Cellspin Soft, Inc. v. Fitbit, Inc.

Filing 156

ORDER REGARDING DEFENDANTS MOTION FOR SUMMARY JUDGMENT. Chart and Statement filed by 12/22/2020. The hearing scheduled for December 15, 2020 regarding defendants motion for summary judgment, plaintiffs motion to strike, and defendant Garmins motion to amend invalidity contentions is VACATED. The Court will reset the hearing date at a later date. Signed by Judge Yvonne Gonzalez Rogers on 12/10/2020. (fs, COURT STAFF) (Filed on 12/10/2020)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND DIVISION

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CELLSPIN SOFT, INC.,

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v.

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v.

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v.

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Dkt. Nos. 128, 131

Defendant.
v.

Case No. 17-cv-05932-YGR

UNDER ARMOUR, INC.,

Dkt. Nos. 110, 113

Defendant.
v.

Case No. 17-cv-05933-YGR

FOSSIL GROUP, INC., ET AL.,

Dkt. Nos. 193, 199

Defendants.
v.

Case No. 17-cv-05934-YGR

GARMIN INTERNATIONAL, INC., ET AL.,

Dkt. Nos. 130, 133, 134

Defendants.

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Case No. 17-cv-05931-YGR

NIKE, INC.,

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Dkt. Nos. 130, 133

Defendant.

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Case No. 17-cv-05929-YGR

MOOV, INC.,

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Dkt. Nos. 148, 151

Defendant.

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Case No. 17-cv-05928-YGR

FITBIT, INC.,

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ORDER REGARDING DEFENDANTS’ MOTION FOR
SUMMARY JUDGMENT

Plaintiff,

v.
Case No. 17-cv-05936-YGR
NIKON AMERICAS, INC., ET AL.,

Dkt. Nos. 127, 130

Defendants.

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Defendants have filed a motion for summary challenging the validity of the asserted patents under 35

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U.S.C. § 101. Plaintiff opposes by identifying 55 inventive concepts in the 21 asserted claims. The Court

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has reviewed the alleged inventive concepts and finds them insufficiently tied to the claims.1 Accordingly,

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the parties are ORDERED to (1) submit a chart linking each alleged inventive concept to the asserted claims,

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in the format illustrated below, and (2) identify representative claims that the Court may evaluate.

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Alleged Inventive
Concept

Relevant Claims

Relevant Limitation or
Combination of
Limitations
“acquiring new data in the
Bluetooth enabled data
captured device” . . .

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Capturing and publishing Claim 1 of the ’794
data using different
Patent, etc.
devices

“transferring the new data
received by the Bluetooth
enabled mobile device . .
.to the one or more web
services”
“establishing a paired
connection between the
Bluetooth enabled data
capture device and the
Bluetooth enabled mobile
device” . . .

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The ordered combination
of establishing a pair
connection before
sending data

Claim 1 of the ’794
Patent, etc.

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Representative
Claim
Claim 1 of the ’794
Patent

Claim 1 of the ’794
Patent

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“acquiring new data in the
Bluetooth enabled data
capture device”

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A claim is representative if “the patentee does not present any meaningful argument for the
distinctive significance of any claim limitation not found in the representative claim or if the parties agree to
treat a claim is representative.” Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018). Thus, the
parties shall endeavor to agree, and if they cannot agree, plaintiff shall identify a meaningful argument, with

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Although the Court has previously found claim 1 of the ’794 Patent representative of all asserted
claims, that is plainly no longer the case. For example, the parties agree that use of HTTP is an alleged
inventive concept, but claim 1 of the ’794 Patent does not mention HTTP. A section 101 analysis divorced
from the claims is improper. See Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285, 1293
(Fed. Cir. 2020) (“[F]eatures that are not claimed are irrelevant as to step 1 or step 2.”).
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citation to its opposition brief, that a limitation that presents a distinctive significance to the section 101

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analysis. Alternatively, the parties may identify representative claims for each alleged inventive concept

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while noting that claims generally overlap in those concepts.

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The chart should be kept as short as possible. Minor differences in claim language should not be

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noted; language from the representative claim should be used instead. Failure to include an alleged

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inventive concept in the chart shall be deemed waiver of arguments related to that concept. The parties shall

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file the chart and any statement regarding representative claims by December 22, 2020.

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The hearing scheduled for December 15, 2020 regarding defendants’ motion for summary judgment,
plaintiff’s motion to strike, and defendant Garmin’s motion to amend invalidity contentions is VACATED.
The Court will reset the hearing date at a later date.

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IT IS SO ORDERED.

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Dated: December 10, 2020

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______________________________________
YVONNE GONZALEZ ROGERS
UNITED STATES DISTRICT COURT JUDGE

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