Asserted Claims of Two of Three Challenged Fitbit Patents Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion for judgment on the pleadings because the asserted claims of plaintiff’s physical activity detection patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] argues that Defendants’ conception of the asserted claims is too high-level, and overlooks the fact that they claim a specific structure (e.g., a wearable band with a motion detection component and LEDs) that provides this technological improvement. The Court agrees with Defendants that claim 20 is directed to an abstract idea. . . . [T]he wearable band with a motion detection component and LEDs 'merely provide a generic environment in which to carry out the [] idea of [collecting and reporting data on cumulative physical activity].' This adds little to the substance of the claim. Instead, the focus remains on the collecting and reporting functions themselves. So characterized, the 'character as a whole' of claim 20 is an abstract idea."

Fitbit Inc. v. AliphCom et al., 5-16-cv-00118 (CAND March 2, 2017, Order) (Freeman, USDJ)

---

The court granted defendant's motion for judgment on the pleadings because the asserted claims of plaintiff’s physical activity monitoring notification patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] responds that the asserted claims are not drawn to an abstract idea because they recite a specific improvement in portable activity monitoring devices: a notification solution that ensures that a user will receive the notification at the time he will be able to view and comprehend it. . . . Assessing their 'character as a whole,' these claims are directed to collecting and analyzing information to detect a particular condition, and notifying a user at a particular time when that condition is detected. They are not directed to anything more technically specific -- the claims do not focus on (or even recite) specific algorithms or give technical details about structures that must be used to perform the claimed functions. Instead, they focus on the high-level functions of collecting, analyzing, and notifying themselves. This focus is an abstract idea."

Fitbit Inc. v. AliphCom et al., 5-16-cv-00118 (CAND March 2, 2017, Order) (Freeman, USDJ)

---

The court denied defendant's motion for judgment on the pleadings that the asserted claims of plaintiff’s biometric monitoring device patent encompassed unpatentable subject matter because the claims were not directed toward an abstract idea. "Evaluating the claims in light of the specification for their 'character as a whole,' the Court finds that the asserted claims are directed to a particular variant of heart rate data collection: selective heart rate data collection through minimized user interaction. . . . [T]hese restrictions comprise a substantial portion of the collective substance of the claims and color their character as a whole. . . . By automating the point at which data collection stops and combining that with a single-gesture trigger, the [patent] claims focus on an 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 reading."

Fitbit Inc. v. AliphCom et al., 5-16-cv-00118 (CAND March 2, 2017, Order) (Freeman, USDJ)

Post-IPR Estoppel Not Limited by Joinder​

The court granted plaintiff's motion for summary judgment that its server load balancing patents were not invalid as obvious because defendant was estopped from asserting its prior art combinations following inter partes review. "[Defendant] seeks to invalidate the asserted claims based on prior art combinations of which it was aware before it filed its IPR petitions. . . . In [defendant's] view, the fact that it sought joinder with [another petitioner's] IPR proceedings means that it would have been unreasonable for it to have raised any invalidity arguments that were not presented in [the other petitioner's] IPR. Despite [defendant's] claims to the contrary, there is no 'mirror image' rule for joinder. To the contrary, the cases [defendant] cites for support explicitly contemplate that requests for joinder can involve petitions that assert different grounds of invalidity. . . . Allowing [defendant] to raise arguments here that it elected not to raise during the IPR would give it a second bite at the apple and allow it to reap the benefits of the IPR without the downside of meaningful estoppel."

Parallel Networks Licensing LLC v. International Business Machines Corporation, 1-13-cv-02072 (DED February 22, 2017, Order) (Jordan, CJ)

Foreign Language Documents Not Exempt From Discovery Obligations​

The court partially granted plaintiff's motion to compel the production of defendant's communications with third parties that referred to plaintiff or the patent-in-suit and rejected defendant's argument that it was not obligated to produce foreign language documents. "[Defendant] argues that it is not obligated to translate documents from Mandarin to English to determine whether the documents are responsive to these and other discovery requests. Its counsel cites no authority supporting this position. Courts have held that the producing party has no obligation to translate documents produced in discovery into English, but I have not located any authority for the proposition that a party can avoid producing documents responsive to a discovery request that are in a foreign language. Accordingly, [defendant] cannot avoid producing responsive documents merely because its counsel cannot comprehend the documents written in a foreign language."

TASER International, Inc. v. PhaZZer Electronics, Inc. et al, 6-16-cv-00366 (FLMD February 28, 2017, Order) (Spaulding, MJ)

District Court Verdicts in 2016

---

Internet Advertising Patent Not Directed to Financial Product or Service​

The Board denied institution of covered business method review of a patent directed to a system for delivery of targeted advertisements, finding the patent was not directed to a financial product or service. "[Petitioner] contends the independent claims 20 and 25 each recite features relating to the presentation and monetization of advertisements. . . . We agree with [patent owner] that, based on the Federal Circuit’s new guidance in [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016)] [petitioner] has not demonstrated that at least one challenged claim of the ’651 patent is directed to a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. . . .We agree with [petitioner] that these claims generally apply to Internet advertising. The Federal Circuit, however, explained in Unwired Planet that claims broad enough in scope to cover the facilitation of advertisement, without more, are not enough to justify concluding that a patent is a covered business method patent eligible for review. . . . [A]lthough Internet advertising might lead to a sale of a good or service, mere probabilities or possibilities fall short of demonstrating operations necessarily used in the practice, administration, or management of a financial product or service."

Petition for Covered Business Method Patent Review by Google Inc., CBM2016-00096 (PTAB February 27, 2017, Order) (Zecher, APJ)

On-Line Registration Patent Not Directed to Financial Product or Service

​ The Board denied institution of covered business method review of a patent directed to on-line or web-site registration, finding the patent was not directed to a financial product or service. "[O]ur focus is on what the ’792 patent claims, not solely the exemplary embodiments described in the Specification, some of which are related to finance and some of which are not. . . . Petitioner argues that [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016)] requires the Board to 'strike the proper balance between (1) an invention of general usage that could also be used in the administration of a financial service and (2) an invention that is used in administration of a financial service but that could also be used for non-financial purposes.' Petitioner, however, does not quote anything in Unwired Planet for this proposition, which appears to contradict the Federal Circuit’s direction that covered business method patents 'are limited to those with claims that are directed to methods and apparatuses of particular types and with particular uses ‘in the practice, administration, or management of a financial product or service,’' and '[i]t is not enough that a sale . . . may occur, or even that the specification speculates such a potential sale might occur.'"

Petition for Covered Business Method Patent Review by Twilio, Inc., CBM2016-00099 (PTAB February 27, 2017, Order) (Arbes, APJ)

Targeted Advertisement Patent Not Directed to Financial Product or Service​

The Board denied institution of covered business method review of a patent directed to a system for delivery of targeted advertisements, finding the patent was not directed to a financial product or service. "According to Petitioner, the systems and methods for delivering targeted advertisements are financial in nature because someone receives money to deliver advertisements about a product or service. . . .We agree with Patent Owner that, based on the Federal Circuit’s new guidance in [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016)], Petitioner has not demonstrated that the challenged claims of the ’393 patent are directed to a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. . . . An advertisement is not considered an 'offer for sale' under traditional contract law and it does not require or guarantee a sale or any financial transaction will occur. . . . Although targeted advertising might lead to a sale of a good or service, mere probabilities or possibilities fall short of demonstrating operations necessarily used in the practice, administration, or management of a financial product or service."

Petition for Covered Business Method Patent Review by Google Inc., CBM2016-00097 (PTAB February 27, 2017, Order) (Braden, APJ)