ITC says Fitbit can try to block Jawbone from selling in US

By Heather Mack

Favor is once again on Fitbit’s side in the ongoing legal battle between the leading wearable company and its increasingly beleagured competitor Jawbone. The US International Trade Commission ruled that a judge erred in deciding that two Fitbit patents weren’t eligible for legal protection. 

Now, Fitbit can pursue an effort to block Jawbone’s products from the US market, but Jawbone doesn’t think they will be successful, and implored outsiders to the case to view the decision in a specific context.

“The Commission did not find Fitbit’s patents valid. It just sent the case back for additional proceedings before the same judge that previously found all three Fitbit patents invalid. We are confident the Judge will reach the same result again after he makes the additional findings requested by the Commission. We also believe the Judge will find Fitbit’s patents are not infringed by any Jawbone products and that Jawbone’s own patents predate the patents Fitbit is trying to assert,” the company said in a statement.

In the meantime, Jawbone’s case against Fitbit for trade secret misappropriation proceeds in California state court and is headed to trial in 2017, the company said.

The last development in the longstanding drama between the two wearable companies was just a few weeks ago, when the ITC judge cleared Fitbit of stealing trade secrets from Jawbone. For Fitbit, the latest decision was yet another welcome update.

"We are pleased with the Commission’s decision to revive most of our patent infringement claims against Jawbone,” the company said in a statement. “As the pioneer and leader in the connected health and fitness market, Fitbit has spent the past nine years developing and delivering innovative product offerings to empower people around the world to lead healthier, more active lives. We are confident in the strong legal bases underlying our patent infringement claims and will continue to assert our IP against Jawbone to protect the innovations central to our product offerings."

The beef between the two companies has been simmering since May 2015 and we’ve been covering it ever since, when Jawbone sued Fitbit for allegedly stealing trade secrets. It continued from there, when a month later, Jawbone filed a second lawsuit, this time Jawbone sued Fitbit over alleged infringement of three patents Jawbone obtained when it acquired BodyMedia in 2013. BodyMedia’s extensive IP catalog was one of the key drivers of that acquisition.

In August 2015, a report emerged that Jawbone was trying to get the US International Trade Commission to block Fitbit’s imports into the US based on the same complaints that form the basis of the two lawsuits against Fitbit. Towards the end of August 2015, the ITC confirmed that it planned to investigate Jawbone’s claims.

Then, in November, Jawbone filed an answer and counterclaim against Fitbit in response to the patent infringement lawsuit that Fitbit filed in early September. In the counterclaim that Jawbone filed, the company said that Fitbit's suit was a "meritless patent case" that is "part of its by-any-means-necessary campaign" to slow down its competitors and maintain its position as the dominant fitness tracking device company. In that same month, a report emerged that Jawbone had laid off 60 employees, 15 percent of its workforce.

In February 2016, Fitbit claimed that certain Jawbone patents are overly broad and thus invalid. As a result, Fitbit is challenging a Jawbone patent before the US Patent and Trade Office’s Patent Trial and Appeal Board as well as asking the ITC to throw out three others based on a Supreme Court precedent.