Fitbit, Inc. v. AliphCom et al, No. 5:2015cv04073 - Document 122 (N.D. Cal. 2017)

Court Description: ORDER DENYING 88 DEFENDANTS' MOTION FOR JUDGMENT ON THE PLEADINGS. Signed by Judge Edward J. Davila on 2/9/2017. (patentlcsjS, COURT STAFF) (Filed on 2/9/2017)
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 FITBIT, INC., Case No. 15-cv-04073-EJD Plaintiff, 9 ORDER DENYING DEFENDANTS' MOTION FOR JUDGMENT ON THE PLEADINGS v. 10 11 ALIPHCOM, et al., Re: Dkt. No. 88 United States District Court Northern District of California Defendants. 12 13 Presently before the Court is Defendants AliphCom d/b/a Jawbone and Bodymedia, Inc.’s 14 15 (collectively “Defendants” or “Jawbone”) motion for judgment on the pleadings that U.S. Patent 16 Nos. 9,026,053 (the “’053 patent”), 9,106,307 (the “’307 patent”), and 9,048,923 (the “’923 17 patent”) (collectively, the “patents-in-suit”) are invalid for failure to claim patent-eligible subject 18 matter under 35 U.S.C. § 101. Dkt. No. 88. For the reasons discussed below, the Court DENIES 19 Jawbone’s motion. 20 21 I. BACKGROUND The parties are health and fitness companies that both sell wearable activity trackers. In 22 general, wearable activity trackers are small, lightweight devices that track a user’s activities 23 throughout the day, such as how many steps the user takes, how long the user sleeps, and how 24 many calories the user has burned. The devices can then be connected to a user’s computer or 25 smartphone, where they upload the data they collect. The user can then view this data through an 26 application or website, and analyze it for trends, set or track progress on fitness goals, and share 27 their activities with friends through social networking. 28 1 Case No.: 15-cv-04073-EJD ORDER DENYING DEFENDANTS’ MOTION FOR JUDGMENT ON THE PLEADINGS 1 In order for data to be seamlessly transmitted between the device and the smartphone, the 2 devices are often “paired” to the user’s smartphone or computer before first use. Pairing sets up a 3 unique system of contact between the device and the smartphone or computer such that the two 4 can automatically synchronize data whenever they are connected, without requiring intervention 5 from the user. For example, a Bluetooth-enabled device that is paired to a Bluetooth-enabled 6 smartphone will automatically upload data whenever it comes within range of the smartphone. Fitbit’s asserted patents relate to a specific approach to pairing a wireless device, such as a 8 wearable activity tracker, to a “client” and/or “server.” All three patents are entitled “System and 9 Method for Wireless Device Pairing” and share the same specification. The ’053 patent was filed 10 first, on February 17, 2013, and the ’923 and ’307 patents were filed as divisional applications on 11 United States District Court Northern District of California 7 December 24, 2013 and March 27, 2014, respectively. The ’053 patent issued on May 5, 2015, 12 the ’923 patent issued on June 2, 2015, and the ’307 patent issued on August 11, 2015. 13 All of the asserted claims recite a method or system for pairing that involves three discrete 14 entities: a portable monitoring device, a “client,” and a “server.” ’053 patent, col. 14 l. 63-col. 16 15 l. 4; ’923 patent, col. 15 ll. 2-49; ’307 patent, col. 15 ll. 2-47, col. 17 l. 30-col. 18 l. 16. Figure 1 16 illustrates the interaction between these three actors: 17 18 19 20 21 22 23 24 25 26 27 28 2 1 Figures 13 and 14 illustrate the pairing process: 2 3 4 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 This process begins when a user enters account login information (e.g., creates an account or logs 23 into an existing account) in the client. ’053 patent, col. 9 l. 65-col. 10 l. 54, figs. 13, 14. Next, the 24 client sends a signal to the server to indicate that the pairing process has been triggered, and the 25 server sends back a user interface or user data for use in the pairing process. Id. The client then 26 wirelessly detects nearby monitoring device(s), requests response(s) from these device(s), and then 27 sends those response(s) to the server. Id. The server then sends back the list of responsive 28 device(s) that are eligible for pairing (because, for example, they are not already paired with 3 1 another user account, they are compatible with the user’s account, etc.). Id. The client then sends 2 the eligible device(s) a request to pair. Id. These device(s) then cue the user, who “taps” the 3 particular device they wish to pair. Id. The “tapped” device identifies itself to the client, and the 4 client and server complete the pairing process. Id. 5 6 The asserted independent claims generally follow this process. For example, claim 1 of the ’053 patent recites: 7 1. A wireless communication method comprising: 8 a first portable biometric device and a second device communicating wirelessly to initiate a pairing process between the first portable biometric device and the second device, wherein the first portable biometric device comprises, at least one sensor, and wireless communication circuitry in a unit suitable to be worn by a moving human device user, wherein initiating the pairing process comprises, the second device receiving user login information to log the user into a user account; 9 10 United States District Court Northern District of California 11 12 13 the second device sending a signal to a server that indicates the start of the pairing process; 14 the server sending a user interface for pairing to the second device; 15 the second device wirelessly detecting the first biometric device, and requesting a response from the first biometric device; 16 17 18 19 20 21 22 23 24 25 26 27 28 the second device receiving a response from the first biometric device, including a device identification; in response to the second device forwarding the received response to the server, the server sending a list of detected devices eligible for pairing to the second device; and when the first biometric device is on the list of detected devices, the second device sending a command to the first biometric device to enter pairing mode; the first portable biometric device generating a cue to the first portable biometric device user requesting the first portable biometric device user to validate the pairing between the first portable biometric device and the second device; the first portable biometric device receiving input from the user indicating the user's agreement to validate the pairing request, wherein input comprises tapping only the first portable biometric device one or more times anywhere on its exterior; the first portable biometric device detecting the tapping using a motion sensor; 4 the first portable biometric device responding to the user input by remotely signaling the second device to complete the pairing process; 1 2 the second device and the first portable biometric device remotely communicating to complete the pairing process, wherein the first portable biometric device and a second device are remote from each other throughout the pairing process, after which the first portable biometric device and the second device are able to recognize each other; and 3 4 5 the first portable biometric device and the second device automatically communicating to wirelessly exchange data subsequent to pairing when the first portable biometric device and the second device are within wireless communication range; 6 7 8 9 wherein data comprises sensor data collected and stored by the first portable biometric device ’053 patent, col. 14 l. 63-col. 16 l. 5. 10 United States District Court Northern District of California 11 12 13 14 II. LEGAL STANDARDS A. Motion for Judgment on the Pleadings Federal Rule of Civil Procedure 12(c) provides that “[a]fter the pleadings are closed—but early enough not to delay trial—a party may move for judgment on the pleadings.” A Rule 12(c) motion challenges the legal sufficiency of the opposing party’s pleadings. Judgment on the 15 pleadings is appropriate when, even if all material facts in the pleading under attack are true, the 16 moving party is entitled to judgment as a matter of law. Fleming v. Pickard, 581 F.3d 922, 925 17 (9th Cir. 2009). 18 19 20 21 22 23 24 On a motion for judgment on the pleadings, “all material allegations in the complaint are accepted as true and construed in the light most favorable to the non-moving party.” Turner v. Cook, 362 F.3d 1219, 1225 (9th Cir. 2004). “[A]ll reasonable inferences” must be made “in favor of the nonmoving party.” Mediran v. International Ass’n of Machinists and Aerospace Workers, No. C09–0538 TEH, 2011 WL 2746601, at *2 (N.D. Cal. July 14, 2011). “When considering a motion for judgment on the pleadings, this court may consider facts that ‘are contained in materials of which the court may take judicial notice.’” Heliotrope General, Inc. v. Ford Motor 25 Co., 189 F.3d 971, 981, n .18 (9th Cir. 1999) (citation omitted). A motion for judgment on the 26 pleadings may be granted if, after assessing the complaint and matters for which judicial notice is 27 proper, it appears “beyond doubt that the [non-moving party] cannot prove any facts that would 28 5 1 support his claim for relief.” Morgan v. County of Yolo, 436 F.Supp.2d 1152, 1155 (E.D. Cal. 2 2006). In other words, the standard for a Rule 12(c) motion is essentially the same as that for a 3 Rule 12(b)(6) motion. Chavez v. United States, 683 F.3d 1102, 1108 (9th Cir. 2012). 4 5 6 B. Patent Eligibility Under § 101 i. The Mayo/Alice Framework 35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process, 7 machine, or composition of matter, or any new and useful improvement thereof, may obtain a 8 patent therefor, subject to the conditions and requirements of this title.” However, the Supreme 9 Court has recognized that these broad categories contain an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Ass’n for Molecular Pathology v. 11 United States District Court Northern District of California 10 Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 186 L. Ed. 2d 124 (2013) (internal quotation marks 12 and citation omitted). 13 To determine whether a claim falls outside this exception, the Supreme Court has 14 established a two-step framework: First, the court must “determine whether the claims at issue are 15 directed to a patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, ––– U.S. ––––, 16 134 S. Ct. 2347, 2355, 189 L. Ed. 2d 296 (2014). Second, if the claims are directed to patent- 17 ineligible subject matter, the Court must “consider the elements of each claim both individually 18 and ‘as an ordered combination’ to determine whether the additional elements ‘transform the 19 nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. 20 Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1298, 1297, 182 L. Ed. 2d 321 (2012)). The 21 Supreme Court has described this as a “search for an ‘inventive concept’—i.e., an element or 22 combination of elements that is ‘sufficient to ensure that the patent in practice amounts to 23 significantly more than a patent upon the [ineligible concept] itself.’” Id. 24 ii. Step One 25 In evaluating step one, “the ‘directed to’ inquiry applies a stage-one filter to claims, 26 considered in light of the specification, based on whether ‘their character as a whole is directed to 27 excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) 28 (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). 6 1 The Federal Circuit has also described this inquiry as an evaluation of the “focus” or “basic thrust” 2 of the claims. See Enfish, 822 F.3d at 1335-36; BASCOM Glob. Internet Servs., Inc. v. AT&T 3 Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). The Federal Circuit has recognized that this 4 process sometimes involves “close calls about how to characterize what the claims are directed 5 to.” BASCOM, 827 F.3d at 1349. Courts must tow the fine line between assessing a claim’s 6 “character as a whole” and “describing the claims at such a high level of abstraction and 7 untethered from the language of the claims [such that it] all but ensures that the exceptions to § 8 101 swallow the rule.” Enfish, 822 F.3d at 1335, 1337. 9 To date, the Federal Circuit has provided two examples of software claims that are not directed to an abstract idea. First, in Enfish, the Federal Circuit determined that claims directed to 11 United States District Court Northern District of California 10 a specific type of self-referential table for a computer database were not abstract because they 12 focused “on the specific asserted improvement in computer capabilities (i.e., the self-referential 13 table for a computer database)” instead of “a process that qualifies as an ‘abstract idea’ for which 14 computers are invoked merely as a tool,” they were not directed to an abstract idea. Id. at 1335- 15 36, 1339. Second, in McRO, Inc. v. Bandai Namco Games Am. Inc., the Federal Circuit found that 16 patents that automated part of a preexisting method for 3-D facial expression animation were not 17 abstract because they “focused on a specific asserted improvement in computer animation, i.e., the 18 automatic use of rules of a particular type.” 837 F.3d 1299, 1314 (Fed. Cir. 2016). 19 However, not all claims relating to computer technologies are not abstract. Where the 20 focus of the claims is on “certain independently abstract ideas that use computers as tools” instead 21 of “an improvement in computers as tools,” claims may fail step one. See, e.g., Affinity Labs of 22 Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (claims relating to 23 “deliver[ing] content to a handheld wireless electronic device” were directed to an abstract idea 24 because they claimed “the general concept of out-of-region delivery of broadcast content through 25 the use of conventional devices, without offering any technological means of effecting that 26 concept”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1140, 1149 (Fed. Cir. 2016) 27 (claims related to logic circuit design in computer hardware were “drawn to the abstract idea of: 28 translating a functional description of a logic circuit into a hardware component description of the 7 1 logic circuit” because “they are so broad as to read on an individual performing the claimed steps 2 mentally or with pencil and paper”); Tranxition, Inc. v. Lenovo (United States) Inc., No. 2015- 3 1907, 2016 WL 6775967, at *3 (Fed. Cir. Nov. 16, 2016) (claims relating to migration of 4 computer settings were directed to an abstract idea because “manual migration is an abstract idea” 5 and the claims merely “automate[d] the migration of data between two computers”). Restricting 6 older, abstract ideas to certain technological environments also does not make them not abstract. 7 See, e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) 8 (observing that ineligible claims “merely implement an old practice in a new environment”). 9 Thus, non-abstract claims that “improve the functioning of the computer itself,” Alice, 134 S. Ct. at 2359, or are otherwise “directed to an improvement of an existing technology,” Enfish, 822 F.3d 11 United States District Court Northern District of California 10 at 1337, such as those in Enfish and McRO, remain a narrow class. 12 13 iii. Step Two In assessing step two, courts must “consider the elements of each claim both individually 14 and ‘as an ordered combination’” and assess whether there are any “additional features” in the 15 claims that constitute an “inventive concept.” Alice, 134 S. Ct. at 2357. This inventive concept 16 “must be significantly more than the abstract idea itself,” BASCOM, 827 F.3d at 1349, “must be 17 more than well-understood, routine, conventional activity,” DIRECTV, 838 F.3d at 1262, “and 18 cannot simply be an instruction to implement or apply the abstract idea on a computer.” 19 BASCOM, 827 F.3d at 1349. For example, it may be found in an “inventive set of components or 20 methods,” “inventive programming,” or an inventive approach in “how the desired result is 21 achieved.” Elec. Power Grp., 830 F.3d at 1355. 22 The Federal Circuit has found an inventive concept in several cases. First, in DDR 23 Holdings, LLC v. Hotels.com, L.P., the Federal Circuit found that claims that addressed the 24 “Internet-centric problem” of third-party merchant advertisements that would “lure . . . visitor 25 traffic away” from a host website (because clicking on the advertisement would redirect the visitor 26 to the merchant’s website) amounted to an inventive concept. 773 F.3d 1245, 1248, 1259 (Fed. 27 Cir. 2014). This was so, the Federal Circuit reasoned, because the claims “specify how 28 interactions with the Internet are manipulated to yield a desired result” such that the interactions 8 1 are “not merely the routine or conventional use of the Internet.” Id. at 1259. Second, in 2 BASCOM, the Federal Circuit found that the claims directed to Internet content filtering recited the 3 inventive concept of “install[ing] a filtering tool at a specific location, remote from the end-users, 4 with customizable filtering features specific to each end user.” 827 F.3d at 1350. The court 5 reasoned that “an inventive concept can be found in the non-conventional and non-generic 6 arrangement of known, conventional pieces.” Id. The court found this to be the case there 7 because the patents claimed a specific type of content filtering that took advantage of an ISP 8 server’s ability to associate internet requests with user accounts. Id. Third, in Amdocs (Israel) 9 Ltd. v. Openet Telecom, Inc., the Federal Circuit found that claims relating to solutions for managing accounting and billing data over large, disparate networks recited an inventive concept 11 United States District Court Northern District of California 10 because they contained “specific enhancing limitation[s] that necessarily incorporates the 12 invention’s distributed architecture—an architecture providing a technological solution to a 13 technological problem.” 841 F.3d 1288, 1301 (Fed. Cir. 2016). Use of this “distributed 14 architecture” transformed the claims into patentable subject matter. Id. 15 Nevertheless, not all technological aspects of how a patented invention is implemented 16 supply a basis for finding an “inventive concept.” A claim that simply takes an abstract idea and 17 adds “the requirement to perform it on the Internet, or to perform it on a set of generic computer 18 components . . . would not contain an inventive concept.” BASCOM, 827 F.3d at 1350. For 19 example, in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, the Federal 20 Circuit found that claims directed to the abstract ideas of extracting data and recognizing patterns 21 did not recite an inventive concept because they simply recited “generic scanner and computer to 22 perform well-understood, routine, and conventional activities commonly used in industry.” 776 23 F.3d 1343, 1348 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119, 193 L. Ed. 2d 208 (2015). 24 Similarly, in DIRECTV, the court found there was no inventive concept because “[t]he claim 25 simply recites the use of generic features of cellular telephones, such as a storage medium and a 26 graphical user interface, as well as routine functions, such as transmitting and receiving signals, to 27 implement the underlying idea.” 838 F.3d at 1262. Limiting the field of use to a particular 28 technological environment also does not supply an inventive concept. Alice, 134 S. Ct. at 2358 9 1 (noting that, under step two, “limiting the use of an abstract idea ‘to a particular technological 2 environment’” “is not enough for patent eligibility”). For example, in buySAFE, Inc. v. Google, 3 Inc., the Federal Circuit found that patent-ineligible claims relating to transaction guarantees could 4 not be saved from ineligibility because they were restricted to online transactions, as “[a]t best, 5 that narrowing is an ‘attempt[] to limit the use’ of the abstract guarantee idea ‘to a particular 6 technological environment,’ which has long been held insufficient to save a claim in this context.” 7 765 F.3d 1350, 1355 (Fed. Cir. 2014). Accordingly, the search for an inventive concept remains 8 one that court must approach cautiously, “scrutiniz[ing] the claim elements more microscopically” 9 than in step one. Elec. Power Grp., 830 F.3d at 1354. 10 United States District Court Northern District of California 11 iv. Preemption In addition to these principles, several other considerations may be helpful in conducting a 12 § 101 analysis: First, the Supreme Court has recognized that the “concern that undergirds [the] 13 § 101 jurisprudence” is preemption. Alice, 134 S. Ct. at 2358. If a claim is so abstract so as to 14 “pre-empt use of [the claimed] approach in all fields, and would effectively grant a monopoly over 15 an abstract idea” is not patent-eligible. Bilski v. Kappos, 561 U.S. 593, 612, 130 S. Ct. 3218, 16 3231, 177 L. Ed. 2d 792 (2010). However, the inverse is not true: “[w]hile preemption may signal 17 patent ineligible subject matter, the absence of complete preemption does not demonstrate patent 18 eligibility.” Fairwarning IP, 839 F.3d at 1098 (internal quotation marks and citation omitted). 19 Second (and relatedly), “claims that are ‘so result-focused, so functional, as to effectively 20 cover any solution to an identified problem’ are frequently held ineligible under section 101.” 21 DIRECTV, 838 F.3d at 1265. For example, in Elec. Power Grp., the Federal Circuit found that 22 claims directed to “any way of effectively monitoring multiple sources on a power grid” instead of 23 “some specific way of enabling a computer to monitor data from multiple sources across an 24 electric power grid” did not contain an inventive concept. 830 F.3d at 1356. The Federal Circuit 25 has noted that this framework “is one helpful way of double-checking the application of the 26 Supreme Court's framework to particular claims—specifically, when determining whether the 27 claims meet the requirement of an inventive concept in application.” Id. 28 10 1 2 3 III. DISCUSSION Fitbit currently asserts claims 1, 2, and 5-9 of the ’053 patent, claims 1-3 and 16-19 of the ’307 patent, and claims 1, 2, 7-10, and 13 of the ’923 patent (collectively, the “asserted claims”). With minor differences, the asserted claims of all three patents are similar in substance.1 As a 4 result, none of the asserted claims warrant a materially different analysis or result, so the Court 5 will consider them collectively. 6 A. 7 8 Step One At step one of the Mayo/Alice framework, the Court must “determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 9 2355. Jawbone argues that such is the case here because the asserted claims are directed to the 10 United States District Court Northern District of California 11 12 13 abstract ideas of “identifying and validating an electronic device” through “minimal user interaction.” Mot. 15, Dkt. No. 88 (quoting ’923 patent, col. 2 ll. 20-21). As such, they “focus” on “a fundamental building block of today’s internet-based society—wirelessly connecting two computerized devices to enable the exchange of data.” Id. at 16. Jawbone contends that nothing 14 in the claims makes them less abstract than this, as they merely recite the routine interactions of 15 computing devices connecting to each other, accomplished through the “ubiquitous” medium of 16 wireless communication. Id. at 17. Jawbone also points out that many of the claim elements fall 17 within information processing and notification features that the Federal Circuit has already 18 declared abstract. Id. at 18-19. Jawbone further argues that the claimed technology is effectively 19 the Bluetooth protocol, and accordingly invokes the same preemption concerns that underlie the 20 prohibition against patenting other abstract ideas. Id. at 17. 21 Fitbit disagrees, arguing that the claims are directed to a narrow improvement in device 22 pairing that is specific to portable monitoring devices. Opp. 14, Dkt. No. 105. In particular, Fitbit 23 argues that the claims’ use of (1) a server to identify eligible devices and (2) tapping to indicate 24 user validation specifically improves portable monitoring device technology, as this overcomes 25 26 27 28 The parties do not appear to disagree, as Jawbone argues that the ’053 and ’307 patents are ineligible for the same or similar reasons which it set forth for the ’923 patent. See Mot. 22-25, Dkt. No. 88. Moreover, Fitbit, the patentee, addressed the asserted claims collectively in its briefing and has not asserted that any of the asserted claims requires a separate eligibility analysis. See Opp. 14-18, Dkt. No. 105. 11 1 1 the problem that portable monitoring devices are small and often do not have keyboards or buttons 2 that could be used in a pairing process. Id. at 15-16. Fitbit also suggests that the fact that the 3 claims are directed to device pairing should alone be sufficient to take them out of the realm of the 4 abstract, as pairing is a “technological process.” Id. at 14. 5 In reply, Jawbone argues that neither the server nor tapping saves the claims under step 6 one, as the server is a generic computer component, tapping as validation was known in the art, 7 and Fitbit has proposed broad constructions for both that would allow these limitations to 8 encompass almost anything. Reply 2-5, Dkt. No. 108. The Court begins its analysis by considering what the “character as a whole” of the claims 9 is “directed to.” Internet Patents, 790 F.3d at 1346. Although the “directed to” inquiry is a 11 United States District Court Northern District of California 10 “stage-one filter,” the Federal Circuit has cautioned against “describing the claims at such a high 12 level of abstraction and untethered from the language of the claims” such that it “all but ensures 13 that the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at 1337. After all, any 14 generalized view of a claim would, “if carried to its extreme, make all inventions unpatentable 15 because all inventions can be reduced to underlying principles of nature which, once known, make 16 their implementation obvious.” Diamond v. Diehr, 450 U.S. 175, 189 n.12, 101 S. Ct. 1048, 67 L. 17 Ed. 2d 155 (1981). As such, the Federal Circuit “sometimes incorporates claim limitations into its 18 articulation of the idea to which a claim is directed.” BASCOM, 827 F.3d at 1349. 19 Applying these principles here, Jawbone’s characterization of the claims sweeps too broad. 20 The claims do not recite any process for connecting two devices, but a specific one, which at least 21 requires: (1) a “client”2 receiving user login information to log a user into an account; (2) the 22 “client” sending a signal to a “server” to indicate the start of a pairing process; (3) the “server” 23 sending back a user interface or data; (4) the “client” detecting portable monitoring device(s) and 24 25 26 27 28 For simplicity, the Court will refer to the “second device” in claims 1, 2, and 5-9 of the ’053 patent, the “first device” in claims 1, 2, 7-10, and 13 of the ’923 patent, the “other device” in claims 1-3 of the ’307 patent, and the “client device” in claims 16-19 of the ’307 patent as the “client.” The Court will refer to the “first [portable] biometric device” in claims 1, 2, and 5-9 of the ’053 patent, the “second device” in claims 1, 2, 7-10, and 13 of the ’923 patent, the “portable monitoring device” in claims 1-3 of the ’307 patent, the “personal monitoring device” in claims 16-19 of the ’307 patent, and the “first biometric device” in claims 16-19 of the ’307 patent as the “portable monitoring device.” 12 2 1 requesting response(s) from the portable devices; (5) the “client” forwarding the response(s) to a 2 server; (6) the “server” sending back a list of devices eligible for pairing; (8) the “client” sending a 3 request to pair to the portable monitoring device; (9) the portable device cuing the user for 4 validation; (10) the user validating the request by “tapping” the device; and (11) completing the 5 pair. See ’053 patent, col. 14 l. 63-col. 16, l. 9, col. 16 ll. 19-39; ’923 patent, col. 15 l. 2-col. 16 l. 6 3, col. 16 ll. 19-37, 47-50; ’307 patent, col. 15 ll. 2-58, col. 17 l. 30-col. 18 l. 31. The Court’s 7 claim construction creates further physical boundaries for some of these terms, as it has 8 determined that the “server” must be “a physical computing device in communication, directly or 9 indirectly, with one or more of the device and the client” and “tapping” must be “momentary touching or light touching detectable by a motion sensor.” Claim Construction Order at 8-17, Dkt. 11 United States District Court Northern District of California 10 No. 119. Also, for claim 16 of the ’307 patent, the Court has concluded that the “client device” 12 should be a “device running client software that primarily acts as an access portal to the server.” 13 Id. at 26-28. Thus, the “character as a whole” of the claims is not directed to device pairing 14 generally, but a specific flavor of portable device pairing, which is aware of user account 15 information, relies on a “server” to regulate the list of eligible devices, and uses “tapping” as the 16 means of user validation. Put succinctly, this focus distills to: server-authenticated pairing of a 17 portable monitoring device using tapping as validation. 18 The question then becomes whether this particular “flavor” of device pairing is an abstract 19 idea. The parties do not seem to dispute that device pairing, in its most basic form, constitutes an 20 abstract idea. Nor could they. Establishing a dedicated line of communication between two points 21 is a “broad and familiar concept concerning information distribution that is untethered to any 22 specific or concrete way of implementing it,” DIRECTV, 838 F.3d at 1258, which has been 23 employed in everything from secure military communications to garage door openers. As such, it 24 remains a “building block[] of human ingenuity” and properly precluded from patent protection. 25 Alice, 134 S. Ct. at 2354. 26 Whether this is true of the “flavor” of pairing in the asserted claims, however, is a closer 27 question. In Enfish, the Federal Circuit held that claims “‘purport[ing] to improve the functioning 28 of the computer itself,’ or ‘improv[ing] an existing technological process’ might not succumb to 13 the abstract idea exception.” Enfish, 822 F.3d at 1335. The asserted claims could be so 2 characterized: the insertion of a server—a physical machine, under the Court’s construction—and 3 tapping—a subset of movements detectable by a motion detector, under the Court’s 4 construction—confine the asserted claims to less than device pairing generally, and they appear to 5 provide an improvement to device pairing solutions that lack these steps. Nevertheless, the 6 Federal Circuit has maintained, that, even with technical solutions provided in technical 7 environments, solutions that can be performed “mentally or with a pencil and paper” fall within 8 the realm of abstract ideas.3 Synopsys, 839 F.3d at 1146-47, 1149. In addition, claims that 9 “describe a desired function or outcome, without providing any limiting detail that confines the 10 claim to a particular solution to an identified problem” are often directed towards abstract ideas. 11 United States District Court Northern District of California 1 Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016); see also 12 Elec. Power Grp., 830 F.3d at 1356 (“[T]he essentially result-focused, functional character of 13 claim language has been a frequent feature of claims held ineligible under § 101.”). The asserted 14 claims also have this character: the steps of the asserted claims are all relatively simple actions that 15 could be performed manually, and their description is largely functional. Given these competing considerations, the claims present a “close call[] about how to 16 17 characterize what the claims are directed to,” where the claims are not “unambiguously directed to 18 an improvement in computer capabilities.” BASCOM, 827 F.3d at 1349 (quoting Enfish, 822 F.3d 19 at 1339). The Federal Circuit has instructed that, in such cases, “an analysis of whether there are 20 arguably concrete improvements in the recited computer technology could take place under step 21 two.” Id. For example, in BASCOM, the Federal Circuit deferred ruling on whether claims 22 relating to particular implementations of content filtering were abstract ideas under step one and 23 proceeded to analyze them under step two. The Court finds itself in a similar situation here. 24 Accordingly, the Court will decline to decide whether the claims’ particular variant of portable 25 26 27 28 For this reason, the Court finds Fitbit’s argument that the asserted claims are not directed to an abstract idea simply because “pairing devices is a technical process” unavailing. Opp. 14, Dkt. No. 105. Even claims arising only in technical fields, such as logic circuit design in Synopsys or content delivery to a mobile device in Affinity, can be directed to an abstract idea if they broadly recite an abstract concept and say “apply it” in that field. See Synopsys, 839 F.3d at 1149; Affinity, 838 F.3d at 1269-70. 14 3 1 device pairing is an abstract idea, and assess whether, even if it is, the concrete improvements they 2 recite are inventive concepts under step two. 3 B. 4 At step two, the Court must “consider the elements of each claim both individually and ‘as 5 an ordered combination’” and assess whether there are any “additional features” in the claims that 6 constitute an “inventive concept.” Alice, 134 S. Ct. at 2357. Jawbone argues that there are none 7 because the asserted claims are comprised of elements (e.g., transferring information over 8 Bluetooth, connecting to the internet, “mobile devices,” “server,” “client”) that are generic and 9 well-known in the art. Mot. 20-21, Dkt. No. 88. Jawbone maintains that the claims are not Step Two confined to applications in wearable activity tracker technology, but that, even if they were, this 11 United States District Court Northern District of California 10 does not save them under step two because limiting claims to a certain technical environment does 12 not make them patentable. Id. at 21. Jawbone also argues that there is nothing inventive about the 13 claims as an ordered combination, as there is nothing “non-conventional” or “non-generic” about 14 how the claim elements are arranged and nothing they recite constitutes a specific improvement to 15 portable device technology. Id. at 21-22. Fitbit disagrees, asserting that the use of a server to identify eligible devices and the use of 16 17 tapping, detected by a motion sensor, to validate a pairing are unconventional elements which 18 supply an inventive concept. Opp. 16-17, Dkt. No. 105. Fitbit also argues that the ordered 19 combination of claim elements also supplies an inventive concept because it recites a specific, 20 detailed, non-conventional sequence of steps, which far from preempt the entire field. Id. at 17. 21 Fitbit further contends that an inventive concept can be found in the fact that the claims 22 “improve[] [the] existing technological process” of portable device pairing by addressing issues 23 relating to security (i.e., setting forth a reliable pairing mechanism, which ensures that a user’s 24 biometric data is not paired to the wrong device) without compromising design constraints. Id. at 25 17-18. 26 In reply, Jawbone argues that neither the server nor tapping supply an inventive concept, as 27 the “server” in the claims is just a generic, undefined component and tapping was a known form of 28 validation at the time of invention. Reply 7-10, Dkt. No. 108. 15 1 Weighing the parties’ arguments against the asserted claims and appropriate context, the 2 Court agrees with Jawbone that none of the claim elements, assessed individually, provide an 3 inventive concept. Even under the Court’s constructions, the “server,” “client,” and “portable 4 monitoring device” are, in broad terms, generic, conventional components, none of which are 5 inventive. The various steps of transmitting or receiving information and how they are 6 accomplished are also generic—the claims recite these steps only functionally and require no 7 inventive algorithm or data structure for performing them. See DIRECTV, 838 F.3d at 1262 8 (finding no inventive concept where “[t]he claim simply recites the use of generic features of 9 cellular telephones, such as a storage medium and a graphical user interface, as well as routine 10 United States District Court Northern District of California 11 functions, such as transmitting and receiving signals, to implement the underlying idea.”). The Court also agrees with Jawbone that the claims’ relation to wearable activity tracker 12 technology, in and of itself, does not make them patent-eligible. As the Supreme Court and 13 Federal Circuit have long held, “limiting the use of an abstract idea ‘to a particular technological 14 environment’” “is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358. 15 Nevertheless, the Court agrees with Fitbit that the ordered combination of claim elements, 16 interpreted in the light most favorable to Fitbit, contains inventive concepts. First, the addition of 17 tapping as the form of validation is an inventive concept. As the background section of the patents 18 highlights, one problem that confronted the process of pairing small, portable devices was that 19 they were “purposefully designed to eliminate keyboards and multiple buttons in order to satisfy 20 other design criteria.” ’053 patent, col. 1 ll. 49-51. Tapping overcame this problem in an 21 inventive way because it took advantage of the inherent, technical capabilities of the portable 22 monitoring device—its ability to detect motion with a motion sensor—to provide a manner of 23 validating the device that was different from traditional forms of input (i.e., buttons and 24 keyboards). This is similar to the inventive concept in BASCOM, which found that taking 25 advantage of a technical feature of certain ISP servers—the ability “to identify individual accounts 26 that communicate with the ISP server, and to associate a request for Internet content with a 27 specific individual account”—transformed the idea of content filtering into a specific type of 28 filtering that constituted a “technical improvement over prior art ways of filtering such content.” 16 1 827 F.3d at 1350. 2 Jawbone nevertheless contends that tapping cannot supply an inventive concept because it 3 was known in the art. This argument conflates patent eligibility with novelty, which are inquiries 4 that, although “might sometimes overlap,” Mayo, 132 S. Ct. at 1304, are separate. See Rapid 5 Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (rejecting the 6 argument that adding a second freeze-thaw cycle was not an inventive concept because it was 7 allegedly obvious, reasoning that “patent-eligibility does not turn on ease of execution or 8 obviousness of application. Those are questions that are examined under separate provisions of the 9 Patent Act.”) (citing Mayo, 132 S. Ct. at 1304).4 Thus, even if tapping was a known form of validation, this does not necessarily prevent it from having a transformative effect on an abstract 11 United States District Court Northern District of California 10 idea and bringing it within the realm of patentable subject matter. It is the case that “recit[ing] 12 [an] abstract idea . . . along with the requirement . . . to perform it on a set of generic computer 13 components . . . would not contain an inventive concept” because that, at base, would still just be 14 the abstract idea. BASCOM, 827 F.3d at 1350. Adding in tapping to a portable device pairing 15 process—even if tapping was a known form of validation—is not this, because it transforms a 16 more abstract device pairing process into something specific: a pairing process narrowly tailored 17 to a certain class of devices, which enables them to be paired even though they lack buttons or 18 keyboards. In this sense, it “improves an existing technological process” by expanding the scope 19 of devices that can be paired. Alice, 134 S. Ct. at 2358. For these reasons, tapping transforms the 20 asserted claims into “something more” than just an abstract device pairing process. Accordingly, 21 the fact that tapping appears in the prior art does not prevent it from supplying an inventive 22 23 24 25 26 27 28 4 The Federal Circuit has also rejected the converse: It is true that “the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap.” Mayo, 132 S. Ct. at 1304. But, a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty. Synopsys, 839 F.3d at 1151; see also Affinity, 838 F.3d at 1263 (“the eligibility finding does not turn on the novelty of using a user-downloadable application for the particular purpose set out in the claims”). 17 1 concept here. Second, the use of a server as a part of the claimed pairing process supplies an inventive 2 3 concept. As the name suggests, the concept of pairing traditionally involves two devices: the 4 device that gets paired and the device it is paired with. See also ’053 patent, col. 1 ll. 35-38. By 5 injecting a third device—a server—into this process, the asserted claims shift this paradigm so that 6 all of the information needed for pairing does not have to be provided through the two devices. 7 Instead, the server can also regulate and facilitate this process. For example, the server can narrow 8 the field of possible portable devices to pair by sending the client the list of devices that are 9 “eligible”—e.g., devices that have not already been paired, that belong to a class of devices that that user’s account is authorized to work with, etc. Id., col. 6 l. 40-col. 7 l. 4. This helps 11 United States District Court Northern District of California 10 accomplish the goal of “minimiz[ing] the amount of user interaction and input required in the 12 pairing process,” because the server can automatically supply eligibility information that a user 13 might otherwise have to supply himself. Accordingly, when viewed in the light most favorable to 14 Fitbit, the server limitation also helps transform a more abstract device pairing process into 15 “something more” because it narrows it to a specific, discrete implementation of this idea that 16 specifically addresses needs in the particular field of portable device monitors. In sum, both the use of tapping and the use of a server, when considered along with the rest 17 18 of the claims as an ordered combination, supply an inventive concept that transforms the asserted 19 claims into patent eligible subject matter under step two. 20 IV. 21 CONCLUSION For the foregoing reasons, the Court concludes that the asserted claims are not patent- 22 ineligible under 35 U.S.C. § 101 because they contain an inventive concept sufficient to transform 23 these claims into patentable subject matter. Accordingly, the Court DENIES Jawbone’s motion 24 for judgment on the pleadings. 25 IT IS SO ORDERED. 26 27 28 Dated: February 9, 2017 ______________________________________ EDWARD J. DAVILA United States District Judge 18