Fitbit patents that provide a method or system for pairing a wireless device, such as a wearable activity tracker, to a client and/or server through tapping, when considered as an ordered combination with the rest of the claims, supply an inventive concept that transforms the asserted claims into patent-eligible subject matter under second step of Alice, the federal district court in San Jose, California, has ruled. As a result, the court concluded that the asserted claims are not patent-ineligible under Sec. 101 of the Patent Act because they contain an inventive concept sufficient to transform them into patentable subject matter. The court denied defendant Jawbone’s motion for judgment on the pleadings (Fitbit, Inc. v. AliphCom, et al, February 9, 2017, Davila, E).
Both Fitbit and AliphCom, d/b/a Jawbone and Bodymedia, Inc. (Jawbone), are health and fitness companies that sell wearable activity trackers that track a user’s activities, such as steps, length of sleep, or calories burned, throughout the day. The devices can be connected to a user’s computer or smartphone, where they can upload the data they collect, which the user can view through an application or website and analyze it for trends, set or track progress on fitness goals, and share on social media. For the data to be seamlessly transmitted between the device and the smartphone, the devices are often paired to the user’s smartphone or computer before first use. Fitbit’s asserted patents relate to a specific approach to pairing a wireless device, such as a wearable activity tracker, to a client and/or a server. All three patents at issue—U.S. Patent Nos. 9,036,053 (the ‘053 patent), 9,106,307 (the ‘307 patent), and 9,048,923 (the ‘923 patent)—are entitled "System and Method for Wireless Device Pairing" and share the same specifications and recite a method or system for pairing that involves three discrete entities: a portable monitoring device, a client, and a server.
Defendant Jawbone sought a motion for judgment on the pleadings that the Fitbit patents are invalid for failure to claim patent-eligible subject matter under Sec. 101 of the Patent Act. Because none of the asserted claims warrant a materially different analysis or result, the court considered them collectively. The court then analyzed whether the asserted claims passed muster under the Supreme Court’s two-part Alice test. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014).
Abstract idea. Jawbone argued that the claims at issue are directed to a patent-eligible abstract idea, under the first step of Alice, because they identified and validated an electronic device through minimal user interaction, and therefore focused on a fundamental building block of today’s Internet-based society: wirelessly connecting two computerized devices to enable the exchange of data. According to Jawbone, the claims merely recite the routine interactions of computing devices connecting to each other through the ubiquitous medium of wireless communication, and many of the claim elements fall within information processing and notification features that had already been declared abstract.
Fitbit disagreed, arguing that the claims are directed to a narrow improvement in device pairing that is specific to portable monitoring devices. In particular, Fitbit argued that the claims’ use of a "server" to identify eligible devices and "tapping" to indicate user validation improves technology by overcoming the problem of small devices that lack keyboards or buttons for pairing. Fitbit also suggested that the fact that the claims are directed to device pairing should alone be sufficient to take them out of the realm of the abstract, inasmuch as pairing is a technological process.
According to the court, Jawbone’s characterization of the claims sweeps too broad. The claims do not recite any process for connecting two devices but a specific one that requires at least 11 steps. The court’s claim construction also created physical boundaries for some of the terms, such as "server," "tapping," and "client device." Thus, the character of the claims as a whole is not directed to device pairing generally, the court observed, but has 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 question then becomes whether this particular "flavor" of device pairing is an abstract idea. The parties do not seem to dispute that device pairing, in its most basic form, constitutes an abstract idea; nor could they do so, as establishing a dedicated line of communication between two points is properly precluded from patent protection. Whether this is also true of the "flavor" of pairing in the asserted claims, however, is a closer question, said the court. The steps of the asserted claims are all relatively simple actions that could be performed manually, and their description is largely functional.
Because the claims present a close call about how to characterize what they are directed to (where the claims are not unambiguously directed to an improvement in computer capabilities), an analysis of whether there are arguably concrete improvements in the recited computer technology could take place under step two. Accordingly, the court declined to decide whether the claims’ particular variant of portable device pairing is an abstract idea and proceeded to assess whether, even if it is, the concrete improvements they recite are inventive concepts under step two.
Inventive concept. When the elements of each claim were considered both individually and as an ordered combination, Jawbone argued, no additional features constituted an inventive concept because the asserted claims are comprised of elements—such as transferring information over Bluetooth, connecting to the Internet, mobile devices, servers, and clients—that are generic and well-known in the art. Jawbone maintained that the claims are not confined to applications in wearable activity tracker technology, but even if they were, that did not save them under step two because limiting claims to a certain technical environment does not make them patentable. Jawbone further argued that there is nothing inventive about the claims as an ordered combination because nothing is nonconventional or nongeneric about how the claim elements are arranged, and because nothing they recite constitutes a specific improvement to portable device technology.
Fitbit disagreed, asserting that the use of a server to identify eligible devices and the use of tapping, detected by a motion sensor to validate a pairing, are unconventional elements that supply an inventive concept. Fitbit also argued that the ordered combination of claim elements also supplies an inventive concept because it recites a specific, detailed, nonconventional sequence of steps that "far from preempt" the entire field. Fitbit further contended that an inventive concept can be found in the fact that the claims improved the existing technological process of portable device pairing by addressing issues relating to security—setting forth a reliable pairing mechanism that ensures that a user’s biometric data is not paired to the wrong device—without compromising design constraints.
Weighing the parties’ arguments against the asserted claims and appropriate context, the court agreed with Jawbone that none of the claim elements, assessed individually, provide an inventive concept. Even under the court’s construction, the server, client, and portable monitoring devices are, in broad terms, generic and conventional components, none of which are inventive. The various steps of transmitting or receiving information and how they are accomplished are also generic because the claims recite these steps only functionally and require no inventive algorithm or data structure for performing them. The court also agreed with Jawbone that the claims’ relation to wearable tracking technology, in and of itself, does not make them patent-eligible.
Nonetheless, the court agreed with Fitbit 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. The court rejected Jawbone’s contention that tapping cannot supply an inventive concept because it was known in the art as conflating patent eligibility with novelty, which are inquiries that are separate, even though they could might sometimes overlap. 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 tapping to a portable device pairing transforms a more abstract "device pairing" process into something specific, the court explained, 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, said the court, it improves an existing technological process by expanding the scope of devices that can be paired. For those reasons, tapping transforms the asserted claims into something more than just an abstract device pairing process. Accordingly, the fact that tapping appears in the prior art does not prevent it from supplying an inventive concept in this case.
Second, the use of a server as part of the claimed pairing process 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 regulate and facilitate the process, which helps accomplish the goal of minimizing the amount of user interaction and input required in the pairing process. Accordingly, when viewed in the light most favorable to Fitbit, the server limitation also helps transform a more abstract device-pairing process into something more, in the court’s view, because it narrows it to a specific, discrete implementation of this idea, which specifically addresses needs in the particular field of portable device monitors.
Thus, 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 Sec. 101 of the Patent Act because they contain an inventive concept that is sufficient to transform them into patentable subject matter.
The case is No. 15-cv-04073-EJD.
Attorneys: Alison Roberta Watkins (Gibson, Dunn & Crutcher) for Fitbit, Inc. Kalpana Srinivasan (Susman Godfrey LLP) for Aliphcom, d/b/a Jawbone and Bodymedia, Inc.
Companies: Fitbit, Inc.; Aliphcom, d/b/a Jawbone and Bodymedia, Inc.
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