Fitbit, Inc. v. AliphCom et al

Filing 122

ORDER DENYING 88 DEFENDANTS' MOTION FOR JUDGMENT ON THE PLEADINGS. Signed by Judge Edward J. Davila on 2/9/2017. (patentlcsjS, COURT STAFF) (Filed on 2/9/2017)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6

SAN JOSE DIVISION

7
8

FITBIT, INC.,

Case No. 15-cv-04073-EJD
Plaintiff,

9

ORDER DENYING DEFENDANTS'
MOTION FOR JUDGMENT ON THE
PLEADINGS

v.
10
11

ALIPHCOM, et al.,

Re: Dkt. No. 88

United States District Court
Northern District of California

Defendants.
12
13
Presently before the Court is Defendants AliphCom d/b/a Jawbone and Bodymedia, Inc.’s

14
15

(collectively “Defendants” or “Jawbone”) motion for judgment on the pleadings that U.S. Patent

16

Nos. 9,026,053 (the “’053 patent”), 9,106,307 (the “’307 patent”), and 9,048,923 (the “’923

17

patent”) (collectively, the “patents-in-suit”) are invalid for failure to claim patent-eligible subject

18

matter under 35 U.S.C. § 101. Dkt. No. 88. For the reasons discussed below, the Court DENIES

19

Jawbone’s motion.

20
21

I.

BACKGROUND
The parties are health and fitness companies that both sell wearable activity trackers. In

22

general, wearable activity trackers are small, lightweight devices that track a user’s activities

23

throughout the day, such as how many steps the user takes, how long the user sleeps, and how

24

many calories the user has burned. The devices can then be connected to a user’s computer or

25

smartphone, where they upload the data they collect. The user can then view this data through an

26

application or website, and analyze it for trends, set or track progress on fitness goals, and share

27

their activities with friends through social networking.

28

1
Case No.: 15-cv-04073-EJD
ORDER DENYING DEFENDANTS’ MOTION FOR JUDGMENT ON THE PLEADINGS

1

In order for data to be seamlessly transmitted between the device and the smartphone, the

2

devices are often “paired” to the user’s smartphone or computer before first use. Pairing sets up a

3

unique system of contact between the device and the smartphone or computer such that the two

4

can automatically synchronize data whenever they are connected, without requiring intervention

5

from the user. For example, a Bluetooth-enabled device that is paired to a Bluetooth-enabled

6

smartphone will automatically upload data whenever it comes within range of the smartphone.
Fitbit’s asserted patents relate to a specific approach to pairing a wireless device, such as a

8

wearable activity tracker, to a “client” and/or “server.” All three patents are entitled “System and

9

Method for Wireless Device Pairing” and share the same specification. The ’053 patent was filed

10

first, on February 17, 2013, and the ’923 and ’307 patents were filed as divisional applications on

11

United States District Court
Northern District of California

7

December 24, 2013 and March 27, 2014, respectively. The ’053 patent issued on May 5, 2015,

12

the ’923 patent issued on June 2, 2015, and the ’307 patent issued on August 11, 2015.

13

All of the asserted claims recite a method or system for pairing that involves three discrete

14

entities: a portable monitoring device, a “client,” and a “server.” ’053 patent, col. 14 l. 63-col. 16

15

l. 4; ’923 patent, col. 15 ll. 2-49; ’307 patent, col. 15 ll. 2-47, col. 17 l. 30-col. 18 l. 16. Figure 1

16

illustrates the interaction between these three actors:

17
18
19
20
21
22
23
24
25
26
27
28
2

1

Figures 13 and 14 illustrate the pairing process:

2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22

This process begins when a user enters account login information (e.g., creates an account or logs

23

into an existing account) in the client. ’053 patent, col. 9 l. 65-col. 10 l. 54, figs. 13, 14. Next, the

24

client sends a signal to the server to indicate that the pairing process has been triggered, and the

25

server sends back a user interface or user data for use in the pairing process. Id. The client then

26

wirelessly detects nearby monitoring device(s), requests response(s) from these device(s), and then

27

sends those response(s) to the server. Id. The server then sends back the list of responsive

28

device(s) that are eligible for pairing (because, for example, they are not already paired with
3

1

another user account, they are compatible with the user’s account, etc.). Id. The client then sends

2

the eligible device(s) a request to pair. Id. These device(s) then cue the user, who “taps” the

3

particular device they wish to pair. Id. The “tapped” device identifies itself to the client, and the

4

client and server complete the pairing process. Id.

5
6

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

7

1. A wireless communication method comprising:

8

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;

9
10

United States District Court
Northern District of California

11
12
13

the second device sending a signal to a server that indicates the start
of the pairing process;

14

the server sending a user interface for pairing to the second device;

15

the second device wirelessly detecting the first biometric device, and
requesting a response from the first biometric device;

16
17
18
19
20
21
22
23
24
25
26
27
28

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;
4

the first portable biometric device responding to the user input by
remotely signaling the second device to complete the pairing process;

1
2

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

3
4
5

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;

6
7
8
9

wherein data comprises sensor data collected and stored by the first
portable biometric device
’053 patent, col. 14 l. 63-col. 16 l. 5.

10

United States District Court
Northern District of California

11
12
13
14

II.

LEGAL STANDARDS
A.

Motion for Judgment on the Pleadings

Federal Rule of Civil Procedure 12(c) provides that “[a]fter the pleadings are closed—but
early enough not to delay trial—a party may move for judgment on the pleadings.” A Rule 12(c)
motion challenges the legal sufficiency of the opposing party’s pleadings. Judgment on the

15
pleadings is appropriate when, even if all material facts in the pleading under attack are true, the
16
moving party is entitled to judgment as a matter of law. Fleming v. Pickard, 581 F.3d 922, 925
17
(9th Cir. 2009).
18
19
20
21
22
23
24

On a motion for judgment on the pleadings, “all material allegations in the complaint are
accepted as true and construed in the light most favorable to the non-moving party.” Turner v.
Cook, 362 F.3d 1219, 1225 (9th Cir. 2004). “[A]ll reasonable inferences” must be made “in favor
of the nonmoving party.” Mediran v. International Ass’n of Machinists and Aerospace Workers,
No. C09–0538 TEH, 2011 WL 2746601, at *2 (N.D. Cal. July 14, 2011). “When considering a
motion for judgment on the pleadings, this court may consider facts that ‘are contained in
materials of which the court may take judicial notice.’” Heliotrope General, Inc. v. Ford Motor

25
Co., 189 F.3d 971, 981, n .18 (9th Cir. 1999) (citation omitted). A motion for judgment on the
26
pleadings may be granted if, after assessing the complaint and matters for which judicial notice is
27

proper, it appears “beyond doubt that the [non-moving party] cannot prove any facts that would

28
5

1

support his claim for relief.” Morgan v. County of Yolo, 436 F.Supp.2d 1152, 1155 (E.D. Cal.

2

2006). In other words, the standard for a Rule 12(c) motion is essentially the same as that for a

3

Rule 12(b)(6) motion. Chavez v. United States, 683 F.3d 1102, 1108 (9th Cir. 2012).

4
5
6

B.

Patent Eligibility Under § 101
i.

The Mayo/Alice Framework

35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process,

7

machine, or composition of matter, or any new and useful improvement thereof, may obtain a

8

patent therefor, subject to the conditions and requirements of this title.” However, the Supreme

9

Court has recognized that these broad categories contain an implicit exception: “[l]aws of nature,
natural phenomena, and abstract ideas are not patentable.” Ass’n for Molecular Pathology v.

11

United States District Court
Northern District of California

10

Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 186 L. Ed. 2d 124 (2013) (internal quotation marks

12

and citation omitted).

13

To determine whether a claim falls outside this exception, the Supreme Court has

14

established a two-step framework: First, the court must “determine whether the claims at issue are

15

directed to a patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, ––– U.S. ––––,

16

134 S. Ct. 2347, 2355, 189 L. Ed. 2d 296 (2014). Second, if the claims are directed to patent-

17

ineligible subject matter, the Court must “consider the elements of each claim both individually

18

and ‘as an ordered combination’ to determine whether the additional elements ‘transform the

19

nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v.

20

Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1298, 1297, 182 L. Ed. 2d 321 (2012)). The

21

Supreme Court has described this as a “search for an ‘inventive concept’—i.e., an element or

22

combination of elements that is ‘sufficient to ensure that the patent in practice amounts to

23

significantly more than a patent upon the [ineligible concept] itself.’” Id.

24

ii.

Step One

25

In evaluating step one, “the ‘directed to’ inquiry applies a stage-one filter to claims,

26

considered in light of the specification, based on whether ‘their character as a whole is directed to

27

excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)

28

(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
6

1

The Federal Circuit has also described this inquiry as an evaluation of the “focus” or “basic thrust”

2

of the claims. See Enfish, 822 F.3d at 1335-36; BASCOM Glob. Internet Servs., Inc. v. AT&T

3

Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). The Federal Circuit has recognized that this

4

process sometimes involves “close calls about how to characterize what the claims are directed

5

to.” BASCOM, 827 F.3d at 1349. Courts must tow the fine line between assessing a claim’s

6

“character as a whole” and “describing the claims at such a high level of abstraction and

7

untethered from the language of the claims [such that it] all but ensures that the exceptions to §

8

101 swallow the rule.” Enfish, 822 F.3d at 1335, 1337.

9

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

11

United States District Court
Northern District of California

10

a specific type of self-referential table for a computer database were not abstract because they

12

focused “on the specific asserted improvement in computer capabilities (i.e., the self-referential

13

table for a computer database)” instead of “a process that qualifies as an ‘abstract idea’ for which

14

computers are invoked merely as a tool,” they were not directed to an abstract idea. Id. at 1335-

15

36, 1339. Second, in McRO, Inc. v. Bandai Namco Games Am. Inc., the Federal Circuit found that

16

patents that automated part of a preexisting method for 3-D facial expression animation were not

17

abstract because they “focused on a specific asserted improvement in computer animation, i.e., the

18

automatic use of rules of a particular type.” 837 F.3d 1299, 1314 (Fed. Cir. 2016).

19

However, not all claims relating to computer technologies are not abstract. Where the

20

focus of the claims is on “certain independently abstract ideas that use computers as tools” instead

21

of “an improvement in computers as tools,” claims may fail step one. See, e.g., Affinity Labs of

22

Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (claims relating to

23

“deliver[ing] content to a handheld wireless electronic device” were directed to an abstract idea

24

because they claimed “the general concept of out-of-region delivery of broadcast content through

25

the use of conventional devices, without offering any technological means of effecting that

26

concept”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1140, 1149 (Fed. Cir. 2016)

27

(claims related to logic circuit design in computer hardware were “drawn to the abstract idea of:

28

translating a functional description of a logic circuit into a hardware component description of the
7

1

logic circuit” because “they are so broad as to read on an individual performing the claimed steps

2

mentally or with pencil and paper”); Tranxition, Inc. v. Lenovo (United States) Inc., No. 2015-

3

1907, 2016 WL 6775967, at *3 (Fed. Cir. Nov. 16, 2016) (claims relating to migration of

4

computer settings were directed to an abstract idea because “manual migration is an abstract idea”

5

and the claims merely “automate[d] the migration of data between two computers”). Restricting

6

older, abstract ideas to certain technological environments also does not make them not abstract.

7

See, e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016)

8

(observing that ineligible claims “merely implement an old practice in a new environment”).

9

Thus, non-abstract claims that “improve the functioning of the computer itself,” Alice, 134 S. Ct.
at 2359, or are otherwise “directed to an improvement of an existing technology,” Enfish, 822 F.3d

11

United States District Court
Northern District of California

10

at 1337, such as those in Enfish and McRO, remain a narrow class.

12
13

iii.

Step Two

In assessing step two, courts must “consider the elements of each claim both individually

14

and ‘as an ordered combination’” and assess whether there are any “additional features” in the

15

claims that constitute an “inventive concept.” Alice, 134 S. Ct. at 2357. This inventive concept

16

“must be significantly more than the abstract idea itself,” BASCOM, 827 F.3d at 1349, “must be

17

more than well-understood, routine, conventional activity,” DIRECTV, 838 F.3d at 1262, “and

18

cannot simply be an instruction to implement or apply the abstract idea on a computer.”

19

BASCOM, 827 F.3d at 1349. For example, it may be found in an “inventive set of components or

20

methods,” “inventive programming,” or an inventive approach in “how the desired result is

21

achieved.” Elec. Power Grp., 830 F.3d at 1355.

22

The Federal Circuit has found an inventive concept in several cases. First, in DDR

23

Holdings, LLC v. Hotels.com, L.P., the Federal Circuit found that claims that addressed the

24

“Internet-centric problem” of third-party merchant advertisements that would “lure . . . visitor

25

traffic away” from a host website (because clicking on the advertisement would redirect the visitor

26

to the merchant’s website) amounted to an inventive concept. 773 F.3d 1245, 1248, 1259 (Fed.

27

Cir. 2014). This was so, the Federal Circuit reasoned, because the claims “specify how

28

interactions with the Internet are manipulated to yield a desired result” such that the interactions
8

1

are “not merely the routine or conventional use of the Internet.” Id. at 1259. Second, in

2

BASCOM, the Federal Circuit found that the claims directed to Internet content filtering recited the

3

inventive concept of “install[ing] a filtering tool at a specific location, remote from the end-users,

4

with customizable filtering features specific to each end user.” 827 F.3d at 1350. The court

5

reasoned that “an inventive concept can be found in the non-conventional and non-generic

6

arrangement of known, conventional pieces.” Id. The court found this to be the case there

7

because the patents claimed a specific type of content filtering that took advantage of an ISP

8

server’s ability to associate internet requests with user accounts. Id. Third, in Amdocs (Israel)

9

Ltd. v. Openet Telecom, Inc., the Federal Circuit found that claims relating to solutions for
managing accounting and billing data over large, disparate networks recited an inventive concept

11

United States District Court
Northern District of California

10

because they contained “specific enhancing limitation[s] that necessarily incorporates the

12

invention’s distributed architecture—an architecture providing a technological solution to a

13

technological problem.” 841 F.3d 1288, 1301 (Fed. Cir. 2016). Use of this “distributed

14

architecture” transformed the claims into patentable subject matter. Id.

15

Nevertheless, not all technological aspects of how a patented invention is implemented

16

supply a basis for finding an “inventive concept.” A claim that simply takes an abstract idea and

17

adds “the requirement to perform it on the Internet, or to perform it on a set of generic computer

18

components . . . would not contain an inventive concept.” BASCOM, 827 F.3d at 1350. For

19

example, in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, the Federal

20

Circuit found that claims directed to the abstract ideas of extracting data and recognizing patterns

21

did not recite an inventive concept because they simply recited “generic scanner and computer to

22

perform well-understood, routine, and conventional activities commonly used in industry.” 776

23

F.3d 1343, 1348 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119, 193 L. Ed. 2d 208 (2015).

24

Similarly, in DIRECTV, the court found there was no inventive concept because “[t]he claim

25

simply recites the use of generic features of cellular telephones, such as a storage medium and a

26

graphical user interface, as well as routine functions, such as transmitting and receiving signals, to

27

implement the underlying idea.” 838 F.3d at 1262. Limiting the field of use to a particular

28

technological environment also does not supply an inventive concept. Alice, 134 S. Ct. at 2358
9

1

(noting that, under step two, “limiting the use of an abstract idea ‘to a particular technological

2

environment’” “is not enough for patent eligibility”). For example, in buySAFE, Inc. v. Google,

3

Inc., the Federal Circuit found that patent-ineligible claims relating to transaction guarantees could

4

not be saved from ineligibility because they were restricted to online transactions, as “[a]t best,

5

that narrowing is an ‘attempt[] to limit the use’ of the abstract guarantee idea ‘to a particular

6

technological environment,’ which has long been held insufficient to save a claim in this context.”

7

765 F.3d 1350, 1355 (Fed. Cir. 2014). Accordingly, the search for an inventive concept remains

8

one that court must approach cautiously, “scrutiniz[ing] the claim elements more microscopically”

9

than in step one. Elec. Power Grp., 830 F.3d at 1354.

10

United States District Court
Northern District of California

11

iv.

Preemption

In addition to these principles, several other considerations may be helpful in conducting a

12

§ 101 analysis: First, the Supreme Court has recognized that the “concern that undergirds [the]

13

§ 101 jurisprudence” is preemption. Alice, 134 S. Ct. at 2358. If a claim is so abstract so as to

14

“pre-empt use of [the claimed] approach in all fields, and would effectively grant a monopoly over

15

an abstract idea” is not patent-eligible. Bilski v. Kappos, 561 U.S. 593, 612, 130 S. Ct. 3218,

16

3231, 177 L. Ed. 2d 792 (2010). However, the inverse is not true: “[w]hile preemption may signal

17

patent ineligible subject matter, the absence of complete preemption does not demonstrate patent

18

eligibility.” Fairwarning IP, 839 F.3d at 1098 (internal quotation marks and citation omitted).

19

Second (and relatedly), “claims that are ‘so result-focused, so functional, as to effectively

20

cover any solution to an identified problem’ are frequently held ineligible under section 101.”

21

DIRECTV, 838 F.3d at 1265. For example, in Elec. Power Grp., the Federal Circuit found that

22

claims directed to “any way of effectively monitoring multiple sources on a power grid” instead of

23

“some specific way of enabling a computer to monitor data from multiple sources across an

24

electric power grid” did not contain an inventive concept. 830 F.3d at 1356. The Federal Circuit

25

has noted that this framework “is one helpful way of double-checking the application of the

26

Supreme Court's framework to particular claims—specifically, when determining whether the

27

claims meet the requirement of an inventive concept in application.” Id.

28
10

1
2
3

III.

DISCUSSION
Fitbit currently asserts claims 1, 2, and 5-9 of the ’053 patent, claims 1-3 and 16-19 of the

’307 patent, and claims 1, 2, 7-10, and 13 of the ’923 patent (collectively, the “asserted claims”).
With minor differences, the asserted claims of all three patents are similar in substance.1 As a

4
result, none of the asserted claims warrant a materially different analysis or result, so the Court
5
will consider them collectively.
6
A.

7
8

Step One
At step one of the Mayo/Alice framework, the Court must “determine whether the claims at

issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at

9
2355. Jawbone argues that such is the case here because the asserted claims are directed to the
10

United States District Court
Northern District of California

11
12
13

abstract ideas of “identifying and validating an electronic device” through “minimal user
interaction.” Mot. 15, Dkt. No. 88 (quoting ’923 patent, col. 2 ll. 20-21). 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.” Id. at 16. Jawbone contends that nothing

14
in the claims makes them less abstract than this, as they merely recite the routine interactions of
15

computing devices connecting to each other, accomplished through the “ubiquitous” medium of

16
wireless communication. Id. at 17. Jawbone also points out that many of the claim elements fall
17
within information processing and notification features that the Federal Circuit has already
18
declared abstract. Id. at 18-19. Jawbone further argues that the claimed technology is effectively
19
the Bluetooth protocol, and accordingly invokes the same preemption concerns that underlie the
20
prohibition against patenting other abstract ideas. Id. at 17.
21
Fitbit disagrees, arguing that the claims are directed to a narrow improvement in device
22
pairing that is specific to portable monitoring devices. Opp. 14, Dkt. No. 105. In particular, Fitbit
23

argues that the claims’ use of (1) a server to identify eligible devices and (2) tapping to indicate

24
user validation specifically improves portable monitoring device technology, as this overcomes
25
26
27
28

The parties do not appear to disagree, as Jawbone argues that the ’053 and ’307 patents are
ineligible for the same or similar reasons which it set forth for the ’923 patent. See Mot. 22-25,
Dkt. No. 88. Moreover, Fitbit, the patentee, addressed the asserted claims collectively in its
briefing and has not asserted that any of the asserted claims requires a separate eligibility analysis.
See Opp. 14-18, Dkt. No. 105.
11
1

1

the problem that portable monitoring devices are small and often do not have keyboards or buttons

2

that could be used in a pairing process. Id. at 15-16. Fitbit also suggests that the fact that the

3

claims are directed to device pairing should alone be sufficient to take them out of the realm of the

4

abstract, as pairing is a “technological process.” Id. at 14.

5

In reply, Jawbone argues that neither the server nor tapping saves the claims under step

6

one, as the server is a generic computer component, tapping as validation was known in the art,

7

and Fitbit has proposed broad constructions for both that would allow these limitations to

8

encompass almost anything. Reply 2-5, Dkt. No. 108.
The Court begins its analysis by considering what the “character as a whole” of the claims

9

is “directed to.” Internet Patents, 790 F.3d at 1346. Although the “directed to” inquiry is a

11

United States District Court
Northern District of California

10

“stage-one filter,” the Federal Circuit has cautioned against “describing the claims at such a high

12

level of abstraction and untethered from the language of the claims” such that it “all but ensures

13

that the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at 1337. After all, any

14

generalized view of a claim would, “if carried to its extreme, make all inventions unpatentable

15

because all inventions can be reduced to underlying principles of nature which, once known, make

16

their implementation obvious.” Diamond v. Diehr, 450 U.S. 175, 189 n.12, 101 S. Ct. 1048, 67 L.

17

Ed. 2d 155 (1981). As such, the Federal Circuit “sometimes incorporates claim limitations into its

18

articulation of the idea to which a claim is directed.” BASCOM, 827 F.3d at 1349.

19

Applying these principles here, Jawbone’s characterization of the claims sweeps too broad.

20

The claims do not recite any process for connecting two devices, but a specific one, which at least

21

requires: (1) a “client”2 receiving user login information to log a user into an account; (2) the

22

“client” sending a signal to a “server” to indicate the start of a pairing process; (3) the “server”

23

sending back a user interface or data; (4) the “client” detecting portable monitoring device(s) and

24
25
26
27
28

For simplicity, the Court will refer to the “second device” in claims 1, 2, and 5-9 of the ’053
patent, the “first device” in claims 1, 2, 7-10, and 13 of the ’923 patent, the “other device” in
claims 1-3 of the ’307 patent, and the “client device” in claims 16-19 of the ’307 patent as the
“client.” The Court will refer to the “first [portable] biometric device” in claims 1, 2, and 5-9 of
the ’053 patent, the “second device” in claims 1, 2, 7-10, and 13 of the ’923 patent, the “portable
monitoring device” in claims 1-3 of the ’307 patent, the “personal monitoring device” in claims
16-19 of the ’307 patent, and the “first biometric device” in claims 16-19 of the ’307 patent as the
“portable monitoring device.”
12
2

1

requesting response(s) from the portable devices; (5) the “client” forwarding the response(s) to a

2

server; (6) the “server” sending back a list of devices eligible for pairing; (8) the “client” sending a

3

request to pair to the portable monitoring device; (9) the portable device cuing the user for

4

validation; (10) the user validating the request by “tapping” the device; and (11) completing the

5

pair. See ’053 patent, col. 14 l. 63-col. 16, l. 9, col. 16 ll. 19-39; ’923 patent, col. 15 l. 2-col. 16 l.

6

3, col. 16 ll. 19-37, 47-50; ’307 patent, col. 15 ll. 2-58, col. 17 l. 30-col. 18 l. 31. The Court’s

7

claim construction creates further physical boundaries for some of these terms, as it has

8

determined that the “server” must be “a physical computing device in communication, directly or

9

indirectly, with one or more of the device and the client” and “tapping” must be “momentary
touching or light touching detectable by a motion sensor.” Claim Construction Order at 8-17, Dkt.

11

United States District Court
Northern District of California

10

No. 119. Also, for claim 16 of the ’307 patent, the Court has concluded that the “client device”

12

should be a “device running client software that primarily acts as an access portal to the server.”

13

Id. at 26-28. Thus, the “character as a whole” of the claims is not directed to device pairing

14

generally, but a specific flavor of portable device pairing, which is aware of user account

15

information, relies on a “server” to regulate the list of eligible devices, and uses “tapping” as the

16

means of user validation. Put succinctly, this focus distills to: server-authenticated pairing of a

17

portable monitoring device using tapping as validation.

18

The question then becomes whether this particular “flavor” of device pairing is an abstract

19

idea. The parties do not seem to dispute that device pairing, in its most basic form, constitutes an

20

abstract idea. Nor could they. Establishing a dedicated line of communication between two points

21

is a “broad and familiar concept concerning information distribution that is untethered to any

22

specific or concrete way of implementing it,” DIRECTV, 838 F.3d at 1258, which has been

23

employed in everything from secure military communications to garage door openers. As such, it

24

remains a “building block[] of human ingenuity” and properly precluded from patent protection.

25

Alice, 134 S. Ct. at 2354.

26

Whether this is true of the “flavor” of pairing in the asserted claims, however, is a closer

27

question. In Enfish, the Federal Circuit held that claims “‘purport[ing] to improve the functioning

28

of the computer itself,’ or ‘improv[ing] an existing technological process’ might not succumb to
13

the abstract idea exception.” Enfish, 822 F.3d at 1335. The asserted claims could be so

2

characterized: the insertion of a server—a physical machine, under the Court’s construction—and

3

tapping—a subset of movements detectable by a motion detector, under the Court’s

4

construction—confine the asserted claims to less than device pairing generally, and they appear to

5

provide an improvement to device pairing solutions that lack these steps. Nevertheless, the

6

Federal Circuit has maintained, that, even with technical solutions provided in technical

7

environments, solutions that can be performed “mentally or with a pencil and paper” fall within

8

the realm of abstract ideas.3 Synopsys, 839 F.3d at 1146-47, 1149. In addition, claims that

9

“describe a desired function or outcome, without providing any limiting detail that confines the

10

claim to a particular solution to an identified problem” are often directed towards abstract ideas.

11

United States District Court
Northern District of California

1

Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016); see also

12

Elec. Power Grp., 830 F.3d at 1356 (“[T]he essentially result-focused, functional character of

13

claim language has been a frequent feature of claims held ineligible under § 101.”). The asserted

14

claims also have this character: the steps of the asserted claims are all relatively simple actions that

15

could be performed manually, and their description is largely functional.
Given these competing considerations, the claims present a “close call[] about how to

16
17

characterize what the claims are directed to,” where the claims are not “unambiguously directed to

18

an improvement in computer capabilities.” BASCOM, 827 F.3d at 1349 (quoting Enfish, 822 F.3d

19

at 1339). The Federal Circuit has instructed that, in such cases, “an analysis of whether there are

20

arguably concrete improvements in the recited computer technology could take place under step

21

two.” Id. For example, in BASCOM, the Federal Circuit deferred ruling on whether claims

22

relating to particular implementations of content filtering were abstract ideas under step one and

23

proceeded to analyze them under step two. The Court finds itself in a similar situation here.

24

Accordingly, the Court will decline to decide whether the claims’ particular variant of portable

25
26
27
28

For this reason, the Court finds Fitbit’s argument that the asserted claims are not directed to an
abstract idea simply because “pairing devices is a technical process” unavailing. Opp. 14, Dkt.
No. 105. Even claims arising only in technical fields, such as logic circuit design in Synopsys or
content delivery to a mobile device in Affinity, can be directed to an abstract idea if they broadly
recite an abstract concept and say “apply it” in that field. See Synopsys, 839 F.3d at 1149; Affinity,
838 F.3d at 1269-70.
14
3

1

device pairing is an abstract idea, and assess whether, even if it is, the concrete improvements they

2

recite are inventive concepts under step two.

3

B.

4

At step two, the Court must “consider the elements of each claim both individually and ‘as

5

an ordered combination’” and assess whether there are any “additional features” in the claims that

6

constitute an “inventive concept.” Alice, 134 S. Ct. at 2357. Jawbone argues that there are none

7

because the asserted claims are comprised of elements (e.g., transferring information over

8

Bluetooth, connecting to the internet, “mobile devices,” “server,” “client”) that are generic and

9

well-known in the art. Mot. 20-21, Dkt. No. 88. Jawbone maintains that the claims are not

Step Two

confined to applications in wearable activity tracker technology, but that, even if they were, this

11

United States District Court
Northern District of California

10

does not save them under step two because limiting claims to a certain technical environment does

12

not make them patentable. Id. at 21. Jawbone also argues that there is nothing inventive about the

13

claims as an ordered combination, as there is nothing “non-conventional” or “non-generic” about

14

how the claim elements are arranged and nothing they recite constitutes a specific improvement to

15

portable device technology. Id. at 21-22.
Fitbit disagrees, asserting that the use of a server to identify eligible devices and the use of

16
17

tapping, detected by a motion sensor, to validate a pairing are unconventional elements which

18

supply an inventive concept. Opp. 16-17, Dkt. No. 105. Fitbit also argues that the ordered

19

combination of claim elements also supplies an inventive concept because it recites a specific,

20

detailed, non-conventional sequence of steps, which far from preempt the entire field. Id. at 17.

21

Fitbit further contends that an inventive concept can be found in the fact that the claims

22

“improve[] [the] existing technological process” of portable device pairing by addressing issues

23

relating to security (i.e., setting forth a reliable pairing mechanism, which ensures that a user’s

24

biometric data is not paired to the wrong device) without compromising design constraints. Id. at

25

17-18.

26

In reply, Jawbone argues that neither the server nor tapping supply an inventive concept, as

27

the “server” in the claims is just a generic, undefined component and tapping was a known form of

28

validation at the time of invention. Reply 7-10, Dkt. No. 108.
15

1

Weighing the parties’ arguments against the asserted claims and appropriate context, the

2

Court agrees with Jawbone that none of the claim elements, assessed individually, provide an

3

inventive concept. Even under the Court’s constructions, the “server,” “client,” and “portable

4

monitoring device” are, in broad terms, generic, conventional components, none of which are

5

inventive. The various steps of transmitting or receiving information and how they are

6

accomplished are also generic—the claims recite these steps only functionally and require no

7

inventive algorithm or data structure for performing them. See DIRECTV, 838 F.3d at 1262

8

(finding no inventive concept where “[t]he claim simply recites the use of generic features of

9

cellular telephones, such as a storage medium and a graphical user interface, as well as routine

10

United States District Court
Northern District of California

11

functions, such as transmitting and receiving signals, to implement the underlying idea.”).
The Court also agrees with Jawbone that the claims’ relation to wearable activity tracker

12

technology, in and of itself, does not make them patent-eligible. As the Supreme Court and

13

Federal Circuit have long held, “limiting the use of an abstract idea ‘to a particular technological

14

environment’” “is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358.

15

Nevertheless, the Court agrees with Fitbit that the ordered combination of claim elements,

16

interpreted in the light most favorable to Fitbit, contains inventive concepts. First, the addition of

17

tapping as the form of validation is an inventive concept. As the background section of the patents

18

highlights, one problem that confronted the process of pairing small, portable devices was that

19

they were “purposefully designed to eliminate keyboards and multiple buttons in order to satisfy

20

other design criteria.” ’053 patent, col. 1 ll. 49-51. Tapping overcame this problem in an

21

inventive way because it took advantage of the inherent, technical capabilities of the portable

22

monitoring device—its ability to detect motion with a motion sensor—to provide a manner of

23

validating the device that was different from traditional forms of input (i.e., buttons and

24

keyboards). This is similar to the inventive concept in BASCOM, which found that taking

25

advantage of a technical feature of certain ISP servers—the ability “to identify individual accounts

26

that communicate with the ISP server, and to associate a request for Internet content with a

27

specific individual account”—transformed the idea of content filtering into a specific type of

28

filtering that constituted a “technical improvement over prior art ways of filtering such content.”
16

1

827 F.3d at 1350.

2

Jawbone nevertheless contends that tapping cannot supply an inventive concept because it

3

was known in the art. This argument conflates patent eligibility with novelty, which are inquiries

4

that, although “might sometimes overlap,” Mayo, 132 S. Ct. at 1304, are separate. See Rapid

5

Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (rejecting the

6

argument that adding a second freeze-thaw cycle was not an inventive concept because it was

7

allegedly obvious, reasoning that “patent-eligibility does not turn on ease of execution or

8

obviousness of application. Those are questions that are examined under separate provisions of the

9

Patent Act.”) (citing Mayo, 132 S. Ct. at 1304).4 Thus, even if tapping was a known form of
validation, this does not necessarily prevent it from having a transformative effect on an abstract

11

United States District Court
Northern District of California

10

idea and bringing it within the realm of patentable subject matter. It is the case that “recit[ing]

12

[an] abstract idea . . . along with the requirement . . . to perform it on a set of generic computer

13

components . . . would not contain an inventive concept” because that, at base, would still just be

14

the abstract idea. BASCOM, 827 F.3d at 1350. Adding in tapping to a portable device pairing

15

process—even if tapping was a known form of validation—is not this, because it transforms a

16

more abstract device pairing process into something specific: a pairing process narrowly tailored

17

to a certain class of devices, which enables them to be paired even though they lack buttons or

18

keyboards. In this sense, it “improves an existing technological process” by expanding the scope

19

of devices that can be paired. Alice, 134 S. Ct. at 2358. For these reasons, tapping transforms the

20

asserted claims into “something more” than just an abstract device pairing process. Accordingly,

21

the fact that tapping appears in the prior art does not prevent it from supplying an inventive

22
23
24
25
26
27
28

4

The Federal Circuit has also rejected the converse:
It is true that “the § 101 patent-eligibility inquiry and, say, the § 102
novelty inquiry might sometimes overlap.” Mayo, 132 S. Ct. at 1304.
But, a claim for a new abstract idea is still an abstract idea. The search
for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty.

Synopsys, 839 F.3d at 1151; see also Affinity, 838 F.3d at 1263 (“the eligibility finding does not
turn on the novelty of using a user-downloadable application for the particular purpose set out in
the claims”).
17

1

concept here.
Second, the use of a server as a part of the claimed pairing process supplies an inventive

2
3

concept. As the name suggests, the concept of pairing traditionally involves two devices: the

4

device that gets paired and the device it is paired with. See also ’053 patent, col. 1 ll. 35-38. By

5

injecting a third device—a server—into this process, the asserted claims shift this paradigm so that

6

all of the information needed for pairing does not have to be provided through the two devices.

7

Instead, the server can also regulate and facilitate this process. For example, the server can narrow

8

the field of possible portable devices to pair by sending the client the list of devices that are

9

“eligible”—e.g., devices that have not already been paired, that belong to a class of devices that
that user’s account is authorized to work with, etc. Id., col. 6 l. 40-col. 7 l. 4. This helps

11

United States District Court
Northern District of California

10

accomplish the goal of “minimiz[ing] the amount of user interaction and input required in the

12

pairing process,” because the server can automatically supply eligibility information that a user

13

might otherwise have to supply himself. Accordingly, when viewed in the light most favorable to

14

Fitbit, the server limitation also helps transform a more abstract device pairing process into

15

“something more” because it narrows it to a specific, discrete implementation of this idea that

16

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

17
18

of the claims as an ordered combination, supply an inventive concept that transforms the asserted

19

claims into patent eligible subject matter under step two.

20

IV.

21

CONCLUSION
For the foregoing reasons, the Court concludes that the asserted claims are not patent-

22

ineligible under 35 U.S.C. § 101 because they contain an inventive concept sufficient to transform

23

these claims into patentable subject matter. Accordingly, the Court DENIES Jawbone’s motion

24

for judgment on the pleadings.

25

IT IS SO ORDERED.

26
27
28

Dated: February 9, 2017
______________________________________
EDWARD J. DAVILA
United States District Judge
18