Fitbit Inc. v. AliphCom et al.

Filing 104

ORDER GRANTING IN PART AND DENYING IN PART 74 DEFENDANTS' MOTION FOR JUDGMENT ON THE PLEADINGS. Signed by Judge Beth Labson Freeman on 3/2/2017. (patentlcsjS, COURT STAFF) (Filed on 3/2/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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FITBIT INC,

Case No. 16-cv-00118-BLF
Plaintiff,

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v.
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ALIPHCOM, et al.,
Defendants.

ORDER GRANTING IN PART AND
DENYING IN PART DEFENDANTS’
MOTION FOR JUDGMENT ON THE
PLEADINGS

United States District Court
Northern District of California

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Defendants AliphCom, Inc. d/b/a Jawbone and Bodymedia, Inc. (collectively,

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“Defendants”) bring this motion for judgment on the pleadings that U.S. Patent Nos. 8,909,543

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(the “’543 patent”), 9,031,812 (the “’812 patent”), and 9,042,971 (the “’971 patent”) are invalid

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for failure to claim patent-eligible subject matter under 35 U.S.C. § 101. ECF 74. For the reasons

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discussed below, the Court GRANTS IN PART and DENIES IN PART Defendants’ motion.

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I.

BACKGROUND
The ’543 Patent

A.

Fitbit owns the ’543 patent, which is entitled “Methods for Detecting and Recording

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Physical Activity of Person.” It was filed on January 27, 2014 and issued on December 9, 2014.

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It is a continuation of U.S. Patent No. 9,089,760 (the “’760 patent”), which claims priority to

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several provisional applications, the earliest of which dates September 26, 2006. ’543 patent, col.

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1 ll. 7-27.

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Fitbit currently asserts claims 20 and 25-29 of the ’543 patent. These claims generally

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relate to a method for tracking a person’s cumulative amount of movement using a certain

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wearable band. Id., col. 26 ll. 45-60. The wearable band contains a motion detection component,

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which detects a person’s movement, and a series of LED lights, which light up in a progression to

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indicate the total amount of movement. Id. Data associated with this movement is also sent to a

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secondary device, such as a cell phone or computer. Id.
Claim 20, the only independent asserted claim, recites:

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20. A method, comprising:
providing a band defined to be worn by a person, the band comprising
a flexible material, the band including a motion detection
component and a series of light emitting diodes;
detecting and recording movement of the person by use of the motion
detection component;
controlling illumination of the series of light emitting diodes such that
individual light emitting diodes of the series of light emitting
diodes turn on to emit light in a progression from one end of the
series of light emitting diodes toward another end of the series of
light emitting diodes, wherein an amount of the progression is
based on an amount of movement of the person recorded using
the motion detection component; and
communicating data associated with the amount of recorded
movement of the person to a secondary electronic device.

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United States District Court
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Id., col. 26 ll. 45-60. Claims 25 and 26 add the requirements that (1) the data be transmitted

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wirelessly, by (2) generating and transmitting radio frequency signals. Id., col. 27 ll. 11-17.

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Claim 27 requires that the secondary device be a computer, id., col. 28 ll. 1-2, claim 28 requires

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that the secondary device be “one or more of a game, a toy, a game controller, a computer

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interface device, a cell phone, a mobile data communication device, a microprocessor, and a

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computer,” id., col. 28 ll. 3-6, and claim 29 requires that the wearable band be removable, id., col.

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28 ll. 7-9.

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B.

The ’812 Patent
Fitbit also owns the ’812 patent, which is entitled “Notifications on a User Device Based

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on Activity Detected by an Activity Monitoring Device.” It was filed on May 6, 2014 and issued

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on May 12, 2015.

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Fitbit currently asserts claims 1-6, 9-15, 18-23, and 25-26. These claims generally relate to

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methods for generating a notification relating to a person’s tracked activity, which gets displayed

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at a specific date and time. ’812 patent, col. 25 ll. 23-66, col. 26 ll. 14-64, col. 27 l. 11-col. 28 l. 5,

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col. 28 ll. 13-40. In these methods, a mobile device wirelessly communicates with an activity

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monitoring device, which sends activity data. Id. The mobile device then processes this data to

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create an activity metric for that user, such as “number of steps taken, distance traveled,
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steps/floors climbed, calories burned, active minutes, etc.” Id., col. 9 ll. 6-9. After the activity

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metric reaches a certain predefined threshold, such as “a threshold number of steps taken, a

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threshold number of steps/floors (or altitude) climbed, a threshold distance traveled, a threshold

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number of active minutes achieved, a threshold number of calories burned, etc.” or “25%, 50%,

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75%, and 100% of [a] goal,” a notification message is generated and scheduled for display at a

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particular date and time. Id., col. 9 ll. 62-67, col. 10 ll. 16-17. When that time arrives, the

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message is displayed, along with “access to an application for interfacing with the activity

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monitoring device.” Id., col. 25 ll. 40-42, col. 26 ll. 36-37, col. 27 ll. 31-32, col. 25 ll. 32-33.

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United States District Court
Northern District of California

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One of the independent claims, claim 1, recites:
1. A method for generating a notification on a mobile device,
comprising:
establishing a wireless connection to an activity monitoring device;
receiving activity data from the activity monitoring device via the
wireless connection;
processing the activity data to determine an activity metric for a user
of the activity monitoring device;
comparing the activity metric against a predefined threshold, the
predefined threshold being mapped to a notification message;
in response to determining that the activity metric reaches or exceeds
the predefined threshold, scheduling the notification message for
display on the mobile device at a specified date and time;
wherein the notification message is displayed on the mobile device at
the specified date and time, the display of the notification message
providing access to an application for interfacing with the activity
monitoring device;
wherein the method is executed by at least one processor.

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Id., col. 25 ll. 23-42. At a high level, dependent claims add restrictions on types of notification

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messages, id., col. 25 ll. 44-46, col. 26 ll. 39-41, col. 27 ll. 47-49 (claims 2, 10, and 22), types of

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activity metrics, id., col. 25 ll. 51-56, col. 26 ll. 49-53, col. 28 ll. 1-5 (claims 4, 13, and 23), how

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the mobile device and activity monitoring device communicate, id., col. 25 ll. 47-50, col. 26 ll. 42-

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45 (claims 3 and 11), how the notification message gets triggered or rendered, id., col. 26 ll. 46-

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48, col. 27 ll. 33-37, 43-46, col. 28 ll. 34-40 (claims 12, 19, 21, and 26), and the content of the

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notification message, id., col. 25 ll. 58-66, col. 26 ll. 54-63 (claims 5, 6, 14, and 15).

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The prosecution history of the ’812 patent is relevant to Defendants’ motion. During

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prosecution, the examiner initially rejected the claims of the ’812 patent as directed to patent-

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ineligible subject matter under § 101. Ex. 9 to Mot. at 2, ECF 74-10. In response, the applicant
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amended the independent claims to add the requirement that the notification be displayed at a

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“specified date and time” or within a “time window.” Ex. 10 to Mot. at 2, 5, 7, 9, ECF 74-11.

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The examiner determined that this additional limitation was sufficient to render the claims patent-

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eligible, explaining in his January 26, 2015 notice of allowance:
Applicant’s amendments to claims 1, 10, 20, and 28 are sufficient to
overcome the rejections under 35 U.S.C. § 101 because the limitations
add “significantly more” to the claim. By itself, displaying a message
may be considered insignificant extra-solution activity, however,
displaying a notification message on a mobile device at a specified
time and date where the notification message provides access to an
application for interfacing with an activity monitoring device where
a wireless connection exists between the mobile device and the
activity monitoring device is not insignificant. Applicant has added
unconventional steps that confine the claim to a particular useful
application.

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United States District Court
Northern District of California

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Ex. 11 to Mot. at 2, ECF 74-12.
C.

The ’971 Patent
Fitbit owns the ’971 patent, which is titled “Biometric Monitoring Device with Heart Rate

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Measurement Activated by a Single User-Gesture.” It was filed on January 13, 2014 and issued

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on May 26, 2015. It claims priority to several provisional applications, the earliest of which was

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filed on June 22, 2012. ’971 patent, col. 1 ll. 8-16.

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Fitbit currently asserts claims 1, 22, and 25-28. These claims generally relate to a method

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and apparatus for on-demand measurement of a person’s heart rate, where data collection is

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activated by a “single user-gesture” on the surface of an “activator” and continues until “a heart

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rate of a predetermined level of heart rate quality” is obtained. Id., col. 41 ll. 7-35, col. 43 ll. 3-18.

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The specification gives descriptions of several of these terms. With respect to “activator,” the

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specification explains that “[t]he activator, in general, is a mechanism through which a user input

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or activation signal may be received or recognized by the device in order to initiate heart rate

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measurement via the heart rate sensor.” Id., col. 8 ll. 63-66. It can be a “biometric sensor, such as

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an accelerometer,” a “button,” “pressure or touch sensitive sensor, e.g., capacitive touch, resistive

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touch, ultrasonic touch, etc., or a proximity sensor, e.g., infrared, capacitive, etc.” Id., col. 8 ll. 59-

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63, col. 14 ll. 50-54. With respect to “single user gesture,” the specification states that “a ‘single

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user-gesture’ is an action of a user relative to a single part of the apparatus, wherein the action is
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interpreted by the apparatus as a single behavioral pattern” and can include “a single command,

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shaking of the device, moving the device in a certain trajectory, e.g., a ‘figure 8’ trajectory, staring

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at the apparatus or a particular portion of the apparatus (when the apparatus has gaze detection

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function), bringing a body part into proximity with the apparatus, bringing an arm wearing a

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wristband-type BMD from a downwards-extended position to a viewing position, twisting the

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wrist wearing a BMD implemented as wrist band, etc.” Id., col. 13 ll. 41-43, 45-55. The

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specification also gives examples of the conditions under which data collection stops. For

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example, “[i]n some embodiments, the device automatically stops data collection after a set period

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of time, such as about 3 seconds, 5 seconds, 10 seconds, 20 seconds, 40 seconds, 1 minute, or 2
minutes. In some embodiments, the device automatically stops array data collection after a

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United States District Court
Northern District of California

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reliable heart rate reading is obtained.” Id., col. 20 ll. 12-17.

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The asserted claims contain two independent claims: claim 1, which is an apparatus claim,
and claim 22, which is a method claim. Claim 1 recites:
1. An apparatus comprising:
one or more biometric sensors comprising a heart rate sensor;
an activator of the heart rate sensor;
a heart rate sensor surface area through which the heart rate sensor
can collect heart rate data from a user;
an activator surface area through which the activator can receive
activation signals from the user;
at least one processor; and
a memory,
wherein:
the one or more biometric sensors, the activator, the at least one
processor, and the memory are communicatively connected, and
the memory stores computer-executable instructions for controlling
the at least one processor to cause the heart rate sensor to:
start collecting heart rate data through the heart rate sensor surface
area in response to the activator receiving an activation signal
through the activator surface area caused by a single user-gesture;
and
automatically stop collecting heart rate data when a heart rate reading
of a predetermined level of heart rate data quality is obtained and
remain in a state that does not collect heart rate data until another
activation signal caused by a new user-gesture is received without
requiring further user-gestures in addition to the single usergesture.
Id., col. 41, ll. 8-35. Claim 22 includes similar elements, but also adds the step of providing user

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feedback on the heart rate data that is collected. It recites, in whole part:
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22. A method for monitoring heart rate using a biometric monitoring
device, comprising:
receiving, by an activator, an activation signal representing a single
user-gesture by a user;
activating a heart rate sensor, in response to the activation signal, to
start collecting heart rate data from the user;
providing user feedback, through a feedback mechanism, with
reference to the collected heart rate data without requiring further
user-gestures in addition to the single user-gesture; and
causing the heart rate sensor to stop collecting heart rate data when a
heart rate reading of a predetermined level of heart rate data
quality is obtained without requiring further user-gestures in
addition to the single user-gesture.

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Id., col. 43 ll. 3-18. Claims 25-28, which depend on claim 22, limit user feedback to either an
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indication that the heart rate data collection was successful or failed, or to certain observations
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about the heart rate data, such as “average heart rate, minimum heart rate, maximum heart rate,

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heart rate variability, heart rate relative to target heart rate zone, heart rate relative to resting heart
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United States District Court
Northern District of California

rate, change in heart rate, decrease in heart rate, increase in heart rate, training advice with
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reference to heart rate, and a medical condition with reference to heart rate.” Id., col. 44 ll. 3-21.
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II.

PROCEDURAL HISTORY
Fitbit initiated this lawsuit on September 3, 2015 in the District of Delaware, alleging that

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Jawbone’s UP line of activity tracking devices infringed the asserted patents. ECF 1. Within that

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next month, Fitbit initiated three other proceedings: on September 8, 2015, a patent infringement
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action in the Northern District of California, Case No. 5:15-cv-4073-EJD; on October 29, 2015, a
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patent infringement action in the District of Delaware, Case No. 1:15-cv-990; and on November 2,
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2016, an investigation at the U.S. International Trade Commission (ITC), Inv. No. 337-TA-973.
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The ITC investigation and second Delaware action involved the same asserted patents, so the
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second Delaware action was mandatorily stayed pursuant to 28 U.S.C. § 1659. Ex. 6 to Mot., ECF
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74-7. On December 22, 2015, the instant suit—the first Delaware action—was transferred to this
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Court. Ex. 7 to Mot., ECF 74-8.
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On October 18, 2016, Defendants filed the instant motion, seeking judgment on the
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pleadings that the asserted claims of the ’543, ’812, and ’791 patents are invalid for failure to

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claim patent-eligible subject matter under 35 U.S.C. § 101. ECF 74. The Court heard argument
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on January 5, 2017. ECF 92.
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III.

LEGAL STANDARDS
A.

Motion for Judgment on the Pleadings Under Fed. R. Civ. P. 12(c)
Rule 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.” Fed. R. Civ. P. 12(c). “A judgment on

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the pleadings is properly granted when, taking all allegations in the pleadings as true, the moving
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party is entitled to judgment as a matter of law.” Enron Oil Trading & Transp. Co. v. Walbrook

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Ins. Co., 132 F.3d 526, 528 (9th Cir. 1997) (citing McGann v. Ernst & Young, 102 F.3d 390, 392
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(9th Cir. 1996)). When ruling on a Rule 12(c) motion, the Court must “accept factual allegations

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in the complaint as true and construe the pleadings in the light most favorable to the nonmoving
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party.” Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). Any

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existing ambiguities must be resolved in favor of the pleading. Walling v. Beverly Enters., 476
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United States District Court
Northern District of California

F.2d 393, 396 (9th Cir. 1973).
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“If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented

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to and not excluded by the court, the motion must be treated as one for summary judgment under
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Rule 56.” Fed. R. Civ. P. 12(d). A court, however, may “consider certain materials—documents

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attached to the complaint, documents incorporated by reference in the complaint, or matters of
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judicial notice—without converting the motion to dismiss into a motion for summary judgment.”

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United States v. Ritchie, 342 F.3d 903, 908 (9th Cir. 2003).
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B.

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

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machine, or composition of matter, or any new and useful improvement thereof, may obtain a
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patent therefor, subject to the conditions and requirements of this title.” However, the Supreme
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.

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Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 186 L. Ed. 2d 124 (2013) (internal quotation marks
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and citation omitted).
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To determine whether a claim falls outside this exception, the Supreme Court has
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established a two-step framework: First, the court must “determine whether the claims at issue are

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

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

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

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

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

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

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

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

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significantly more than a patent upon the [ineligible concept] itself.’” Id.
In evaluating step one, “the ‘directed to’ inquiry applies a stage-one filter to claims,

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United States District Court
Northern District of California

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

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

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

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

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

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Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016).

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In the software context, claims may fail step one because they are directed to an abstract

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idea. The Federal Circuit has found this to be true in a number of cases, and some commonalities

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have emerged. For example, fundamental economic activities and business practices, even if

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performed on a computer, are often abstract. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,

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1362 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701, 193 L. Ed. 2d 522 (2015) (collecting cases). In

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addition, the Federal Circuit has “treated collecting information, including when limited to

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particular content (which does not change its character as information), as within the realm of

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abstract ideas.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)

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(collecting cases); see also, e.g., In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.

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Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016).

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Further, it has “treated analyzing information by steps people go through in their minds, or by

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mathematical algorithms, without more, as essentially mental processes within the abstract-idea
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category.” Elec. Power Grp., 830 F.3d at 1353 (collecting cases). It has also found that “merely

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presenting the results of abstract processes of collecting and analyzing information, without more

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(such as identifying a particular tool for presentation), is abstract as an ancillary part of such

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collection and analysis.” Id. Nevertheless, “precision has been elusive in defining an all-purpose

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boundary between the abstract and the concrete.” Internet Patents, 790 F.3d at 1345. Courts must

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tow the fine line between assessing a claim’s “character as a whole” and “describing the claims at

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such a high level of abstraction and untethered from the language of the claims [such that it] all

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but ensures that the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at 1335, 1337.

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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

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United States District Court
Northern District of California

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

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

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

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

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

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

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

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

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However, not all claims relating to computer technologies fall within Enfish/McRO.

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Where the focus of the claims is on “certain independently abstract ideas that use computers as

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

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Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (claims

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

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abstract idea because they claimed “the general concept of out-of-region delivery of broadcast

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content through the use of conventional devices, without offering any technological means of

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effecting that concept”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1140, 1149

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(Fed. Cir. 2016) (claims related to logic circuit design in computer hardware were “drawn to the

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abstract idea of: translating a functional description of a logic circuit into a hardware component
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description of the logic circuit” because “they are so broad as to read on an individual performing

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the claimed steps mentally or with pencil and paper”); Tranxition, Inc. v. Lenovo (United States)

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Inc., No. 2015-1907, 2016 WL 6775967, at *3 (Fed. Cir. Nov. 16, 2016) (claims relating to

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

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

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

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

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

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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

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United States District Court
Northern District of California

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

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

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

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

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

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

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

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

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“inventive programming,” or an inventive approach in “how the desired result is achieved.” Elec.

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Power Grp., 830 F.3d at 1355.

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

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

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

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

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

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

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

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are “not merely the routine or conventional use of the Internet.” Id. at 1259. Second, in
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BASCOM, the Federal Circuit found that the claims directed to Internet content filtering recited the

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

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

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

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

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patents claimed a specific type of content filtering that took advantage of an ISP server’s ability to

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associate internet requests with user accounts. Id. Third, in Amdocs (Israel) Ltd. v. Openet

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Telecom, Inc., the Federal Circuit found that claims relating to solutions for managing accounting

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and billing data over large, disparate networks recited an inventive concept because they contained
“specific enhancing limitation[s] that necessarily incorporates the invention’s distributed

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United States District Court
Northern District of California

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architecture—an architecture providing a technological solution to a technological problem.” 841

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F.3d 1288, 1301 (Fed. Cir. 2016). Use of this “distributed architecture” transformed the claims

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into patentable subject matter. Id.

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

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

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

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

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

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

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

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

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

23

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

24

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

25

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

26

implement the underlying idea.” 838 F.3d at 1262. Further, limiting the field of use to a

27

particular technological environment does not supply an inventive concept. Alice, 134 S. Ct. at

28

2358 (noting that, under step two, “limiting the use of an abstract idea ‘to a particular
11

1

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

2

Inc. v. Google, Inc., the Federal Circuit found that patent-ineligible claims relating to transaction

3

guarantees could not be saved from ineligibility because they were restricted to online

4

transactions, as “[a]t best, that narrowing is an ‘attempt[] to limit the use’ of the abstract guarantee

5

idea ‘to a particular technological environment,’ which has long been held insufficient to save a

6

claim in this context.” 765 F.3d 1350, 1355 (Fed. Cir. 2014). Accordingly, the search for an

7

inventive concept remains one that court must approach cautiously, “scrutiniz[ing] the claim

8

elements more microscopically” than in step one. Elec. Power Grp., 830 F.3d at 1354.
In addition to these principles, several other considerations may be helpful in conducting a

9

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

11

United States District Court
Northern District of California

10

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

12

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

13

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

14

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

15

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

16

eligibility.” FairWarning IP, 839 F.3d at 1098 (internal quotation marks and citation omitted).
Second (and relatedly), “claims that are ‘so result-focused, so functional, as to effectively

17
18

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

19

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

20

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

21

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

22

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

23

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

24

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

25

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

26

IV.

27
28

DISCUSSION
With these principles in mind, the Court turns to the claims at issue. As set forth below,

the Court finds that the asserted claims of the ’543 and ’812 patents are patent-ineligible, but the
12

1
2
3

asserted claims of the ’971 patent are not.
A.

’543 Patent
Fitbit currently asserts independent claim 20 and dependent claims 25-29 of the ’543

4

patent. Fitbit maintains that claim 20 is not representative of the remaining asserted claims, Opp.

5

15, ECF 81, and Defendants provide no response on this point. Accordingly the Court will

6

analyze each of the claims separately.

7
8
9

i.

Claim 20
a. Step One

Defendants argue that the “character as a whole” of the asserted claims (including claim
20) is directed to an abstract idea because the claims simply amount to (1) detecting and tracking a

11

United States District Court
Northern District of California

10

user’s activity; and (2) notifying the user about the amount of activity, which are routine functions

12

that humans have long performed with pencil and paper. Mot. 10, ECF 74. Defendants also

13

maintain that the asserted claims fall within the universe of data collection, analysis, and

14

presentation subject matter, which the Federal Circuit and other courts have found to be abstract

15

ideas. Mot. 10-11, ECF 74.

16

Fitbit disagrees, arguing that the claim embodies a specific improvement to portable

17

activity monitoring technology, as its use of LEDs overcomes form factor and cost limitations that

18

are particular to portable activity monitors. Opp. 8-9, ECF 81. It argues that Defendants’

19

conception of the asserted claims is too high-level, and overlooks the fact that they claim a

20

specific structure (e.g., a wearable band with a motion detection component and LEDs) that

21

provides this technological improvement.

22

The Court agrees with Defendants that claim 20 is directed to an abstract idea. At stage

23

one, the Court must train its inquiry on what the “character as a whole” or “focus” of the claims is

24

“directed to.” Elec. Power Grp., 830 F.3d at 1353; Internet Patents, 790 F.3d at 1346. Reading

25

claim 20 in its entirety, its focus is on collecting and reporting a person’s cumulative amount of

26

physical activity—in other words, data. The method of claim 20 recites four basic elements:

27

(1) “providing” a wearable band with a motion detection component and LEDs, (2) collecting data

28

on a person’s movements, (3) displaying a representation of that data through a “progression” of
13

1

LEDs, and (4) sending a copy of that data to a secondary device. Assessed together, the weight of

2

the claim rests with the final three elements—they comprise the bulk of the claim and contribute

3

the most in meaning. By contrast, the wearable band is ancillary, simply providing a tool through

4

which the rest of the claim limitations are accomplished. The claim language underscores this

5

fact, as the band limitation adds little to the collective substance of the claim: a wearable band

6

with flexible material, motion detection component, and LEDs are all generic components that

7

existed in the art, and the claim recites no particularities about these components, including

8

particular improvements to the motion detection component or LEDs themselves, or to their

9

arrangement on the wearable band. The specification also supports this conclusion, as it gives
examples of a number of different types of motion detection components that could be used, see,

11

United States District Court
Northern District of California

10

e.g., ’543 patent, col. 11 l. 62-col. 14 l. 34, col. 14 l. 56-col. 19 l. 16, col. 19 ll. 27-33, col. 19 l. 59-

12

col. 20 l. 57, describes a wide range of variations that could be made to the wearable band, see,

13

e.g., id., col. 11 ll. 9-32, and provides no elaboration on what types of LEDs may be used, see,

14

e.g., id., col. 19 ll. 34-36. Accordingly, the wearable band with a motion detection component and

15

LEDs “merely provide a generic environment in which to carry out the [] idea of [collecting and

16

reporting data on cumulative physical activity].” In re TLI Communications LLC Patent

17

Litigation, 823 F.3d 607, 611 (Fed. Cir. 2016). This adds little to the substance of the claim.

18

Instead, the focus remains on the collecting and reporting functions themselves.

19

So characterized, the “character as a whole” of claim 20 is an abstract idea. As the Federal

20

Circuit has held, data collection, analysis, and reporting—even when limited to particular

21

content—are all abstract ideas. See, e.g., Elec. Power Grp., 830 F.3d at 1354 (claims “focused”

22

on “collecting information, analyzing it, and displaying certain results of the collection and

23

analysis” were directed to an abstract idea); FairWarning IP, 839 F.3d at 1093 (claims drawn to

24

“analyzing records of human activity to detect suspicious behavior” were directed to an abstract

25

idea). The focus of claim 20—collecting and reporting data on cumulative physical activity—falls

26

squarely within these precedents.

27
28

Further, the same principles that animated the Federal Circuit in these decisions apply here.
As the court explained, “information as such is intangible,” and the steps of data collection and
14

1

analysis are steps that humans can perform in their minds and are “essentially mental processes

2

within the abstract-idea category.” Elec. Power Grp., 830 F.3d at 1354-55. In addition, merely

3

presenting results is “abstract as an ancillary part of such collection and analysis.” Id. at 1355. At

4

base, claim 20 describes nothing more than a mental process, as totaling an activity metric is

5

something that can be done mentally or with pencil and paper. Indeed, humans have been doing

6

this for decades on scoreboards and log sheets. It is also of no import that claim 20 confines its

7

data collection to a particular topic (i.e., activity level)—even so scoped, this is still just a mental

8

process. Cf. id. at 1355 (observing that “we have treated collecting information, including when

9

limited to particular content (which does not change its character as information), as within the
realm of abstract ideas”). Thus, the “character as a whole” of claim 20—collecting and reporting

11

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Northern District of California

10

data on cumulative physical activity—is drawn to an abstract idea.

12

Claim 20 is distinguishable from the claims at issue in Enfish and McRO. There, the

13

Federal Circuit found that the claims were not directed to an abstract idea because they constituted

14

a “specific asserted improvement in computer capabilities” rather than “a process that qualifies as

15

an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, 822 F.3d at 1335.

16

For example, the self-referential tables in Enfish were “not simply directed to any form of storing

17

tabular data, but instead [were] specifically directed to a self-referential table for a computer

18

database” that itself constituted an improvement in database technology. Id. at 1337. Claim 20 is

19

not this: it recites the relatively general idea of data collection and reporting, but just applied in the

20

narrower context of reporting cumulative activity level as detected by a motion detection

21

component. While it is possible that claim 20 provides certain benefits to the field of portable

22

activity monitoring, this does not mean that it constitutes a “specific asserted improvement in

23

[portable activity monitoring device] capabilities”—the intermediated settlement scheme of Alice

24

likely provided benefits to the financial world, the binary conversion method of Gottschalk likely

25

provided benefits to the computer world, and the same can likely be said for many other patent-

26

ineligible claims. See Alice, 134 S. Ct. at 2352; Gottschalk v. Benson, 409 U.S. 63, 67, 93 S. Ct.

27

253, 255, 34 L. Ed. 2d 273 (1972). Instead, Enfish and McRO represent a narrower class of

28

patentable subject matter that requires an improvement to technology (e.g., a tool) used in a
15

1

technological field, not just incidental benefit to a technological field. This is absent from claim

2

20.

3

Fitbit’s arguments to the contrary are not persuasive. According to Fitbit, the “structure”

4

of the wearable band with a motion detection component and LEDs constitutes a specific

5

improvement to portable activity monitoring technology that overcomes problems specific to that

6

field. Opp. 8-9, ECF 81. This, however, is a revisionist gloss, which is not reflected in the ’543

7

patent itself. The specific improvements to activity monitoring technology which Fitbit contends

8

that this structure brings—activity level reporting which was cost-effective, not power-hungry,

9

and robust, Opp. at 9, ECF 81—are not recited in claim 20 and receive scant attention in the
specification of the ’543 patent. See, e.g., col. 11 ll. 52-55 (discussing only size and cost

11

United States District Court
Northern District of California

10

minimization); col. 19 ll. 34-36 (mentioning “conserving battery power” for an embodiment that

12

includes a sleep mode). Further, even when these benefits are mentioned, the specification does

13

not attribute them to the wearable band “structure” itself. Id. Moreover, as discussed above, this

14

“structure” adds little to the substance of the claims, so, regardless of its purported benefits to the

15

field, it does not alter the “character as a whole” of the claims and cannot save the claims under

16

step one.

17

At bottom, the focus of claim 20 is simply data collection and reporting, albeit confined to

18

a certain type of data (e.g., activity level). As such, it “merely implement[s] an old practice in [an

19

allegedly] new environment,” FairWarning IP, 839 F.3d at 1095, which does not change its

20

“focus” under step one. Accordingly, it is directed to an abstract idea under step one of

21

Alice/Mayo.

22
23

b. Step Two
Having found that claim 20 is directed to a patent-ineligible abstract idea, the Court

24

proceeds to step two. Defendants contend that claim 20 contains no inventive concept because it

25

simply recites using generic components in conventional ways, including using LEDs as a way of

26

communicating information. Mot. 12-13, ECF 74. Fitbit responds that the “ordered combination”

27

of claim elements provides an inventive concept, because the combination of an activity

28

monitoring device with a series of LEDs as a display is a “specific, discrete implementation” of
16

1

activity monitoring that was far from conventional at the time of invention. Opp. 13-14, ECF 81.

2

Instead, according to Fitbit, this combination was a “novel optimization” that solved design

3

constraints (e.g., size, power consumption, durability) facing then-existing activity monitors. Id.

4

Before turning to the merits of the parties’ arguments, the Court must first determine

5

whether it is proper to resolve them at this stage. Fitbit’s arguments appear to raise factual

6

questions regarding the state of the art at the time of the ’543 patent’s invention, which, if

7

material, would preclude this Court from granting judgment on the pleadings. Hal Roach Studios,

8

Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1550 (9th Cir. 1989) (“[J]udgment on the pleadings

9

is improper when the district court goes beyond the pleadings to resolve an issue; such a
proceeding must properly be treated as a motion for summary judgment.”); see also 5C Charles

11

United States District Court
Northern District of California

10

Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1367 (3d ed. 2008); cf.

12

FairWarning IP, 839 F.3d at 1097 (“We have also acknowledged, however, that plausible factual

13

allegations may preclude dismissing a case under § 101 where, for example, ‘nothing on th[e]

14

record . . . refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6).’)

15

(quoting BASCOM, 827 F.3d at 1352). Instead, any further consideration of step two would

16

convert this into a decision of summary judgment. Id. This is not the case here, however. As the

17

discussion below demonstrates, the Court finds itself able to resolve the issue of whether claim 20

18

recites an inventive concept without considering disputed facts relating to the state of the art.

19

Accordingly, there is no factual dispute that affects the Court’s analysis, and it is appropriate to

20

decide this issue under Rule 12(c).

21

Turning to the step two inquiry itself, the Court agrees with Defendants that claim 20 does

22

not contain an inventive concept. Examining the elements of claim 20 individually, they recite

23

nothing more than generic components used in conventional ways: the “band” is “worn by a

24

person,” the “motion detection component” “detect[s] and record[s] movement,” the “light

25

emitting diodes” display, and data is communicated to the secondary electronic device in no

26

specific, non-ordinary manner. ’543 patent, col. 26 ll. 45-62. Fitbit does not assert that it invented

27

any of these components, nor does the specification describe them as inventive. There is also

28

nothing inventive about using a progression of LEDs to represent a cumulative activity level: from
17

1

scoreboards to appliances, humans have used series of lights for decades to display progress

2

achieved toward a goal. Claim 20’s use of LEDs is no different from these traditional

3

implementations. Accordingly, none of the elements of claim 20, by themselves, supply an

4

inventive concept.

5

The ordered combination of these elements also does not yield an inventive concept. In

6

BASCOM, the Federal Circuit held that “an inventive concept can be found in the non-

7

conventional and non-generic arrangement of known, conventional pieces.” 827 F.3d at 1350.

8

Here, however, there is nothing non-conventional or non-generic about how the elements of claim

9

20 are arranged. The motion detector and the LEDs are placed on the band, and, working in
tandem, each performs its conventional function (monitoring and displaying, respectively). There

11

United States District Court
Northern District of California

10

is also no inventive concept in claim 20’s use of a series of LEDs instead of other forms of

12

display. As the specification makes clear, LEDs were one of several known alternatives for

13

displaying information at the time of invention. See ’543 patent, col. 10 ll. 16-18 (listing “a light

14

emitting diode (LED), liquid crystal display (LCD) or other display device” as possible

15

alternatives for “provid[ing] for display of some type of indicia indicating when the physical

16

activity exceeds a predetermined threshold”). Choosing one conventional component over another

17

to serve its conventional role is not inventive or transformative. Indeed, engineers make dozens of

18

these decisions each day. In this sense, claim 20 stands apart from the claims in BASCOM or

19

AmDocs, where a separate piece of technology (e.g., the ability of at least some of the IPSs to

20

identify which individual account was communicating with it in BASCOM or the distributed

21

architecture in AmDocs) was unconventionally introduced into the solution (e.g., content filtering

22

in BASCOM or accounting and billing data management in AmDocs) to “provid[e] a technological

23

solution to a technological problem.” See Amdocs, 841 F.3d at 1301; BASCOM, 827 F.3d at 1350.

24

There is no such unconventional insertion of additional technology here. Accordingly, the ordered

25

combination of elements do not provide an inventive concept.

26

It is also no answer that claim 20 provides a solution specifically within the portable

27

activity monitoring arts. Although claims that “improve[] an existing technological process” may

28

pass step two, BASCOM, 827 F.3d at 1350, this does not mean that all claims that are scoped to a
18

1

particular technical field fall within this category. As the Supreme Court has made clear, “the

2

prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use

3

of [the idea] to a particular technological environment.” Alice, 134 S. Ct. at 2358 (quoting Bilski,

4

561 U.S., at 610-611, 130 S. Ct. 3218). Here, claim 20 more closely resembles an abstract idea

5

(activity data collection and reporting) scoped to a technological environment (portable activity

6

monitors), rather than a specific improvement to an existing technical process within that field.

7

Notably, it “do[es] not require an arguably inventive set of components or methods, such as

8

measurement devices or techniques,” nor does it “invoke any assertedly inventive programming.”

9

Elec. Power Grp., 830 F.3d at 1355. Accordingly, claim 20’s close relation to portable activity

10

United States District Court
Northern District of California

11

monitoring does not transform it into patentable subject matter.
At bottom, claim 20 recites generic components that are used and combined in

12

conventional ways within a particular technological environment, none of which rises to an

13

inventive concept. Claim 20 fails step two, and thus, fails to recite patent-eligible subject matter

14

under § 101.

15
16
17
18
19

c. Defendants’ Claim Construction Position Does Not Warrant a Different
Result
Fitbit also contends that Defendants’ motion is “fatally undercut” by their claim
construction position that “motion detection component” should be construed according to 35
U.S.C. § 112(6). Opp. 14-15, ECF 81. According to Fitbit, this “underscore[s] the specific,
concrete (i.e., non-abstract) nature of the claims,” and at least favors delaying a decision on patent

20
eligibility until these claim construction issues are resolved. Id. at 15.
21
The Court disagrees. As an initial matter, the posture of this motion requires the Court to
22

interpret the claims in the light most reasonable to the non-moving party (Fitbit), so Defendant’s

23
proposed construction does not control its analysis here. See Manzarek, 519 F.3d at 1031 (in
24
25

ruling on a Rule 12(c) motion, a court must “construe the pleadings in the light most favorable to
the nonmoving party”); cf. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339-40 (Fed. Cir.

26
2013), cert. granted, judgment vacated sub nom. WildTangent, Inc. v. Ultramercial, LLC, 134 S.
27

Ct. 2870, 189 L. Ed. 2d 828 (2014) (“At summary judgment, the district court may choose to

28
19

1

construe the claims in accordance with this court’s precedent, or if not it may choose to give a

2

construction most favorable to the patentee, and to apply the usual rules pertaining to summary

3

judgment from there, and still require clear and convincing evidence of ineligible subject

4

matter.”).1
Moreover, Defendants’ position that “motion detection component” should be construed

5
6

according to § 112(6) and limited to the disclosed structures in the specification is not inconsistent

7

with its position that claim 20 does not recite an inventive concept. The specification discloses a

8

wide range of motion detection components, including chemical sensors, pendulum-based

9

mechanical sensors, and electrical sensors that use a conductive ball and coil inside a conductive
tube. See ’543 patent, col. 11 l. 62-col. 14 l. 34, col. 14 l. 56-col. 19 l. 16, col. 19 ll. 27-33, col. 19

11

United States District Court
Northern District of California

10

l. 59-col. 20 l. 57. Far from implicating a specific structure, the breadth of this disclosure

12

underscores how generic the “motion detection component” requirement is. Moreover, even if

13

“motion detection component” were limited to the large universe disclosed in the specification, the

14

“motion detection component” would still be used to detect motion and combined with other

15

elements in claim 20 in the same conventional ways discussed above. Thus, Defendants’ claim

16

construction position is not inconsistent with finding a lack of an inventive concept. It does not

17

warrant a different conclusion on patent eligibility.

18

ii.

Having concluded that claim 20 does not recite patent-eligible subject matter under § 101,

19
20

Claims 25-29

the Court proceeds to determine whether this is also true of the asserted dependent claims.
Applying step one, the Court finds that none of the additional limitations added in these

21
22

claims is substantial enough to change the “character as a whole” of the claims. Claims 25 and 26

23

impose additional limitations on how data is communicated to the “second electronic device,”

24
25
26
27
28

1

Although Ultramercial has been vacated by the Supreme Court, the Federal Circuit has
continued to cite to this portion of the opinion approvingly. See Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“Although Ultramercial
has since been vacated by the Supreme Court, we perceive no flaw in the notion that claim
construction is not an inviolable prerequisite to a validity determination under § 101. We note,
however, that it will ordinarily be desirable—and often necessary—to resolve claim construction
disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full
understanding of the basic character of the claimed subject matter.”).
20

1

claims 27 and 28 restrict the universe of possible “second electronic device[s],” and claim 29

2

makes the motion detection component and the LEDs removable from the band. Id., col. 27 l. 11-

3

col. 28 l. 9. Even with these additional limitations, the “character as a whole” of each of these

4

claims remains directed to detecting and reporting a person’s activity level. The additional

5

limitations simply restrict the universe of possible implementations. Accordingly, the Court finds

6

that each of the asserted dependent claims is also directed to a patent-ineligible abstract idea.
Applying step two, the Court finds that none of the additional limitations adds an inventive

7
8

concept. Claim 25 limits communication with the “second electronic device” to wireless

9

communication that is “performed using a transmitter located within the band.” ’543 patent, col.
27 ll. 11-14. A transmitter is a generic component, and claim 25 recites nothing more than using it

11

United States District Court
Northern District of California

10

in a conventional way (i.e., wirelessly transmitting data). There is also nothing that is non-

12

conventional or non-generic about how it is combined with the rest of the method. The same is

13

true of claim 26, which depends on claim 25 and simply recites conventional functions that

14

transmitters perform. Id., col. 27 ll. 15-17. Claims 27 and 28 simply restrict the universe of

15

possible “second electronic device[s].” Id., col. 28 ll. 1-6. None of these provides an inventive

16

concept or adds “significantly more” than the abstract idea that the claims are directed to. Cf.

17

Alice, 134 S. Ct. at 2358 (“[T]he prohibition against patenting abstract ideas cannot be

18

circumvented by attempting to limit the use of [the idea] to a particular technological

19

environment.”) (quoting Bilski, 561 U.S. at 610-11, 130 S. Ct. at 3218). Claim 29 adds that the

20

motion detection component and the LEDs must be removable from the band. ’543 patent, col. 28

21

ll. 7-9. The ability to remove components from a wearable band is a relatively routine concept

22

that has been employed with wearable accessories for some time. This too does not rise to the

23

level of an inventive concept. Accordingly, none of the additional limitations in the dependent

24

claims recites an inventive concept, as required by step two. The asserted dependent claims, like

25

claim 20, fail to recite patent eligible subject matter under § 101.

26
27
28

B.

’812 Patent
Fitbit currently asserts claims 1-6, 9-15, 18-23, and 25-26 of the ’812 patent. Defendants

assert that claim 1 is representative of the asserted independent claims (claims 1, 9, 18, and 26),
21

1

Mot. 4, ECF 74, and Fitbit does not appear to dispute this point. Regardless, the Court, in

2

comparing the asserted independent claims on its own, does not find that they vary in any way that

3

would be substantial enough to change the patent-eligibility analysis. Accordingly, the Court will

4

analyze the asserted independent claims collectively.

5
6

i.

Step One

At step one, Defendants argue that the asserted claims are drawn to an abstract idea
because they do nothing more than recite several concepts which the Federal Circuit has already

8

deemed abstract: (1) transferring data from one place to another; (2) collecting data; and (3)

9

notifying a user. Mot. 13-14, ECF 74. Defendants argue that the claims’ additional requirement

10

of comparing activity data to a predetermined threshold does not make this subject matter more

11

United States District Court
Northern District of California

7

concrete because comparing activity to a “predetermined” level is essentially a mental process that

12

humans have long performed in sporting activities, such as counting the number of “outs” in

13

baseball. Id. at 14-15.

14

Fitbit responds that the asserted claims are not drawn to an abstract idea because they

15

recite a specific improvement in portable activity monitoring devices: a notification solution that

16

ensures that a user will receive the notification at the time he will be able to view and comprehend

17

it. Opp. 16-18, ECF 81. According to Fitbit, this solves problems specific to the world of portable

18

activity monitoring, where a user may not always be able to view notifications at certain times,

19

such as when he is asleep or when he is running. Id. at 16.

20

The Court agrees with Defendants. Although minor differences exist between each of the

21

asserted independent claims, they all contain similar basic elements: (1) receiving activity data

22

(directly or indirectly) from an activity monitoring device; (2) processing the activity data to

23

determine an “activity metric;” (3) comparing the “activity metric” against a “predetermined

24

threshold;” (4) when the threshold is reached and/or exceeded, scheduling a notification that will

25

appear at a particular date and time; (5) so displaying the notification; and (6) providing access to

26

an application for interfacing with the activity monitoring device. See ’812 patent, col. 25 ll. 23-

27

66, col. 26 ll. 14-64, col. 27 l. 11-col. 28 l. 5, col. 28 ll. 13-40. Assessing their “character as a

28

whole,” these claims are directed to collecting and analyzing information to detect a particular
22

1

condition, and notifying a user at a particular time when that condition is detected. They are not

2

directed to anything more technically specific—the claims do not focus on (or even recite) specific

3

algorithms or give technical details about structures that must be used to perform the claimed

4

functions. Instead, they focus on the high-level functions of collecting, analyzing, and notifying

5

themselves.

6

This focus is an abstract idea. As discussed above with respect to the ’543 patent,

7

“[c]ollecting information,” “analyzing information,” and “merely presenting the results of abstract

8

processes of collecting and analyzing information” all fall within the “realm of abstract ideas.”

9

Elec. Power Grp., 830 F.3d at 1353. Thus, these aspects of the claims’ focus—collecting
information, analyzing it to detect a condition, and notifying the user that the condition was

11

United States District Court
Northern District of California

10

detected—are also abstract. The Court also notes that the Federal Circuit’s decision FairWarning

12

IP is particularly instructive here, as the claims at issue there closely resemble the asserted

13

independent claims. Specifically, in FairWarning IP, the claims included the steps of “generating

14

a rule for monitoring audit log data . . . that is indicative of improper access of the patient’s

15

[protected health information],” “applying the rule to the audit log data to determine if an event

16

has occurred,” and “providing notification if the event has occurred.” 839 F.3d at 1092. Here too

17

the claims include the steps of defining a rule (a “predefined threshold” that an “activity metric” is

18

to reach/exceed), applying that rule to data (comparing the “predefined threshold” to an “activity

19

metric” calculated from “activity data”), and triggering a notification when that rule is satisfied

20

(triggering notification when the “activity metric” reaches/exceeds the “predefined threshold”).

21

The FairWarning IP court concluded that the claims were abstract because they directed to “a

22

combination of . . . abstract-idea categories,” id. at 1093-94, and this same reasoning applies here.

23

The only way in which the character of the asserted independent claims differs from

24

FairWarning IP is that it is also directed to displaying the notification at a particular date and

25

time. However, this too is an abstract idea. The idea of waiting until a particular point in time to

26

convey a message is an old concept, used for decades. For example, a secretary would collect

27

phone messages while his boss was in a meeting and provide them at the conclusion of the

28

meeting. Similarly, the front desk of a hotel would collect letters for a guest while he was out
23

1

during the day and provide them upon the guest’s return. The requirement of displaying a

2

notification at a particular date and time in the asserted independent claims is no less abstract.

3

Accordingly, the Court finds that the entirety of what the asserted independent claims are directed

4

to—collecting and analyzing information to detect a particular condition, and notifying a user at a

5

particular time when that condition is detected—is an abstract idea.

6

Fitbit nevertheless contends that the asserted claims are not drawn to an abstract idea

7

because, similar to the self-referential tables in Enfish, notifying the user at a particular point in

8

time constitutes a specific improvement in portable activity monitoring technology. Opp. 16-18,

9

ECF 81. The Court disagrees. As discussed above with respect to the ’543 patent, even if a claim
provides benefits to a particular technological field, this does not mean that it is directed to a

11

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10

specific, Enfish-like improvement to that technology. The claims at issue in Enfish and McRO

12

took an existing technology—computer databases and computer facial animation—and recited

13

something that itself improved how that technology worked. See Enfish, 822 F.3d at 1335 (self-

14

referential database tables improved computer databases); McRO, 837 F.3d at 1314 (specific,

15

automatic rules improved computer facial animation). There is no such analog here. For example,

16

restricting the time at which an activity notification is provided does not improve the way that

17

activity notification system itself works. Instead, this is an external modification that is separate

18

from the functioning of the notification system. The same can be said of other aspects of portable

19

activity monitoring technology: the claims do not focus on something that itself advances the

20

capabilities of an activity monitoring device, any mobile device it works in conjunction with, or

21

any processes they use to monitor physical activity. Instead, they are at most directed to an

22

“asserted advance[] in [a] use to which existing computer capabilities could be put.” Electric

23

Power Grp., 830 F.3d at 1354. As such, the claims fall outside the scope of Enfish and McRO.

24

Accordingly, they are directed to an abstract idea and fail step one of Alice/Mayo.

25

Turning to the asserted dependent claims, the Court finds that none of the additional

26

limitations introduced in these claims warrants a different conclusion on step one. These claims

27

add restrictions on certain functional aspects of the independent claims, such as types of

28

notification messages, id., col. 25 ll. 44-46, col. 26 ll. 39-41, col. 27 ll. 47-49 (claims 2, 10, and
24

1

22), types of activity metrics, id., col. 25 ll. 51-56, col. 26 ll. 49-53, col. 28 ll. 1-5 (claims 4, 13,

2

and 23), how the mobile device and activity monitoring device communicate, id., col. 25 ll. 47-50,

3

col. 26 ll. 42-45 (claims 3 and 11), how the notification message gets triggered or rendered, id.,

4

col. 26 ll. 46-48, col. 27 ll. 33-37, 43-46, col. 28 ll. 34-40 (claims 12, 19, 21, and 26), and the

5

content of the notification message, id., col. 25 ll. 58-66, col. 26 ll. 54-63 (claims 5, 6, 14, and 15).

6

However, none of these restrictions are substantial enough to change the focus of the claims.

7

Accordingly, the Court finds that the asserted dependent claims are also directed to an abstract

8

idea.

9
10

ii.

Step Two

Turning to step two, Defendants argue that the asserted claims fail to recite an inventive

United States District Court
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11

concept that would transform them into patent-eligible subject matter because they do nothing

12

more than recite functions in general terms, which effectively preempt the entire field of activity

13

tracking using thresholds and notifications. Mot. 15-16, ECF 74. Defendants also specifically

14

argue that limiting notifications to a certain date and time—the claim limitation which Fitbit added

15

during prosecution to overcome a § 101 rejection—is not an inventive concept, because it merely

16

restricts how notification (an abstract idea) is carried out, rather than transform it into something

17

patent-eligible. Id. Defendants also argue that the examiner’s statements in the notice of

18

allowance do not compel a different result because they conflict with current Federal Circuit case

19

law (including BASCOM and AmDocs, which issued after the notification of allowance). Id. at 17.

20

Fitbit responds that scheduling the notification for a certain date and time supplies an

21

inventive concept, because the examiner’s statement, interpreted in the light most favorable to

22

Fitbit, confirms that it was an unconventional addition to the claims at the time. Opp. 18-20, ECF

23

81. Fitbit also argues that it is an inventive concept under the rationale of DDR, because it

24

provides “an improved notification system for portable activity monitoring devices that addresses

25

the problem of notifications going unnoticed,” and is thus a solution “rooted in [portable activity

26

monitoring device] technology specifically arising in the realm of [portable activity monitoring

27

device] technology.” Id. at 20.

28

The Court begins with the asserted independent claims, examining the claim elements
25

1

“more microscopically” to determine whether any individual elements or their ordered

2

combination provides something sufficiently inventive to transform the claims into patent-eligible

3

subject matter. Elec. Power Grp., 830 F.3d at 1354. Analyzed separately, most of the claim

4

limitations do not come close to meeting this bar. They recite generic, black-box computing

5

functions, such as “receiving,” “processing,” “comparing,” and “display” applied to “activity

6

data”—they do not require “a new source or type of information, or new techniques for analyzing

7

it” or “any assertedly inventive programming.” Id. They also do not recite any new or inventive

8

components. Indeed, the only component(s) they require are “at least one processor” and there is

9

nothing about the recited functions that suggests anything other than the use of generic, off-theshelf computer components. These are not inventive concepts. FairWarning IP, 839 F.3d at 1096

11

United States District Court
Northern District of California

10

(citing DDR Holdings, 773 F.3d at 1256) (“[T]he use of generic computer elements like a

12

microprocessor or user interface do not alone transform an otherwise abstract idea into patent-

13

eligible subject matter.”). The claimed “activity monitoring device” is also generic, as the claims

14

simply name an “activity monitoring device” and the specification describes a wide range of

15

exemplary embodiments. See ’812 patent, col. 6 l. 34-col. 7 l. 46. Finally, the step of “providing

16

access to an application for interfacing with the activity monitor” is generic and insignificant post-

17

solution activity, as this refers to nothing more than allowing a user to open a software application,

18

which is part and parcel to a software-based notification system. Accordingly, these elements also

19

fail to provide an inventive concept.

20

The only aspect of the claims that presents a closer call is the notification scheduling

21

element. As an initial matter, the Court observes that the specific feature that Fitbit touts—

22

notification at a time when the user is able to appreciate it—is not reflected in the claim language

23

itself. The claims simply require notification at a “specified date and time,” not a “date and time

24

when the user is guaranteed to appreciate the message.” Instead, the latter largely appears to be

25

reserved for dependent claims 6, 7, 16, 17, 24, and 27—not asserted here—which actually require

26

“delaying presentation of the notification message, based on the identified current state of activity

27

of the user.” Id., col. 25 l. 67-col. 26 l. 14, col. 26 l. 64-col. 27 l. 10, col. 28 ll. 6-13, 41-48. The

28

specification underscores this point, as it makes clear that scheduling a notification for a particular
26

1

date and time and delaying a notification (which may have already been scheduled) until the user

2

can comprehend it are different processes. See id., col. 12 l. 66-col. 13 l. 4.
Nevertheless, it does appear that, when read in light of the specification and in the manner

4

most favorable to Fitbit, the “specified date and time” element does seem broad enough to at least

5

include instances where the “specified date and time” is selected such that it reflects a time when

6

the user is likely to notice the notification. For example, the specification discloses that, when

7

scheduling a notification for a specific date and time, the method can access “data obtained from a

8

calendar associated with the user [which] may indicate that a user is busy or occupied during a

9

specific time period . . . .”2 Id., col. 13 ll. 9-11. Thus, although the stop-gap of delaying

10

notification (which actually guarantees that, even if notification has been scheduled for a

11

United States District Court
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3

“specified date and time” when the user just so happens to be busy, he will still see the notification

12

at a convenient time) appears to fall outside the scope of the asserted claims, the “specified date

13

and time” element contemplates some awareness about the user’s activities.
Scheduling notifications to appear at a certain date and time, in and of itself, does not

14
15

supply an inventive concept. This limitation simply restricts the manner in which one part of the

16

methods are performed and has no transformative effect on the rest of the method. In addition, it

17

is a relatively conventional and obvious restriction to add, as restricting the time for delivery is a

18

practice that has long been associated with messages and notifications. As such, it amounts to

19

insignificant extra-solution activity, which is insufficient to provide an inventive concept. Mayo,

20

566 U.S. 66, 132 S. Ct. 1289, 1298 (“Purely ‘conventional or obvious’ ‘[pre]-solution activity’ is

21

normally not sufficient to transform an unpatentable law of nature into a patent-eligible

22

application of such a law.”). The Supreme Court and the Federal Circuit have rejected similar

23

elements as insufficiently transformative under step two. See, e.g., Mayo, 566 U.S. 66, 132 S. Ct.

24

1289, 1298 (step to “determine the level of the relevant metabolites in the blood” which was

25
26
27
28

2

The Court notes that it is also possible to read this portion of the specification as only describing
the mechanisms by which the invention determines whether it should “delay presentation of the
notification message”—the subject of unasserted claims 7, 8, 16, 17, 24, and 27. However,
viewing this material in the light most favorable to Fitbit, the Court cannot, at this stage, rule out
the possibility that this also refers to information that the methods could use when “scheduling the
notification message for display . . . at a specified date and time” in the first instance.
27

1

“well-understood, routine, conventional activity” that scientists routinely engaged in “as part of

2

their investigations into the relationships between metabolite levels and efficacy and toxicity of

3

thiopurine compounds” was insignificant pre-solution activity); Apple, Inc. v. Ameranth, Inc., 842

4

F.3d 1229, 1242 (Fed. Cir. 2016) (limitation restricting a method for generating restaurant menus

5

suitable for mobile/web ordering to certain types of ordering was insignificant post-solution

6

activity).

7

Further, on close inspection, the Court finds that there is nothing inventive about how

8

notification scheduling is implemented. The claims themselves do not require any particular

9

technical structure or algorithm for implementing this limitation, and the specification does not
fare better. Instead, the specification simply attributes notification scheduling to a black-box

11

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10

software component, the “notification scheduler,” which is only functionally described as

12

something that “schedule[s] the notification for rendering during a specified time window or

13

period of time.” ’812 patent, col. 12 ll. 61-62. Accordingly, notification scheduling requires

14

nothing more than generic, conventional components. This cannot supply an inventive concept.

15

Moving away from the individual claim elements, the Court turns to their ordered

16

combination to determine if it provides an inventive concept. The Court finds it does not.

17

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

18

arrangement of known, conventional pieces,” BASCOM, 827 F.3d at 1350, such is not the case

19

here. Instead, the claims follow a conventional order of how data is usually analyzed: data is first

20

received, then processed, then compared against a condition, and the notification is triggered when

21

the condition is met. Further, as with the ’543 patent, the claims here are distinguishable from

22

BASCOM and AmDocs because there is no unconventional insertion of technology. See Amdocs,

23

841 F.3d at 1301 (distributed network architecture inserted into billing data management solution);

24

BASCOM, 827 F.3d at 1350 (the ability of ISPs to associate traffic with certain accounts inserted

25

into content filtering solution). The only feature that comes close is the notification scheduling

26

element, if read to include the limited awareness that the “notification scheduler” possibly gains

27

by accessing information in a user’s calendar. However, this too is distinguishable because there

28

is no technical feature being inventively harnessed. Instead, it is simply claiming the use of
28

1

additional data sources in a scheduling decision. This is not an inventive concept. See

2

FairWarning IP, 839 F.3d at 1097 (“The mere combination of data sources, however, does not

3

make the claims patent eligible.”). This is especially true in the particular context of the ’812

4

patent, as consulting a calendar to determine an appropriate time to schedule an activity is ordinary

5

activity that one would predictably associate with scheduling. As such, it is most appropriately

6

characterized as “[p]urely ‘conventional or obvious’ ‘[extra]-solution activity’ [which] is normally

7

not sufficient to transform an unpatentable law of nature into a patent-eligible application of such

8

a law.” Mayo, 566 U.S. 66, 132 S. Ct. 1289, 1298. Accordingly, the ordered combination of

9

claim elements—including accounting for how notification scheduling is implemented—does not

10

United States District Court
Northern District of California

11

supply an inventive concept.
The examiner’s statements in the notice of allowance do not compel a contrary conclusion.

12

In considering prosecution history, the Court need not defer to the examiner’s conclusions on

13

patent eligibility, nor underlying observations regarding the state of the art. See Novo Nordisk A/S

14

v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346, 1357 (Fed. Cir. 2013) (“The initial determinations

15

by the PTO in determining to grant the application are entitled to no deference . . . . Rather, we

16

treat the issued patent as having a presumption of validity that must be overcome by clear and

17

convincing evidence.”); Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1322 (Fed. Cir. 2005)

18

(“[A] court is not bound by the PTO’s actions and must make its own independent determination

19

of patent validity.”); TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1329 (Fed. Cir.

20

2003) (“The examiner’s reasons for allowance are not beyond challenge.”). Instead, deference is

21

paid to the examiner through the presumption of validity, which includes the presumption that the

22

examiner acted properly in determining whether an application was entitled to a patent. Novo

23

Nordisk, 719 F.3d at 1357. Here, the Court finds it particularly fitting to depart from the

24

examiner’s reasoning, as it pre-dates BASCOM and AmDocs, both of which provide a more

25

exacting view of what qualifies as an “inventive concept.” It also pre-dates Federal Circuit

26

decisions that have rejected step two arguments that seem similar to one component of the

27

examiner’s reasoning—that a “particular useful application,” Ex. 11 to Mot. at 2, ECF 74-12,

28

qualifies as an “inventive concept.” See, e.g., Tranxition, No. 2015-1907, 2016 WL 6775967, at
29

1

*3 (rejecting step two argument that claimed invention was useful improvement over manual

2

process); FairWarning IP, 839 F.3d at 1096, (rejecting step two argument that claimed invention

3

“solve[d] technical problems unique to the computer environment and thus should be patent

4

eligible”). Accordingly, the Court need not bind itself to the examiner’s decision.

5

Fitbit also contends that the claims recite an inventive concept under DDR Holdings, as

6

they are “directed to a solution ‘rooted in [portable monitoring device] technology in order to

7

overcome a problem specifically arising in the realm of [portable monitoring devices],”

8

specifically, “the problem of notifications going unnoticed.” Opp. at 20, ECF 81. However, as

9

discussed above, this falls largely outside the subject matter of the asserted claims. Moreover, as
the Federal Circuit has later explained in distinguishing DDR Holdings, the claims at issue in DDR

11

United States District Court
Northern District of California

10

Holdings “require[d] an arguably inventive device or technique for displaying information.” Elec.

12

Power Grp., 830 F.3d at 1355; see also Synopsys, 839 F.3d at 1151-52 (describing the DDR

13

Holdings claims as “involv[ing] a technological solution” and distinguishing claims relating to

14

logic circuit design as “contain[ing] no such technical solution”). There is no similarly technical

15

solution here. The claims simply limit the timing of the notification by (in their most generous

16

reading) pulling in additional data sources. Accordingly, the Court finds that none of the asserted

17

independent claims recites an inventive concept.

18

Turning to the asserted dependent claims, the Court concludes that none of the additional

19

limitations introduced in these claims provides an inventive concept. All of these limitations

20

“simply append[] conventional steps specified at a high level of generality,” which does not make

21

an abstract idea patentable. DIRECTV, 838 F.3d at 1262-63 (quoting Mayo, 132 S.Ct. at 1300).

22

For example, claims 2, 4, 5, 6, 10, 13, 14, 15, 22, and 23 simply restrict the universe of

23

information that the claimed methods operate with as either input or output (e.g., types of

24

notification messages, types of activity metrics, content of the notification message), which are

25

conventional modifications to a notification system. In addition, claims 3, 11, 12, 19, 21, and 26

26

provide further restrictions on how some aspects of the claims work internally (e.g., how the

27

mobile device and activity monitoring device communicate or how the notification message gets

28

triggered or rendered), but none of these restrictions deviates from conventional modifications of
30

1

these functions. Accordingly, none of the dependent claims provides an inventive concept.

2

Because neither the asserted independent nor dependent claims recite an inventive concept,

3

the asserted claims of the ’812 patent fail step two. Accordingly, they are not patent-eligible under

4

§ 101.

5

C.

’971 Patent
Fitbit currently asserts independent claims 1 and 22, as well as dependent claims 25-28 of

6

the ’971 patent. Claim 1 is an apparatus claim which includes a “memory stor[ing] computer-

8

executable instructions” to perform certain actions, all of which are analogous to steps recited in

9

method claim 22. Claim 22, however, additionally includes the step of “providing user feedback .

10

. . .” For simplicity, the Court will begin its § 101 analysis by focusing on the features that claim 1

11

United States District Court
Northern District of California

7

and 22 have in common. Then, to the extent necessary, the Court will address the impact that the

12

additional “user feedback” limitation in claim 22 and the additional limitations recited in the

13

dependent claims have on the result.

14

i.

Step One

At step one, Defendants argue that the asserted claims are directed to “gathering and

15
16

storing heart rate data in response to user interaction,” which is simply the abstract idea of data

17

collection. Mot. 17, ECF 74. Defendants contend that the claims’ limitations on when data

18

collection is started and stopped do not render this less abstract, because they simply amount to

19

content filtering, which is also an abstract idea. Id. at 18. Defendants also posit that the claims

20

could be implemented by “putting one’s fingers over one’s wrist,” “counting the pulses, and then

21

stopping counting after thirty seconds or detection of a weaker or hurried heart beat,” illustrating

22

that the claims effectively preempt all forms of “taking one’s pulse for a set period of time.” Id. at

23

18-19.

24

Fitbit responds that Defendants’ characterization of the claims sweeps too broad, and that

25

the claims are instead directed to a “specific improvement to heart rate monitoring hardware and

26

algorithms to address the technical challenges of conserving battery life and allowing easy

27

initiation of a heart rate measurement at any time.” Opp. 22, ECF 25. In particular, Fitbit

28

contends that the claims’ use of an “activator” that receives a single-user gesture provides an
31

1

“unconventional and innovative” addition to the art, which overcame problems that then-existing

2

portable monitoring devices faced of having limited battery capacity (which was ill-suited for

3

continuous monitoring heart rate) and bulky user interfaces to control when heart rate should be

4

measured. Id. at 22-23. Fitbit argues that this constitutes a “specific structure” that directs the

5

claims to a “particular tool” for implementing an improvement, rather than an abstract idea itself.

6

Id. at 23. Fitbit also disagrees that the claims would preempt all forms of taking a person’s pulse

7

for a period of time, as the claims require specific structures—the activator and a heart rate

8

sensor—that are not used in manual pulse-taking methods. Id. at 23-24.
The Court agrees with Fitbit that Defendants’ characterization sweeps too broad.

9

Evaluating the claims in light of the specification for their “character as a whole,” the Court finds

11

United States District Court
Northern District of California

10

that the asserted claims are directed to a particular variant of heart rate data collection: selective

12

heart rate data collection through minimized user interaction (i.e., a “single user-gesture” trigger

13

and an automated “predetermined level of heart rate data quality” halting condition). The claims

14

make clear that, in the claimed apparatus and method, heart rate data is only gathered for a limited

15

period of time and that this time is bounded by specific conditions: a “single-user gesture” on one

16

end and reaching a predetermined level of heart rate data quality on the other. Both of these

17

conditions minimize the need for user input. Unlike the wearable band of the ’543 patent

18

discussed above, these restrictions comprise a substantial portion of the collective substance of the

19

claims and color their character as a whole. The specification confirms this, as it summarizes its

20

disclosure as “provid[ing] biometric monitoring devices with [a] [sic] convenient and user-friendly

21

heart rate monitoring function.” ’971 patent, col. 1 ll. 36-37. Rather than just providing an

22

ancillary tool with which the rest of the claim elements are accomplished, the heart of the claims

23

revolves around these user-input-minimizing conditions. That said, the Court notes that the

24

specification’s descriptions of these restrictions are broad—the specification discloses a wide

25

range of possible “single-user gesture[s]” 3 and simply describes the “predetermined level of heart

26
27
28

As discussed in the background section above, the specification states that “a ‘single usergesture’ is an action of a user relative to a single part of the apparatus, wherein the action is
interpreted by the apparatus as a single behavioral pattern” and can include “a single command,
shaking of the device, moving the device in a certain trajectory, e.g., a ‘figure 8’ trajectory, staring
32
3

1

rate data quality” as “a reliable heart rate reading.” Id., col. 20 ll. 12-17. Nevertheless, the

2

universe of embodiments implied by these descriptions still retains distinguishing characteristics

3

such that the claims remain scoped to a specific variant of heart rate data collection that is

4

inextricably bounded by certain user-input-minimizing conditions. Accordingly, the “focus” of

5

the claims should be so limited.

6

The question then becomes whether this focus—selective collection of heart rate data

7

through certain forms of minimized user interaction—constitutes an abstract idea. As discussed

8

above with respect to the ’543 and ’812 patents, “[c]ollecting information,” “analyzing

9

information,” and “merely presenting the results of abstract processes of collecting and analyzing
information” all fall within the “realm of abstract ideas.” Elec. Power Grp., 830 F.3d at 1353.

11

United States District Court
Northern District of California

10

There can be no doubt that simply collecting heart rate data falls within this category. Further,

12

simply restricting the time during which an activity is performed is an abstract idea. Modifying an

13

activity—including data collection—so that it is only performed for a limited period of time is

14

something that humans have done for years and, as such, is a basic building block of human

15

thought. Thus, the fact that the heart rate data collection here is selective and not continuous does

16

not make the focus of the claims less abstract. Finally, not all forms of minimizing user

17

interaction are non-abstract. Specifically relevant here, confining an “on” or “off” signal to a

18

single gesture is an abstract idea. From light switches to push buttons, many forms of input that

19

have been used for years require a single gesture. Thus, this too does not save the claims from

20

being directed to an abstract idea.

21

Nevertheless, viewed as a whole, the Court finds that the claims are directed to more than

22

just these abstract concepts. Rather than disembodied heart rate data collection (or similarly

23

abstract variants thereof), the claims are directed to a particular type of selective heart rate data

24

collection, which leverages a “single-user gesture” trigger and an automatic “predetermined level

25

of heart rate data quality” halting condition to restrict data collection in a way that minimizes the

26
27
28

at the apparatus or a particular portion of the apparatus (when the apparatus has gaze detection
function), bringing a body part into proximity with the apparatus, bringing an arm wearing a
wristband-type BMD from a downwards-extended position to a viewing position, twisting the
wrist wearing a BMD implemented as wrist band, etc.” ’971 patent, col. 13 ll. 41-43, 45-55.
33

1

need for user input. In this sense, the claims of the ’971 patent are distinguishable from the claims

2

of the ’543 and ’812 patents, as they focus not just on data collection (and reporting), but a

3

specific, improved form of data collection.

4

This focus constitutes a “specific asserted improvement in [heart rate monitor]

5

capabilities.” Enfish, 822 F.3d at 1335. As the specification of the ’971 patent describes, then-

6

“existing devices that measure[d] momentary heart rate require[d] cumbersome user interaction to

7

take the measurement . . . .” ’971 patent, col. 1 ll. 32-34. By automating the point at which data

8

collection stops and combining that with a single-gesture trigger, the ’971 claims focus on an

9

improvement to heart rate monitors as a technological tool, which overcomes the problem of bulky
user interfaces and provides a way to more easily and efficiently gather a selective heart rate

11

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Northern District of California

10

reading. Rather than requiring multiple clicks through a menu, the ’971 claims allow a user to

12

trigger a reading with a single gesture, and then trust that a reliable heart rate reading will be

13

collected. This improvement at least in part stems from an inherently technological feature—the

14

ability of a heart rate monitor to determine when the data it is collecting reaches a certain

15

quality—which is inextricably tied to the mechanisms by which it collects data. And, in turn, it

16

makes it easier for a user to perform selective heart rate readings, which diminishes the need to run

17

the heart rate monitor continuously and saves battery life. See id., col. 20 ll. 9-12 (“the device

18

automatically stops the heart rate sensor from collecting further data after one or more criteria are

19

met, thereby minimizing battery consumption”).

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So assessed, the claims here parallel those at issue in Enfish. In Enfish, the Federal Circuit

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found that the claims at issue were “not simply directed to any form of storing tabular data, but

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instead [were] specifically directed to a self-referential table for a computer database,” which

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“functions differently than conventional database structures.” 822 F.3d at 1337. The same can be

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said for the claims at issue here. The incorporation of an “activator” to start heart rate data

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collection when there is a “single user gesture” and logic to stop heart rate data collection when a

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“predetermined level of heart rate data quality” is reached improve a specific technological tool (a

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heart rate monitor). Further, the improved tool functions differently than conventional heart rate

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monitors, which require multiple clicks through bulky user interfaces to start and stop data
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collection. See ’971 patent, col. 1 ll. 32-35. As such, it is more closely characterized as a

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“specific asserted improvement in [heart rate monitor] capabilities” instead of “on a process that

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qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, 822 F.3d

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at 1335-36.
The Federal Circuit’s decision in McRO also provides helpful guidance. There, the Federal

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Circuit found that the claims “focused on a specific asserted improvement in computer animation,

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i.e., the automatic use of rules of a particular type.” 837 F.3d at 1314. Helpful to the Court’s

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analysis was that “[i]t is the incorporation of the claimed rules, not the use of the computer, that

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‘improved [the] existing technological process’ by allowing the automation of further tasks.” Id.
The same could be said for the claims here. It is the incorporation of the input-minimizing

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United States District Court
Northern District of California

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features—the “single user gesture” trigger and “predetermined level of heart rate data quality”

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halting condition—that provide the improvement to heart rate monitors, not any particular

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electronic component with which these features are implemented. This helps illustrate that the

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invention itself focuses on an improvement in [heart rate monitors], not just the use of [heart rate

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monitors] as tools in the aid of a process focused on an abstract idea.” DIRECTV, 838 F.3d at

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1262.
The Court notes, however, that this case presents a closer call than Enfish or McRO. In its

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§ 101 jurisprudence, the Federal Circuit has found that claims fail step one when they are “entirely

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functional in nature” and are “untethered to any specific or concrete way of implementing it.”

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DIRECTV, 838 F.3d at 1258. This is because such result-focused, functional claims are “drawn to

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the idea [of the result] itself,” rather than a specific implementation of that result. See id. The

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claims at issue come dangerously close to this: as noted above, the specification discloses a wide

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range of possible “single-user gesture[s]” and simply describes the “predetermined level of heart

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rate data quality” as “a reliable heart rate reading.”4 ’971 patent, col. 20 ll. 12-17. In addition,

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Defendants contend that the specification’s description of “automatically stop[ping] data
collection after a set period of time, such as about 3 seconds, 5 seconds, 10 seconds, 20 seconds,
40 seconds, 1 minute, or 2 minutes,” id., col. 20 ll. 12-15, also applies to this claim element. The
Court disagrees, as the claim language plainly requires a stopping condition based on “data
quality” and a stopping condition based on time elapsed is not this.
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simply minimizing user interaction is a result. Nevertheless, when viewed collectively and read in

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light of the specification and in the manner most favorable to Fitbit, the Court finds that the claims

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provide enough details about how to implement the claimed improvement such that they are more

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similar to Enfish than DIRECTV. Specifically, the claims require that the “single user gesture” is

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detected by an “activator.” Id., col. 41 ll. 28-29. The specification ties the activator to a broad but

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concrete class of structures, which require touch or proximity to be triggered. For example, it can

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be a “biometric sensor, such as an accelerometer,” a “button,” “pressure or touch sensitive sensor,

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e.g., capacitive touch, resistive touch, ultrasonic touch, etc., or a proximity sensor, e.g., infrared,

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capacitive, etc.” Id., col. 8 ll. 59-63, col. 14 ll. 50-54. This class is further restricted for claim 1,

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which requires that the activating signal is received through “the activator surface area.” Id., col.

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United States District Court
Northern District of California

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41 ll. 25-29, col. 43 ll. 8-9. Taken together with the “predetermined level of heart rate data

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quality” halting condition, these requirements take the focus of the claims out of a more results-

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oriented realm of minimizing user interaction in heart rate data collection to specifically claim a

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way of doing this: using a single-user gesture and an automatic, data quality-driven stopping

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condition. These limitations may be so broad as to raise enablement or novelty concerns, but they

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do not prevent the claims from being directed to a “specific asserted improvement in [heart rate

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monitor] capabilities.” Enfish, 822 F.3d at 1335. Accordingly, the clams are directed to a specific

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improvement in technology under Enfish and are not directed to an abstract idea under step one.

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Because the common limitations that the asserted independent claims share are sufficient

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to find them patent eligible, the Court need not consider the additional “user feedback” limitation

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in claim 22. For this same reason, the Court also need not consider the additional limitations of

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dependent claims 25-28. Instead, the character of the whole of all of these claims is at least as

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concrete as selective collection of heart rate data through certain forms of minimized user

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interaction; thus, they are not directed to patent-ineligible subject matter.

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ii.

Step Two

Having found that the claims are not directed to an abstract idea under step one, the Court
need not reach step two. It declines to do so here.

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V.

CONCLUSION
For the foregoing reasons, the Court concludes that the asserted claims of the ’543 and

’812 patents are patent-ineligible under 35 U.S.C. § 101 because they are directed to abstract ideas
and do not recite any inventive concepts. The asserted claims of the ’971 patent, however, are not

4
directed to an abstract idea and are not patent-ineligible. Accordingly, the Court GRANTS IN
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PART and DENIES IN PART Defendants’ motion for judgment on the pleadings.
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IT IS SO ORDERED.
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Dated: March 2, 2017
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______________________________________
BETH LABSON FREEMAN
United States District Judge

United States District Court
Northern District of California

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