Fitbit drops one of its patent suits against Jawbone

By Heather Mack
Share

Fitbit has dropped one of its several lawsuits against Jawbone. The patent case, which had been on track for trial in the International Trade Commission in March, was attempting to block the importation of existing and still-in-development Jawbone products on the basis that Jawbone had violated its patents.

The motion to terminate wasn’t a concession that Jawbone hadn’t violated anything after all, but that Fitbit essentially didn’t think it would be necessary -- because they believe Jawbone to be in financial dire straits. When Fitbit initially filed its complaint in September 2015, they were attempting to block Jawbone’s then-newest wearable activity trackers, the UP3 and UP4, but Jawbone’s myriad legal and financial woes have since already prompted the company to stop selling its devices anyway.

“Today, however, Jawbone appears to be a different company; it no longer offers for sale any of its wearable activity trackers, nor any of its other products,” Fitbit’s motion for termination of the investigation states. “Press reports and other public documents indicate that the demise of Jawbone’s products has created substantial questions of Jawbone’s ability to continue to operate. SEC filings of one of its biggest investors now value Jawbone shares as worth nothing, as well as indicate that Jawbone as filed for bankruptcy or is in default, as of October 6, 2016.”

Jawbone was understandably agreeable to the new development, saying it should have happened already.

“Jawbone believes this case -- involving patents already found once to be invalid -- should have been dismissed long ago by Fitbit,” a company spokesperson told MobiHealthNews in an email. “Fitbit's pursuit of these baseless claims for so long was to burden Jawbone -- an issue to be raised in Jawbone's antitrust claim against Fitbit. Jawbone's trade secret case in California state court against Fitbit will move forward to a jury trial in 2017.”

But Jawbone took issue with the reasons Fitbit presented for dropping the suit, going as far as to set the record straight in its own document submitted to the court.

“Fitbit’s patents are invalid and are not infringed by Jawbone’s current or future products. Jawbone thus does not oppose the relief requested by Fitbit. But the manner in which Fitbit makes its motion – amounting to a public attempt at misdirection – demands a response to correct the record,” Jawbone's lawyers wrote. “The 'facts' cited by Fitbit in support of its motion are not facts at all, but rather are press reports now months old that have little to no relevance on the decision to terminate now.”

The response goes on to suggest Fitbit is taking cheap shots at Jawbone’s financial troubles rather than acknowledging the possibility that Fitbit may not be able to determine whether they had a case at all.

“Rather, Fitbit calls into question the financial stability of Jawbone by relying on speculative press reports and third-party sources rather than any information directly from Jawbone,” the response states. “The publicly filed motion even goes so far to assert that Jawbone has declared bankruptcy, despite the absence of any bankruptcy petition to cite and the fact that discovery obtained in this investigation even in the last week is inconsistent with a company that has declared bankruptcy.”

Jawbone also suggested that Fitbit’s timing was questionable, given that the company had enough information to terminate the case earlier. In July, an ITC judge said that the patents were invalid because they didn’t cover ideas that are eligible for protection. but, later ruled that the previous judge was wrong in that ruling, allowing Fitbit to move forward.

This is far from the end of the two San Francisco wearable companies’ conflict. In May 2015, Jawbone sued Fitbit for allegedly stealing trade secrets, then filed another a month later surrounding infringement of patents Jawbone obtained it is acquisition of BodyMedia in 2013. In August of that same year, Jawbone attempted to get the ITC to block Fitbit’s imports based on the same complaints that formed the basis for the two lawsuits against Fitbit, which the ITC decided to investigate. Getting into September 2016, Fitbit filed the patent infringement lawsuit, which Jawbone responded to with a counterclaim in November. Finally, in February, Fitbit claimed that certain Jawbone patents are overly broad and thus invalid, resulting in their contesting a Jawbone patent before the US Patent and Trade Office’s Patent Trial and Appeal Board.