paired with.  By injecting a third device -- a server -- into this process, the asserted claims shift this paradigm so that all of the information needed for pairing does not have to be provided through the two devices.  Instead, the server can also regulate and facilitate this process.  Thus, the server limitation also helps transform a more abstract device pairing process into "something more" because it narrows it to a specific, discrete implementation of this idea that specifically addresses needs in the particular field of portable device monitors.

In sum, both the use of tapping and the use of a server, when considered along with the rest of the claims as an ordered combination, supply an inventive concept that transforms the asserted claims into patent eligible subject matter under step two.  As a result, the Court concluded that the asserted claims are not patent-ineligible under 35 U.S.C. § 101 because they contain an inventive concept sufficient to transform these claims into patentable subject matter.

Order Denying Defendants' Motion for Judgment on the Pleadings by District Judge Edward J. Davila

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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