Fitbit’s seemingly ubiquitous exercise tracking devices have plainly been a huge commercial success. But a recent court ruling undermined the novelty of certain aspects of the company’s technology in the latest iteration of the “Alice wars” that have roiled the patent world for the last three years.
As I explained (0) in this space back in 2014, the US Supreme Court ruled in Alice Corp. v. CLS Bank that using software to implement an otherwise unpatentable idea doesn’t automatically make it patentable.
The high court held that a putative inventor cannot receive a patent unless she claims something “significantly more” than an abstract idea, natural law, or natural phenomenon.
Writing for a unanimous court, Justice Thomas wrote that:
the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility… Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result.
The key concern, the Supremes ruled, was pre-emption: if a patent claim is so abstract as to prevent others from employing the concept altogether, it doesn’t warrant protection.
The seemingly straightforward decision has proved devilishly complex, as patent practitioners have struggled to confront what exactly “significantly more” means, or what types of inventions are sufficiently specific, especially in the context of often-abstract software patents.
Initially (1), as many as 78 percent of patent applications in the software and “business method” fields were rejected by the Patent Office, while the pre-Alice rejection rate was 24 percent. At the same time, the allowance rate for such applications plunged from 24 percent before Alice to a miniscule 4.5 percent afterward.
Then last year (2), the trend modulated, as newly-issued Patent Office guidelines helped inventors and their attorneys alike gain a stronger sense of what types of applications would pass muster. According to some data, fully 30 percent of issued patents survive Alice challenges in district court, and one out of every five invalidated patents were resuscitated by the Federal Circuit Court of Appeals.
A recent case situated in federal district court in San Jose roughly tracks this development, as a district court rendered invalid two out of three patents asserted by Fitbit against a company called AliphCom, better known as Jawbone.
The Fitbit patents generally claimed devices and methods of monitoring and displaying an individual’s activity level and health data, such as heart rate, number of steps taken, distance traveled, and the like.
Fitbit claimed that Jawbone’s competing devices infringed its patent claims, but Jawbone moved to dismiss the case because, it argued, the patents were so abstract, under the Alice standard, that they should never have been granted in the first place.
Judge Beth Labson Freeman agreed (3) regarding two of the three patents, holding that all they claim is “simply data collection and reporting” and thus “merely implement an old practice in an allegedly new environment.” In addition, the court found, “the ordered combination of these elements also does not yield an inventive concept.”
But the third patent survived the court’s scrutiny, albeit narrowly, as Fitbit successfully argued that, unlike the other patents, its claims included an “activator” receptive to unique gestures and therefore represented a “specific improvement to heart rate monitoring hardware and algorithms to address the technical challenges of conserving battery life and allowing easy initiation of a heart rate measurement at any time.”
The court agreed, likening the facts of the case to those in certain Federal Circuit decisions upholding patents on Alice grounds and finding that “the claims remain scoped to a specific variant of heart rate data collection that is inextricably bounded by certain user-input-minimizing conditions.”
So while Judge Freeman put Fitbit through its paces and deactivated two of its patents, at least one patent grew stronger through the exercise, as the patent world continues to grapple with the consequences of Alice.