ITC judge invokes 17th-century diarist in ruling invalidating Jawbone patents in Fitbit case

By Jonah Comstock
01:00 pm

An administrative law judge at the International Trade Commission has ruled that the two Jawbone patents Fitbit was accused of infringing upon are ineligible and invalid. Judge Dee Lord went deep in her 25-page summary judgement, which among other things, invoked 17th-century diarist Samuel Pepys.

As regular readers of MobiHealthNews know, the ITC conflict is part of a constellation of legal battles between activity tracking market leaders Fitbit and Jawbone. In this particular case, Jawbone is suing to ask the ITC to block imports of Fitbits and Fitbit components on two grounds: alleged patent infringement, and the charge that Fitbit allegedly stole trade secrets from Jawbone when it hired former Jawbone employees. 

We previously reported that Fitbit planned to argue that Jawbone’s patents were inadmissibly broad, relying on the precedent of Alice v CLS Bank, which established that computerizing a human process was not enough to keep it from being considered an “abstract idea”, one of three categories of invention the Supreme Court has deemed unpatentable.

In Judge Lord’s decision, she ruled that “utilizing conventional electronic devices to obtain and manipulate sleep-related data of an individual is an abstract idea bereft of any innovative technological concept and, as such, cannot be monopolized by Jawbone.”

In an entertaining turn, Lord invoked Samuel Pepys, a 17th-Century English diarist who attained Internet-age popularity a few years ago when web designer Phil Gyford turned his extensive records into a blog and Twitter account. Pepys wrote quite a bit about his meals and sleep habits.

“Even assuming Pepys were the first person on earth to invent the idea of organizing the events of his life and recording them in a diary, Pepys would not be permitted under Alice to patent his system so as to preclude others from using a quill and paper to record, for example, the time they awoke each day. …,” Lord wrote. “It follows that, even if Pepys owned a unitary, wearable housing containing electronic components that could organize the events of his daily life and enable him to blog on the Internet that he was ‘up betimes’ (which is exactly the sort of thing Pepys would do), he would still not be allowed under Alice to obtain a patent to exclude others from using computers to organize, record, and transmit data about their own sleep habits.”

If the decision stands, it could be a powerful precedent for other patent infringement cases brewing in the world of wearables. However, Jawbone has plans to appeal the decision. 

“The two patents that are the subject of the ITC ruling represent only a portion of Jawbone's case against Fitbit and a small subset of Jawbone's overall patent portfolio,” Jawbone told MobiHealthNews in an emailed statement. “The Court confirmed that Fitbit will face a trial in 10 days on claims that it misappropriated Jawbone's trade secrets. In the meantime, the patent ruling will be appealed.”

Lord also ruled that the trade secrets claim had sufficient merit to debate in court (unlike the patent claims), so the ITC could still block Fitbit imports on those grounds. Fitbit declined to comment on the ruling, citing the ongoing litigation.


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