Fitbit Inc. v. AliphCom et al.

MOTION for Judgment on the Pleadings

N.D. Cal.October 18, 2016

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 KALPANA SRINIVASAN (237460) ksrinivasan@susmangodfrey.com SUSMAN GODFREY L.L.P. 1901 Avenue of the Stars, Suite 950 Los Angeles, California 90067-6029 [Tel.] (310) 789-3100 [Fax] (310) 789-3150 MAX L. TRIBBLE, JR. (Admitted Pro Hac Vice) mtribble@susmangodfrey.com JOSEPH S. GRINSTEIN (Admitted Pro Hac Vice) jgrinstein@susmangodfrey.com 1000 Louisiana, Suite 5100 Houston, Texas 77002-5096 [Tel.] (713) 651-9366 [Fax] (713) 654-6666 Attorneys for Defendants AliphCom and BodyMedia, Inc. (Additional Counsel for Defendants listed below signature line) UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA FITBIT, INC. Plaintiffs, v. ALIPHCOM d/b/a JAWBONE and BODYMEDIA, INC. Defendant. Case No: 5:16-cv-00118-BLF DEFENDANTS ALIPHCOM, INC. d/b/a JAWBONE AND BODYMEDIA, INC.’S NOTICE OF MOTION AND MOTION FOR JUDGMENT ON THE PLEADINGS Date: January 5, 2017 Time: 9:00 AM Courtroom: 3 – 5th Floor Judge: Hon. Beth Labson Freeman JURY TRIAL DEMANDED Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 1 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 i TABLE OF CONTENTS NOTICE OF MOTION .................................................................................................................... 1 I. INTRODUCTION ................................................................................................... 1 II. BACKGROUND ..................................................................................................... 2 A. Procedural History ................................................................................................... 2 B. The ʼ543 Patent ........................................................................................................ 3 C. The ʼ812 Patent ........................................................................................................ 4 D. The ʼ971 Patent ........................................................................................................ 5 III. LEGAL STANDARD .............................................................................................. 7 A. Abstract subject matter is patent ineligible under 35 U.S.C. § 101 ......................... 7 B. Judgment on the pleadings is appropriate when asserted patents are directed toward ineligible subject matter ............................................................................... 8 IV. ARGUMENT ........................................................................................................... 8 A. The ʼ543 Patent ........................................................................................................ 9 The ʼ543 Patent—which merely claims the age-old idea of 1. measuring physical activity and telling a person how much activity has occurred—is directed toward ineligible subject matter. ........... 9 The ʼ543 patent claims, individually or in combination, do not 2. contribute an inventive concept that renders the material patent eligible. ....................................................................................................... 12 B. The ʼ812 Patent ...................................................................................................... 13 The ʼ812 Patent, which simply claims the notification of a user 1. when a threshold amount of activity is exceeded, is directed toward ineligible subject matter. ................................................................ 13 The ʼ812 patent claims, individually or in combination, do not 2. include an inventive concept. ..................................................................... 15 C. The ʼ971 Patent ...................................................................................................... 17 The ʼ971 Patent, which claims monitoring heart rate of a certain 1. “data quality,” is directed toward ineligible subject matter. ...................... 18 Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 2 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 ii None of the ’971 patent’s claim limitations, individually or in 2. combination, contributes an inventive concept that makes the material eligible for patent protection. ....................................................... 19 V. CONCLUSION ...................................................................................................... 19 Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 3 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 iii TABLE OF AUTHORITIES CASES Affinity Labs of Texas, LLC v. Amazon.com Inc., 2016 WL 5335502 (Fed. Cir. Sept. 23, 2016) .................................................................... 15 Affinity Labs of Texas, LLC v. DirectTV, LLC, No. 2015-1845, 2016 WL 5335501 (Fed. Cir. Sept. 23, 2016) ......................................... 10 Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) ................................................................................................ passim Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 2016 WL 3514158 (Fed. Cir. June 27, 2016) ............................................................. passim Bilski v. Kappos, 561 U.S. 593 (2010) ......................................................................................................... 7, 9 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) .......................................................................................... 14 Chavez v. United States, 683 F.3d 1102 (9th Cir. 2012) .............................................................................................. 8 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) .................................................................................... 10, 18 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) ...................................................................................... 2, 15 Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) ............................................................................................ 9 Eclipse IP LLC v. McKinley Equip. Corp. 2014 WL 4407592 (C.D. Cal. Sept. 4, 2014) ..................................................................... 11 Electric Power Group, LLC v. Alstom S.A., No. 2015-1778 (Fed. Cir. Aug. 1, 2016) .......................................................................... 2, 7 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) ...................................................................................... 9, 17 In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755 (Fed. Cir. 2014) .......................................................................................... 8, 9 In re TLI Commc’ns LLC Patent Litig. V. AV Automotive, L.L.C., et al., 823 F.3d 607 (Fed. Cir. 2016) .................................................................................. 12 Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 4 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 iv In the Matter of Certain Wearable Activity Tracking Devices, Inv. No. 337-TA-973............................................................................................................ 1 Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) .......................................................................... 2, 13, 15, 18 Joao Bock Transaction Systems v. Fid. Nat. Info. Servs., Inc. 122 F. Supp. 3d 1322 (M.D. Fla. 2015) ............................................................................. 11 Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) ........................................................................................................ 15 Novo Transforma Techs., LLC v. Sprint Spectrum L.P., 2015 WL 5156526 (D. Del. Sept. 2, 2015) ........................................................................ 11 OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) ...................................................................................... 8, 11 Shortridge v. Found. Constr. Payroll Serv., LLC, 2015 WL 1739256 (N.D. Cal. Apr. 14, 2015) ..................................................................... 8 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) ............................................................................................ 10 STATUTES 28 U.S.C. § 1659 .............................................................................................................................. 3 35 U.S.C. § 101 ....................................................................................................................... passim 35 U.S.C. § 271 ................................................................................................................................ 2 Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 5 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 1 NOTICE OF MOTION PLEASE TAKE NOTICE that on January 5, 2017 at 9:00 AM, or as soon thereafter as this matter may be heard before Judge Beth Labson Freeman, in Courtroom 3, 5th Floor, United States Courthouse, 280 South 1st St., San Jose, California, Defendants AliphCom, Inc. d/b/a Jawbone and BodyMedia, Inc. (“Jawbone” or “Defendants”) will, and hereby do, move the Court to grant Jawbone’s Motion for Judgment on the Pleadings that the Asserted Patents are Directed to Ineligible Subject Matter Under 35 U.S.C. § 101. I. INTRODUCTION This case is one of four patent infringement lawsuits Plaintiff Fitbit, Inc. (“Fitbit”) has filed against business rival Jawbone in three different tribunals across the United States since September 2015. 1 Not surprisingly, this blunderbuss attack emphasized quantity over quality: the nine patents Fitbit asserts across the four cases recite tired, well-known ideas—such as recording physical activity that exceeds certain predetermined thresholds—implemented using commonplace technology like sensors and generic computer memory. Indeed, less than three months ago, the administrative law judge in the International Trade Commission declared the parent of one of Fitbit’s three chosen patents for this case, U.S. Patent No. 8,909,543 (“the ʼ543 patent”), invalid under 35 U.S.C. § 101. See Exhibit 1 at 49-58. 2 The ʼ543 patent, along with the other two patents Fitbit asserts in this case, U.S. Patent Nos. 9,031,812 (“the ʼ812 patent”) and 9,042,971 (“the ʼ971 patent”), should never have been granted in the first place because they claim abstract subject matter that is ineligible for patent protection under § 101. The ʼ543 patent, entitled “Methods for Detecting and Recording Physical Activity of Person,” discloses the simple idea of measuring a person’s physical activity, displaying the amount of completed physical activity to the person, and then sending the activity 1 See Fitbit, Inc. v. AliphCom d/b/a BodyMedia, Inc., No. 5:15-cv-04073-EJD (N.D. Cal.) (filed September 8, 2015); Fitbit, Inc. v. AliphCom d/b/a BodyMedia, Inc., No. 1:15-cv-00990-UNA (D. Del.) (filed October 29, 2016); In the Matter of Certain Wearable Activity Tracking Devices, Inv. No. 337-TA-973 (U.S. International Trade Commission) (submitted November 2, 2015). 2 Petitioned for review, the Commission chose not to take review of the ALJ’s determination of invalidity for U.S. Patent No. 9,089,760 (“the ’760 patent”). See Exhibit 2 at 2. The ʼ543 patent is a continuation of the ’760 patent, and shares its specification. See Exhibit 3 (ʼ543 patent) at 1 (stating that patent is a continuation of Application No. 13/869,670); Exhibit 4 (’760 patent) at 1 (listing application number as 13/869,670). Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 6 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 2 data to a generic secondary device. See Exhibit 3. The ʼ812 patent, “Notifications on a User Device Based on Activity Detected by an Activity Monitoring Device,” is highly similar, disclosing the use of “activity metrics” such as stair steps that could be measured by the device. See Exhibit 5 (ʼ812 patent). The ʼ971 patent, entitled “Biometric Monitoring Device with Heart Rate Measurement Activated by a Single User-Gesture,” claims straightforward measurement of a certain quality of heart rate in response to a signal from a user. Each of these patents discloses methods that can—and have—been performed using nothing more than the human mind. As the Federal Circuit has held, these methods are therefore “unpatentable abstract ideas.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011); see also Electric Power Group, LLC v. Alstom S.A., No. 2015-1778, ---- F.3d ---, slip op. at 11 (Fed. Cir. Aug. 1, 2016) (explaining that claims that “specify what information . . . is desirable to gather, analyze, and display” but “do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying . . . by use of anything but entirely conventional, generic technology” are ineligible for patent protection); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (stating that certain ideas “involving methods of organizing human activity” had been found abstract in the Federal Circuit and the Supreme Court). II. BACKGROUND A. Procedural History Jawbone and Fitbit are competitors in the market for wearable devices that track physical activity, sleep, and other health and fitness data (“wearable activity devices”). Beginning just over a year ago, in September 2015, Fitbit initiated an array of proceedings against Jawbone in Delaware, California, and Washington, D.C., alleging patent infringement under 35 U.S.C. § 271. Fitbit filed this case on September 3, 2015, in the District of Delaware, accusing Jawbone’s UP line of wearable activity devices. See Dkt. No. 1. Fitbit filed its next patent infringement lawsuit against Jawbone five days later, on September 8, 2015, in the Northern District of California. See Case No. 5:15-cv-04073-EJD, Dkt. No. 1. On October 29, 2015, Fitbit filed yet another case against Jawbone, again in the District of Delaware, alleging infringement of three patents against the same UP products that Fitbit had accused in its two previous suits. D. Del. 15-cv-990, Dkt. Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 7 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 3 No. 1. Fitbit instigated its fourth and final proceeding with a complaint that initiated an investigation in the International Trade Commission, on November 2, 2015 (Investigation No. 337-TA-973), claiming infringement of the same patents asserted in the second Delaware case. The second Delaware case (No. 15-cv-990) was therefore mandatorily stayed under 28 U.S.C. § 1659. See Exhibit 6. The district court in Delaware transferred this case to this district on December 22, 2015. See Exhibit 7. B. The ʼ543 Patent The ʼ543 patent was filed on January 27, 2014, and granted on December 9, 2014. It is a continuation of Application No. 13/869,670, which issued as the ’760 patent. See Exhibits 3,4. Fitbit asserts claims 20 and 25-29 of the ʼ543 against the Jawbone UP Move product. See Declaration of Kalpana Srinivasan (“Srinivasan Decl.”) ¶ 13. The specification for the ʼ543 patent identifies the “challenge” of attempting to motivate individuals to engage in exercise due to the pervasive “problem” of obesity. See Exhibit 3 at 2:11- 12. To address that challenge, the ʼ543 specification sets out “a system and method for encouraging physical activity” through the use of an interactive “coupon” which becomes redeemable based on the “completion of physical activity for a predetermined amount and/or predetermined period of time.” Id. at 1:25-30. The claims Fitbit asserts in this case are limited to method claims, and are directed to the idea of using a device to display an amount or completion of an individual’s physical activity using a progression of light emitting diodes (“LEDs”). Claim 20 is the only asserted independent claim: 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 detecting 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 Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 8 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 4 based on the amount of movement of the person recorded using the motion detecting component; and communicating data associated with the amount of recorded movement of the person to a secondary electronic device. Id. at 26:45-62. This claim describes the ordinary process of measuring a user’s movement and then communicating information about that movement to the user via a secondary device and a series of lights. Dependent claims 25-29 add generic limitations that specify either the type of secondary device (such as a “computer” or a “cell phone” – claim 28), the method of communicating activity data to the secondary device (for example, using a “transmitter” – claim 25); or whether the device’s simple components are removable (claim 29). Id. at 27:11-28:9. C. The ʼ812 Patent The ʼ812 patent was filed on May 6, 2014 and granted on May 12, 2015. Fitbit asserts claims 1-6, 9-15, 18-23, and 25-26 of the ʼ812 patent. See Srinivasan Decl. ¶ 13. Like the ʼ543 patent, the ʼ812 patent discloses methods for tracking a user’s activity, comparing that activity information to certain activity thresholds, and then displaying information related to a user’s physical activity to the user. The ʼ812 also includes the step of displaying activity information to a user at a predetermined or specified date, time, or “time window.” See, e.g., Exhibit 5 (ʼ812 patent) at 25:23-43; 27:11-32. Claim 1 is representative of independent claims 1, 9, 18, and 25: 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; Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 9 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 5 wherein the notification message is displayed on a 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. Id. at 25:23-43. Dependent claims 2-6, 10-16, 19-22, and 26 add descriptions of potential notification methods (such as a “banner” or a “badge” or “push notification” – claims 2, 18, and 22), potential “activity metrics” (for example, steps taken or floors climbed – claims 4 and 13), and targeted amounts of physical activity to be recorded (“less than 100%, 100%, or greater than 100% of the activity goal” – claims 6 and 15). See id. at 25:44-66; 26:38-63; 27:33-50;28:1-5, 34- 40. D. The ʼ971 Patent The ʼ971 patent was filed on January 13, 2014 and granted on May 26, 2015. See Exhibit 8 (ʼ971 patent). Fitbit asserts claims 1, 22, and 25-28 of the ʼ971 patent. See Srinivasan Decl. ¶ 13. The ʼ971 patent describes user interaction triggering the measurement of heart rate information, and the measurement continuing as long as the heart rate information is of a certain predetermined quality. Fitbit asserts one independent apparatus claim (claim 1) and one independent method claim (claim 22). Claim 1 reads: 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 Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 10 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 6 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 user-gesture. Exhibit 8 at 41:8-35. Put simply, claim 1 of the 971 patent describes generic computer components in a conventional configuration that allows a user to initiate a heart rate measurement. Claim 22 sets out the following method: 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 quality is obtained without requiring further user-gestures in addition to the single user-gesture. Id. at 43:3-18. Claims 25 through 28, which depend from claim 22, define various types of user feedback (for example, an indication that the heart rate collection has succeeded or failed – claims 25 and 26) and an additional step, analogous to that contained within the apparatus of claim 1, wherein the heart rate sensor does not re-activate after stopping until another “user-gesture” is received by the device. See id. at 44:3-21. Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 11 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 7 III. LEGAL STANDARD A. Abstract subject matter is patent ineligible under 35 U.S.C. § 101 A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. However, “[l]aws of nature, natural phenomena, and abstract ideas” are implicitly excluded from the possibility of patent protection. See Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354 (2014). In Alice, the Supreme Court established a two-step analysis to determine whether the subject matter claimed by a patent was an abstract idea ineligible for protection. Id. at 2355. The purpose of the Alice inquiry is to prevent a patent from “pre-empt[ing] the use of [a given] approach in all fields,” thereby “effectively grant[ing] a monopoly over an abstract idea.” Id. at 2354 (quoting Bilski v. Kappos, 561 U.S. 593, 611-612 (2010)) (alterations added). The first step of the Alice test requires a court to determine whether the claims of a patent are “directed to one of th[e] patent-ineligible concepts,” such as an abstract idea. Id. (alteration added). If a patent’s claims are not directed to an ineligible concept, the inquiry is over. See id. If a court determines that a patent’s claims are directed toward an abstract idea, the court proceeds to Alice step 2 to determine whether the claims contain “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. (internal quotation marks omitted and alteration in Alice). In order to determine whether a patent claim is directed to an abstract idea, a court “look[s] at the focus of the claims, their character as a whole . . . .” Electric Power Group, LLC v. Alstom S.A., No. 2015-1778, --- F.3d ---, slip op. at 6 (Fed. Cir. Aug 1, 2016) (internal quotation marks omitted). As the Federal Circuit has recently explained, a court at Alice step 1 looks to an “inventions’ basic trust.” Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 2016 WL 3514158, *5 (Fed. Cir. June 27, 2016). In addition, Alice step 1 is devoted to the determination of whether “the focus of the claims is on [a] specific asserted improvement in computer capabilities . . . or instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.” Id. at *5. If a court determines that a patent claim is directed to an abstract idea, Alice step 2 Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 12 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 8 instructs that a court should “examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea in to a patent-eligible application.” Alice, 134 S. Ct. at 2357 (internal quotation marks omitted). The Supreme Court has further instructed that identifying generic, pre-existing computer components to implement an abstract idea do not transform that idea into material that is patent eligible. See id. at 2358. In order to survive an Alice inquiry, a patent that claims only known computer elements must teach a “non-conventional and non-generic arrangement of known, conventional pieces.” Bascom, 2016 WL 3514158, at *6. B. Judgment on the pleadings is appropriate when asserted patents are directed toward ineligible subject matter A court may grant judgment on the pleadings where, “accepting all factual allegations in the complaint as true . . . there is no issue of material fact in dispute, and the moving party is entitled to judgment as a matter of law.” Chavez v. United States, 683 F.3d 1102, 1108 (9th Cir. 2012). Whether a patent covers patent-eligible subject matter is an issue of law appropriately determined on the pleadings. See, e.g., In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 759 (Fed. Cir. 2014); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360 (Fed. Cir. 2015); Shortridge v. Found. Constr. Payroll Serv., LLC, 2015 WL 1739256, at *1 (N.D. Cal. Apr. 14, 2015) (granting judgment of subject matter ineligibility on the pleadings). Further, the Federal Circuit has stated that reviewing patent eligibility under 35 U.S.C. § 101 early-on in litigation both “conserves scarce judicial resources and spares litigants the staggering costs associated with discovery and protracted claim construction” and “works to stem the tide of vexatious suits brought by owners of vague and overbroad” patents. OIP Techs., 788 F.3d at 1364. IV. ARGUMENT The ʼ543, ʼ812, and ʼ971 patents fail at both steps of the Alice inquiry because they are directed toward age-old, abstract ideas like measuring physical activity and heart rate, and because nothing in their asserted claims transforms those ancient, abstract ideas into novel, inventive concepts. Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 13 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 9 Two of the asserted patents, the ʼ543 and the ʼ812, are directed toward the abstract process of measuring activity, comparing amounts of physical activity to certain thresholds, and then telling a user about the amount of activity that occurred. The ʼ971 patent is directed simply to measuring heart rate when there is a strong (or otherwise predetermined) heart rate signal and again conveying this information to a user. The specific way in which the ʼ543 and ʼ812 claim activity measurement and tracking contribute nothing inventive or limiting to that abstract concept. Likewise, the ʼ971 does not teach any novel technique that renders its abstract heart rate measurement method more concrete. Fitbit’s three asserted patents in this case seek to monopolize the general concepts of activity and heart rate measurement, and should be invalidated under 35 U.S.C. § 101. See Bilski, 561 U.S. at 611-12. The court need not resolve any issue of claim construction or fact in order to grant judgment on the pleadings pursuant to Federal Rule 12(c). See, e.g., BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d at 759. A. The ʼ543 Patent The ʼ543 patent claims the basis steps of detecting a person’s movement, notifying a person of the amount of movement detected, and sending data about the recorded movement to a secondary device. See, e.g., Exhibit 3 at 26:45-64. This idea—which is not improved by any inventive limitation—is precisely the type of concept declared unpatentable by Alice and subsequent case law. See, e.g., Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (stating that claims directed toward a general process for combining data sets into a device profile were “so abstract and sweeping as to cover any and all uses of a device profile”) (internal quotation marks omitted). The ʼ543 Patent—which merely claims the age-old idea of measuring 1. physical activity and telling a person how much activity has occurred—is directed toward ineligible subject matter. In determining whether a patent is directed to an “abstract idea” as defined in Alice step 1, courts consider “the focus of the claims” and “their character as a whole.” Electric Power, Slip Op. at 6; see also Bascom, 2016 WL 3514158, at *5. Claims must be considered in light of the patent’s specification. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 14 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 10 The focus of the claims in the ʼ543 patent can be broken down into two steps: 1) detecting and tracking a user’s activity, and 2) notifying the user of the amount of activity the device has detected. See, e.g., Exhibit 3 at 26:45-64. Humans routinely perform those methods without the aid of any device: consider a runner marking her number of laps around a track with a pencil and paper, or a tennis player noting that he has hit twenty practice serves by counting the number of tennis balls across the net. Tracking activity and notifying the active person of the amount of activity is an idea that is “routine,” “long prevalent,” and “conventional”—in the words of the Federal Circuit, it is in the “Alice zone.” See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). First, independent claim 20’s “detecting and recording movement by the person by use of [a] motion detection component” is no different from collecting, recognizing, and storing data, which the Federal Circuit has held is an abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). The specification confirms that this detection and recording of movement is nothing more than routine data collection. See, e.g., Exhibit 3 at Abstract (“A motion detection component is operated to detect movement of the motion detection component. The movement detected by the motion detection component is recorded.”); 3:5-6 (“The application comprises a coupon that detects physical activity of a user using a motion detector.”). This method is an unpatentable abstract idea. See Content Extraction, 776 F.3d at 1347; see also Affinity Labs of Texas, LLC v. DirectTV, LLC, No. 2015-1845, 2016 WL 5335501, at *3 (Fed. Cir. Sept. 23, 2016) (explaining that “a broad and familiar concept concerning information distribution that [was] untethered to any specific or concrete way of implementing it” was ineligible subject matter). The next limitation of independent claim 20 recites the illumination of LEDs to notify a user of the amount of physical activity that has been detected. See Exhibit 3 at 26:52-59. Just as courts have recognized that the concept of data collection is abstract, courts have also stated that patents that claim user notifications are directed toward abstract ideas. For example, in Joao Bock Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 15 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 11 Transaction Systems v. Fid. Nat. Info. Servs., Inc., the court explained that claims relating to an account holder “receiving notification to approve or deny a transaction or that a transaction has been approved or denied” were directed to an abstract concept. 122 F. Supp. 3d 1322, 1331 (M.D. Fla. 2015). Likewise, the court in Eclipse IP LLC v. McKinley Equip. Corp. explained that “initiating a notification communication to a personal communication device . . . relating to a task to be performed” and then “receiving a response from the [ ] personal communications device [ ] indicating whether or not the party associated with the personal communications device will perform the task” was abstract subject matter ineligible for patent protection. 2014 WL 4407592, *6-7 (C.D. Cal. Sept. 4, 2014). The court explained that the steps for giving and receiving the notification “can be performed by a person talking on the phone.” Id. Further, the court stated that the fact that the method was performed “in connection with a computer-based notification system” did not change the fact that the idea was abstract because the invention required no special equipment to implement or achieve its benefits. See Id.; see also Novo Transforma Techs., LLC v. Sprint Spectrum L.P., 2015 WL 5156526, at *3 (D. Del. Sept. 2, 2015) (explaining that a “process for delivering messages from a sender to a recipient over a communication network” which included “an automatic notification . . . provided to the sender upon receipt of the message by the recipient” was an abstract process.). Finally, the step of “communicating data with the amount of recorded movement of the person to a secondary electronic device” recited in claim 20 does not render the claim less abstract. Transmitting data in a broad, unspecified way to an “electronic device” that is also not defined is an abstract concept. See, e.g., Electric Power, Slip Op. at 11 (explaining that performing functions using “entirely conventional, generic technology” was unpatentable material); see also OIP Techs., 788 F.3d at 1363 (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic- computer functions.”). As the ALJ has already held about the parent patent of the ʼ543, the ʼ760, is directed toward an abstract idea and is invalid under 35 U.S.C. § 101. See Exhibit 1 at 49-58. Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 16 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 12 The ʼ543 patent claims, individually or in combination, do not contribute 2. an inventive concept that renders the material patent eligible. Because the ʼ543 patent is directed toward abstract subject matter, it is necessary to evaluate the patent under the test in Alice step 2. At that step, courts “consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.” Bascom, 2016 WL 3514158, at *4 (internal citations omitted). The individual elements of the independent claims in the ʼ543 patent are basic and fundamental: providing a band to a person, detecting and recording movement, giving a notification to a user of the amount of movement completed, and communicating data to an unspecified electronic device. See, e.g., Exhibit 3 at 26:45-64. The fact that the notification is given using LEDs does not add an inventive concept, because LEDs are merely a conventional piece of technology that the claims recite operating in an ordinary, conventional way. See, e.g., In re TLI Commc’ns LLC Patent Litig. V. AV Automotive, L.L.C. et al., 823 F.3d 607, 613 (Fed. Cir. 2016) (“It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of well-understood, routine, conventional activities previously known to the industry.”) (internal alteration and quotation marks omitted) (citing Alice, 134 S.Ct. at 2359). Indeed, the ’543 repeatedly emphasizes that LEDs are merely one of several known, interchangeable technologies for performing the generic function of communicating information to a user. See, e.g., Exhibit 3 at 15:10–15, 16:28–32, 17:11–15, 17:39–43, 17:66–18:4, 18:29–33 (each referring to “an enunciation device which may include a liquid crystal display, light emitting diode display or other means to store or communicate the resulting information to the user.”). The individual dependent claims of the ʼ543 patent also offer no inventive concept. Instead, they teach the wireless communication of activity data to a secondary device using a generic “transmitter” (claim 25), using a transmitter in accordance with an unspecified “communication protocol” (claim 26), having a secondary device that is a “computer” (claim 27) or a “game” or a “cell phone” (claim 28), or having a motion detection component and LEDs that Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 17 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 13 are removable from the device band (claim 29). None of those components is novel or uses a traditional component in a novel fashion, such that the abstract material claimed is transformed into eligible subject matter under 35 U.S.C. § 101. See, e.g., Bascom, 2016 WL 3514158, at *6 (explaining that “[t]he inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art” and “can be found in the non-conventional and non- generic arrangement of known, conventional pieces.”). Finally, the elements of the independent claims and the dependent claims, considered as an ordered combination, also do not add an inventive concept to the claimed subject matter. Rather, the ʼ543 patent claims the ordinary process of tracking and recording activity, notifying the user of the amount of activity recorded, and communicating that data to a generic secondary device. Nothing about the combination of these simple steps saves the methods in the ʼ543 patent from the realm of the abstract. B. The ʼ812 Patent Similar to the ʼ543 patent, the ʼ812 patent also claims material related to activity tracking and notifying a user of the amount of activity tracked. Specifically, the ʼ812 discloses connecting a mobile device to an activity monitoring device, receiving activity data on the mobile device and using the data to determine an “activity metric,” comparing the metric to a predefined threshold associated with a notification message, and displaying the notification on the mobile device at a set date or time. See, e.g., Exhibit 5 at 25:23-43. However, nothing about this method is novel or improves on the ways in which people have measured their physical activity throughout time— with or without the aid of computers. Indeed, the measurements and tracking claimed in the ʼ812 patent “could still be made using a pencil and paper with a simple notification device.” Intellectual Ventures, 792 F.3d at 1368. The ʼ812 Patent, which simply claims the notification of a user when a 1. threshold amount of activity is exceeded, is directed toward ineligible subject matter. The independent claims of the ʼ812 include connecting an activity monitoring device to a “mobile device” or “user device.” See, e.g., Exhibit 5 at 25:23-26 (“[a] method for generating a notification on a mobile device, comprising: establishing a wireless connection to an activity Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 18 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 14 monitoring device . . . .”); 26:14-17 (“[a] server-executed method for presenting a notification on a mobile device, comprising: establishing communication with the mobile device . . . .”); 27:11- 19 (“[a] method for presenting a notification on a user device, comprising: . . . receiving activity data measured by an activity monitoring device . . . .”); 28:13-16 (“[a] method for triggering a notification to a user of an activity monitoring device, comprising: receiving activity data from one or more sensors of an activity monitoring device . . . .”). The Federal Circuit has held that this critical portion of the claimed invention—the transfer of data from one place to another—without any novel addition is an unpatentable concept. See, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). The ʼ812 also claims the elements of tracking activity and generating a notification message for the user of the amount of activity that has occurred. See, e.g., Exhibit 5 at 25:27-28, 38-43; 26:28-20, 33-38; 27:11-19, 28-32; 28:14-16, 28-32. As explained above in the context of the ʼ543 patent, courts have also declared that the ideas of collecting data (such as activity data) and notifying a user are abstract. See supra § IV.A.1. The claims in the ʼ812 patent do not describe any way of improving the generic processes of gathering activity data and giving the user a notification about that data. The addition of comparing activity data to predetermined thresholds does not render the subject matter claimed in the ʼ812 patent more concrete. Indeed, using thresholds to measure activity is ubiquitous in sports: umpires must determine whether a batter’s half-swing counts as a strike. Line judges in tennis must watch to see if a server’s foot moves into the baseline and causes a fault. A runner may decide to sprint for one mile, and then slow the pace to a jog. In each of these instances, athletes and judges compare an amount of activity to a “predetermined” threshold to figure out whether or not a certain amount of activity “counts.” The same is true with the ʼ812 patent: as the claims describe, the method involves comparing an “activity metric” comprised of activity data with a “notification threshold” and then, if the notification threshold is met, triggering presentation of the notification method at a specified date and time. See ʼ812 patent claims 1 (“in response to determining that the activity metric reaches or exceeds the Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 19 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 15 predefined threshold, scheduling the notification message for display on the mobile device at a specified date and time”), 9, 18, 25 (“in response to determining that the activity metric reaches or exceeds the predefined threshold, establishing communication with a user device, and triggering display of the notification message on the user device”). Yet—just as when an umpire calls a batter “out”—these are precisely the type of “method[s] that can be performed by human thought alone” that the Federal Circuit has held ineligible for patent protection under 35 U.S.C. § 101. See CyberSource, 654 F.3d at 1373; see also Intellectual Ventures, 792 F.3d at 1367 (explaining that certain ideas “involving methods of organizing human activity” had been found abstract in the Federal Circuit and the Supreme Court). The claims in the ʼ812 patent, which disclose only common ideas using generic computer components, are directed toward abstract subject matter, and the ʼ812 patent fails Alice step 1. The ʼ812 patent claims, individually or in combination, do not include an 2. inventive concept. The ʼ812 patent also fails Alice step 2 because none of the claim limitations adds an inventive concept that renders the claimed material patent eligible. See Alice, 134 S. Ct. at 2355; Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1294 (2012). The independent claims of the ʼ812 claim a method of notifying the user of the activity metric “at a specified date and time” (claims 1, 18) or during a “time window” (claims 9, 25), but those limitations are merely one among a “collection of instructions” that indicate the way in which a notification will appear for a user via the claimed method. See Affinity Labs, 2016 WL 5335502, at *4 (Fed. Cir. Sept. 23, 2016). Those instructions simply “state [the] functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.” See id. Triggering a notification to appear at a certain time is not an “advancement” or improvement over the abstract idea of providing a notification—it is just a specified way of doing so. The dependent claims of the ʼ812 fare no better, either independently or as an ordered combination. Generally, the dependent claims either define “activity metric” (as, for example, steps taken, floors climbed, or calories burned – claims 4, 13, 23), set or define achievement Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 20 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 16 amounts to be displayed to a user (such as less than 100% of goal, 100% of goal, or greater than 100% of goal – claims 5,6,14 and 15), or specifies the type of user notification (such as a push notification, an alert, a banner, or a badge – claims 19, 22). Similar to the use of LEDs in the ʼ543 and the setting of time windows in the independent claims of the ʼ812, further specifying “activity metrics” or user notifications does not transform the abstract concept of notifying a person of his activity level into a concrete idea that is patent eligible. Nor do any of the dependent claims, as a combination of elements with the independent claims from which they depend, sufficiently limit the abstract methods claimed so as not to preempt the entire field of activity tracking using thresholds and notifications. See Bascom, 827 F.3d at 1352. Fitbit may argue that the ʼ812 patent’s prosecution history proves that the patent claims eligible subject matter, but that argument fails. During prosecution, the patent examiner initially rejected claims 1-30 under § 101, explaining that the claims were “directed to the abstract idea of scheduling a notification message based upon processed data that has determined whether an activity metric has reached or exceeded a threshold.” See Exhibit 9 at 2. The examiner further explained that the additional claim elements were nothing more than “generic computer structure[s]” performing “generic computer functions” that were “well-understood, routine, and conventional activities previously known” to the fitness industry. See id. The examiner then wrote that those elements did not “provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amount[ed] to something significantly more than the abstract idea itself.” Id. at 3. In response, the applicant amended independent claims 1, 10, 20, and 28 to add the limitations that teach display of the notification at a “specified date and time” or within a “time window” along with an application that connects to the activity monitoring device and allows the user to interface with it. See Exhibit 10 at 2, 5, 7, 9. The examiner allowed the claims after those amendments, explaining that the applicants had successfully passed Alice at step 2: 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 Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 21 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 17 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. Exhibit 11at 2. The examiner’s allowance and rationale—issued prior to Enfish and Bascom and without any detailed analysis—does not withstand scrutiny under current Federal Circuit law. Contrary to the examiner’s assertion that the amended claims contain “unconventional steps,” giving a notification at a particular or set time is a basic step that has long existed in the form of alarms and reminder notifications, enabled by machines like analog clocks but also by a wide variety of software applications that use networks and the internet. Similarly, the fact that the claimed notifications give access to an application for interfacing with the activity monitoring device is also not “unconventional” and does not “limit” the claims in any meaningful way. Computers and mobile devices have long been rife with programs and applications that provide “hyperlinks” to other applications, programs, or webpages. The claims in the ’812 patent “preempt[ ] all use of the claimed abstract idea on generic computer components performing conventional activities. Bascom, 827 F.3d at 1352. As the Federal Circuit clarified in Bascom, merely because more detailed claims may “narrow the scope of protection through additional conventional steps for performing the abstract idea, they did not make those claims any less abstract.” See id. (internal citation omitted). That is the case here: while the additional steps of giving a generic notification at a specific time and connected to a means of interfacing with a mobile device “narrow the scope of protection” of the claims that the examiner previously found invalid, see Exhibit 9, they do not make the claims of the ’812 patent any less abstract. C. The ʼ971 Patent Rather than activity tracking per se, the ʼ971 patent is directed toward gathering and storing heart rate data in response to user interaction. However, like the ’543 and the ’812 patents, the ʼ971 also uses generic computer components to implement an abstract idea. The ʼ971 patent contains independent apparatus and method claims that teach using unspecified biometric sensors to collect heart rate data and then stop collecting data when the data is of a “predetermined” Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 22 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 18 quality. See Exhibit 8 at 41:7-35; 43:4-18. This simple concept is no different from taking one’s pulse: the ʼ971 patent should not have been granted because it claims the abstract and straightforward idea of measuring heart rate only when the heart rate is strong enough to measure, or measuring heart rate only for a set period of time. The ʼ971 Patent, which claims monitoring heart rate of a certain “data 1. quality,” is directed toward ineligible subject matter. The independent claims of the ʼ971 patent all generally include the elements of (1) collecting heart rate data in response to a “user-gesture” and (2) ceasing the collection of heart rate data “when a heart rate reading of a predetermined level of heart rate data quality is obtained . . . .” See Exhibit 8 at 41:7-35; 43:4-18. The specification indicates that the “predetermined level of heart rate data quality” could be a set period of time, such as three seconds or one or two minutes. Id. at 20:13-15. The specification also indicates that the “predetermined level of heart rate data quality” is simply a set, defined quality of heart rate reading. See id. at 2:30-32. As discussed above, data collection is a fundamental process that the Federal Circuit has held is abstract and unpatentable. See supra § IV.A.1; Content Extraction, 776 F.3d at 1347 (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). The fact that the ’971 also claims filtering the heart rate data or selecting the data to collect based on time or “data quality” does not save the claims from abstraction. As the Federal Circuit has recently explained, “filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior.” Bascom, 2016 WL 3514158, at *5; see also Intellectual Ventures, 792 F.3d at 1369 (“information tailoring is a fundamental…practice long prevalent in our system.…”) (quotations omitted). In this case, the apparatus and method claimed by the ’971 can be implemented and achieved by simply putting one’s fingers over one’s wrist (the “user-gesture” activating heart rate data collection, see Exhibit 8 at 41:28; 43:13), counting the pulses, and then stopping counting after either thirty seconds or detection of a weaker or hurried heart beat (“a predetermined level of heart rate data quality,” see id. at 41:30; 43:15-16). Thus, the ’971 threatens the very preemption that Alice described: a patent “disproportionately tying up” a fundamental idea like taking one’s Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 23 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 19 pulse for a set period of time. See Alice, 134 S. Ct. at 2354. The ’971 patent is directed toward an abstract idea under step 1 of Alice. None of the ’971 patent’s claim limitations, individually or in combination, 2. contributes an inventive concept that makes the material eligible for patent protection. The claim limitations in the ’971 do not render the broad “invention” taught by the ’971 more concrete. Independent claim 22 describes a method for providing “user feedback” about the collected heart rate data through a “feedback mechanism.” See Exhibit 8 at 43:10-13. However, this “feedback mechanism” is not defined and could be no different than a person’s fingertips when taking one’s pulse. Likewise, dependent claim 25 specifies that the “user feedback comprises an indication that heart rate data collection is successful.” See id. at 44:3-5. But that “feedback” could be the same as a person feeling through her fingertips that the pulse is strong enough to measure. Dependent claim 27 teaches that the “user feedback” could comprise, inter alia, average heart rate, minimum heart rate, or maximum heart rate. Id. at 9-17. Again, this type of “feedback” could be achieved by using fingertips to measure one’s pulse and watching the clock to determine the heart rate. The combination of getting this feedback after putting one’s fingertips to one’s wrist does not transform the concept into a concrete idea. Nothing of the limitations of the ’971 patent’s independent or dependent claims, either individually or in an ordered combination, contains an inventive concept. See Bascom, 827 F.3d at 1347. V. CONCLUSION Fitbit’s concerted effort to bury Jawbone with multiple lawsuits in multiple fora has resulted in Fitbit’s assertion of weak patents that contain no novel concepts. The ’543 patent and ’812 patents, which both claim collecting activity data and then displaying it to a user, are directed toward abstract ideas that people have always used when measuring movement for fitness or sport. Likewise, the ’971 patent teaches the abstract concept of taking one’s pulse and then stopping taking the pulse after time has passed or the quality of the heart rate changes. None of the three patents contains claim limitations that convert the otherwise unpatentable subject matter into material that is eligible for protection under 35 U.S.C. § 101. Jawbone respectfully Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 24 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ Motion for Judgment on the Pleadings Case No. 5:16-cv-00118-BLF 4542275v2/014972 20 asks that the Court grant its motion for judgment on the pleadings according to Federal Rule 12(c). Dated: October 18, 2016 SUSMAN GODFREY L.L.P. KALPANA SRINIVASAN MAX L. TRIBBLE, JR. JOSEPH S. GRINSTEIN GENEVIEVE VOSE WALLACE (Admitted Pro Hac Vice) gwallace@susmangodfrey.com EDGAR G. SARGEANT (Admitted Pro Hac Vice) esargeant@susmangodfrey.com IAN B. CROSBY (Admitted Pro Hac Vice) icrosby@susmangodfrey.com E. LINDSAY CALKINS (Admitted Pro Hac Vice) lcalkins@susmangodfrey.com 1201 Third Avenue, Suite 3800 Seattle, Washington 98101-3000 [Tel.] (206) 516-3880 [Fax] (206) 516-3883 ELISHA BARRON (Admitted Pro Hac Vice) ebarron@susmangodfrey.com 560 Lexington Avenue, 15th Floor New York, New York 10022-6828 [Tel.] (212) 336-8330 [Fax] (212) 336-3800 By: /s/ Kalpana Srinivasan Kalpana Srinivasan Counsel for Defendants AliphCom d/b/a Jawbone and BodyMedia, Inc. Case 5:16-cv-00118-BLF Document 74 Filed 10/18/16 Page 25 of 25