In 2012, MobiHealthNews ran an article — contributed by patent lawyer Orion Armon of Cooley LLP — asking the question “Is mobile health about to enter a patent thicket?” Armon had noticed a stark rise in the number of patents being issued in the mobile health space. He predicted that this would likely lead to an increase in mobile health patent litigation.
Four years later, we haven’t seen nearly as much patent litigation as we expected. There’s been a decent amount of action in the wearable fitness tracker space and the telehealth space, as well as some early lawsuits around remote patient monitoring. But the wave of mHealth lawsuits from nonpracticing entities (so-called “patent trolls”) hasn’t really emerged in mobile health — at least not yet.
The biggest of these NPEs, Intellectual Ventures, hasn’t filed a single suit in the mobile health space according to the firm’s website, though it has litigated aggressively in the telecom and digital camera spaces since 2012.
The most obvious possible reason that we haven’t seen more aggressive litigation is that, in the cases where it has happened, it hasn’t proven terribly effective. Jawbone, a company that's in a tenuous financial position these days, paid more than $100 million for BodyMedia, mainly for its patent portfolio by most accounts. When it tried to use those patents to take down competitor Fitbit, it found them struck down by an ITC judge (a California state judge has yet to rule).
Bosch's former US-based subsidiary, Robert Bosch Healthcare, one of the first digital health companies to pursue an aggressive patent strategy, is now shut down. The company also saw a lot of its patents invalidated after it sued Cardiocom shortly before Cardiocom was bought by Medtronic.
Just yesterday, American Well was the latest company to see its patents, rather than its rival, struck down. At competitor Teladoc’s urging, the US Patent and Trademark Office (USPTO) invalidated the major elements of a telemedicine patent held by American Well. A Massachusetts court had earlier invalidated those same patents on a different basis.
Why aren’t mobile health patents holding up in court? There’s no one answer but there are common threads. Bosch’s patents were invalidated on the basis of obviousness. The USPTO invalidated American Well’s patents because, they said, American Well didn’t invent them. The Massachusetts judge had a different rationale for striking down those American Well patents, and it was notable because it was the same rationale used by the ITC judge that struck down Jawbone’s patents in its case against Fitbit.
The judges in those two cases cited a Supreme Court precedent, Alice v CSL Bank. Much older precedents have created a category of inventions that are unpatentable because they constitute an "abstract idea". Under Alice, a 2014 unanimous decision, the Supreme Court devised a test for whether computer software was a patentable invention or just the application of technology to an unpatentable human process, and therefore an unpatentable abstract idea. Both American Well and Jawbone failed that test.
Patent litigation in mobile health hasn’t been a total failure. CardioNet secured an early victory and at least three cases — Under Armour and Adidas, AirStrip and mVisum, and Bosch and Waldo — were settled out of court, some of which seem like they were wins for the plaintiff. But the overall picture doesn’t look too rosy for digital health companies considering a patent suit.
There are some cases still pending, as you’ll see in our roundup of digital health patent suits below. Maybe the winds could still change. But for now it seems like patent litigation may not the way to get ahead in the burgeoning field of digital health.
Read on for a brief history of digital health patent lawsuits as tracked by MobiHealthNews.
Robert Bosch Healthcare vs MedApps, Waldo, ExpressMD, and Cardiocom
By January 2012, Robert Bosch Healthcare Systems had sued three makers of remote home health monitoring technology, claiming that the competitors infringed on patents for Bosch's Health Buddy system. The telehealth business of German industrial conglomerate Robert Bosch GmbH filed three separate lawsuits in federal court in California against: mobile health monitoring technology vendor MedApps, of Scottsdale, Ariz.; Austin, Texas-based startup Waldo Networks; and telehealth vendor Express MD Solutions, Berkeley Heights, N.J.
Within two months Waldo Health settled with Bosch and became one of the first companies to license its technologies. Since then -- late April 2012 -- Waldo Health has been quiet. MedApps was acquired in the meantime by Alere, whose previous licensing agreements with Bosch may have ended the suit. The case against Express MD (now named Authentidate) was finally dismissed with prejudice in 2015.
Things got rough for Bosch in 2013 when it sued Cardiocom shortly before Cardiocom was bought by Medtronic -- forcing Bosch into a bigger fight than it bargained for. Bosch claimed Cardiocom infringed six patents through its Cardiocom Telehealth system, which electronically collects data from patients and communicates with them. Medtronic appealed Bosch's patents with the Patent Trial and Appeal Board, which subsequently invalidated a large part of Bosch's portfolio. By June 2015, the US subsidiary Bosch Healthcare shut down, and also closed down its telehealth service Health Buddy.
CardioNet vs MedTel
In 2012, CardioNet sued several companies, including heart-monitoring company MedTel for allegedly infringing five patents by either selling devices or offering cardiac monitoring services using CardioNet’s software. As reported by Law360, the court declared all five patents valid, enforceable and infringed in January 2014, and gave MedTel one year to phase out the cardiac monitoring system, but MedTel kept using it. In February 2016, MedTel was found in contempt of consent judgment for the second time, and CardioNet was awarded $1 million in fees.
Basis vs Bodymedia
Way back in 2012, BodyMedia sued BasisScience over alleged patent infringement, claiming the startup Basis infringed on six patents held by BodyMedia in more than 100 ways. Within days Basis filed its response and counterclaims. Basis believed the timing of the lawsuit was curious and an attempt to hinder its product’s launch, that the patents BodyMedia claims it infringes would not hold up in court, and that while it believed its device did not infringe on those patents, it didn’t believe BodyMedia could know that anyway, since its product had not yet launched.
The patent lawsuit dragged on a long time as both parties asked for a stay while the USPTO completed an inter partes review of the patents at hand. Ultimately, the patent board rejected all of BodyMedia’s patents in the case as obvious. By the time that happened, in 2015, both companies had been acquired, BodyMedia by Jawbone in 2013 and Basis by Intel in 2014, and both new owners agreed to drop the case.
AirStrip vs mVisum
In August 2012, San Antonio-based AirStrip Technologies secured a US patent to cover its methodology for mobilizing physiologic data to smartphones, tablets and other devices. The company’s core product is its mobile patient monitoring platform. Just a few months later in October, AirStrip brought a lawsuit against mVisum for allegedly infringing on its patent for the patient monitoring platform on smartphones, but the lawsuit was settled by April 2013.
The settlement allowed mVisum to continue to sell its products as long as those products aren't violating AirStrip's patent. Specifically, mVisum stated that it would not offer products that include the “streaming or displaying of real time or near- real time patient physiological data, and other products that compress, cache, or buffer patient physiological data on a smartphone or tablet.”
AirStrip stated that it had withdrawn its legal action and that neither company is licensing IP from the other. Originally, AirStrip had asked for an injunction barring future infringement, triple damages, and attorneys’ fees in its suit against mVisum, but no specific details emerged around how much money, if any, changed hands as part of the settlement.
Adidas vs Under Armour
In February 2014, Athletic apparel maker Adidas sued Under Armour in the US District Court in Delaware over the alleged infringement of 10 digital health-related patents. Adidas' lawsuit also included fitness tracking app maker MapMyFitness, which was acquired by Under Armour in November 2013 for $150 million.
Adidas patents cited in the lawsuit include ones for: a location-aware fitness training device that supports real-time interactive communication and automated route generation, systems and methods for presenting characteristics associated with a physical activity route, methods and computer program products for providing information about a user during a physical activity, and a mobile device that receives information from a server about a user's movement.
In March 2016, Adidas reached a confidential settlement with Under Armour and the MapMyFitness app. The claims were dismissed and Adidas agreed to grant Under Armour and MapMyFitness a license to use its patents for an undisclosed price.
Fitbit vs Jawbone (and Jawbone vs Fitbit)
The feud between Fitbit and Jawbone goes both ways. Both companies have filed suits against each other, with Jawbone kicking off the battle in May 2015. Just a few weeks after Fitbit filed for an IPO, Jawbone alleged that Fitbit poached employees who brought sensitive company data with them. Less than a month later, Jawbone sued Fitbit over allegations of infringement of three patents Jawbone obtained when it purchased BodyMedia in 2013. Shortly thereafter, Jawbone asked the US International Trade Commission involved to block Fitbit’s imports in the US based on the same complaints that form the basis of the lawsuits.
In September, the tables were turned whenFitbit filed a lawsuit against Jawbone, also over alleged patent infringement. The lawsuit claims Jawbone's UP Move, UP24, UP2, UP3, and UP4 as well as the UP software interface infringe on these patents. A similar case was filed with the ITC.
By February 2016 , there were at least four lawsuits in play between Fitbit and Jawbone which concerned patents: a California district court case in which Jawbone was the plaintiff, a Delaware district court case in which Fitbit was the plaintiff, an International Trade Commission case in which Jawbone is asking the ITC to block Fitbit's imports partly on the basis of patent infringement, and a similar ITC case in which Fitbit was the plaintiff.
Both the ITC patent cases are now resolved (pending appeal), with the ITC ruling with the defendant in both cases (deeming both parties’ patents invalid). The Delaware case was sent to Northern California district court, where both the non-ITC patent cases (Fitbit’s case against Jawbone and Jawbone’s case against Fitbit) are still pending.
Claims of patent infringement abound in telehealth, too. In June 2015, American Well sued competitor Teladoc over telemedicine patents, but a Massachusetts federal court deemed the patents unenforceable in July 2016. A month later, Teladoc scored again, when the US Patent and Trademark Office invalidated major elements of a patent held by American Well on the basis that they were not patentable because American Well did not invent them.
The lawsuit, which included both the patent and Teladoc's S-1 form as evidence, highlighted six distinct elements of the patented technology which are present in Teladoc's own description of its platform in the S-1. The suit also included another interesting tidbits: that apparently Teladoc approached American Well in the hopes of licensing the patent and was turned down. American Well pointed to this fact as evidence that Teladoc knowingly infringed the patent.
American Well has said it will appeal the ruling. It could also appeal the decision by the patent board.
Valencell vs Apple and Fitbit
In January 2016, heart rate sensor company Valencell sued both Apple and Fitbit over alleged patent infringement, and threw in some extra allegations against Apple for deceit. Valencell makes the PerformTek heart rate sensing technology, which it licenses to a number of partners including Sony, Jabra, LG, iRiver and Atlas Wearables.
The suit alleges that Apple stole technology that powers the heart rate sensor in the Apple Watch from Valencell, and that it obtained the technology through insincere partnership overtures and whitepapers downloaded under fake names. It also accuses Apple of patent infringement on four accounts, plus breach of contract and unfair and deceptive trade practices.
Valencell’s suit against Fitbit seeks damages for the infringement of four Valencell patents. It also mentions that Valencell tried to partner with Fitbit on multiple occasions (going back to 2009).
The cases are still pending.