Cellspin Soft, Inc. v. Fitbit, Inc.
927 F.3d 1306
| Fed. Cir. | 2019Background
- Cellspin sued multiple device makers (Fitbit, Moov, Nike, Fossil, Garmin, Canon, GoPro, Panasonic, JKI) alleging infringement of four related patents (’794, ’752, ’698, ’847) for systems that pair a data-capture device with a mobile device to automatically transfer and publish captured data to web services.
- The asserted claims describe paired short-range wireless connections (e.g., Bluetooth), client software on each device, a push or pull transfer mode, use of HTTP to upload data via the mobile device, and cryptographic authentication in some patents.
- Defendants moved to dismiss under Fed. R. Civ. P. 12(b)(6)/(c) as patent-ineligible under 35 U.S.C. § 101; the district court granted the motions, finding the claims directed to an abstract idea and lacking an inventive concept.
- The district court also awarded attorney fees under 35 U.S.C. § 285 to several defendants, deeming the suits ‘‘exceptional’’ and criticizing Cellspin’s litigation strategy (multiple suits, late amendments, not filing a ‘‘test case’’).
- On appeal, the Federal Circuit agreed the claims are directed to an abstract idea but held the district court erred by refusing to credit Cellspin’s plausible factual allegations that specific claim limitations (two-device structure, pairing before transfer, HTTP at the intermediary) were unconventional, and thus improperly granted dismissal and fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether asserted claims are directed to an abstract idea under Alice step 1 | Claimed inventions improve Internet-incapable capture devices and mobile networks by offloading upload tasks to a paired mobile device, yielding a technological improvement | Claims merely recite capturing, transferring, publishing data — an abstract idea automated with generic components | Court: Claims are directed to the abstract idea of capturing/transferring/publishing data (step 1) |
| Whether claims contain an ‘‘inventive concept’’ under Alice step 2 | Alleged factual details (two-device separation, pairing before transfer, use of HTTP at intermediary, cryptographic key) plausibly show nonconventional combination and benefits (smaller devices, no separate data plan) | Limitations are conventional use of generic components; implementation merely replaces cable with Bluetooth or is a minor environment variation | Court: On pleaded facts, plausible inventive concept exists; district court erred by refusing to accept these well-pleaded allegations at the motion-to-dismiss stage |
| Whether factual disputes about conventionality can survive Rule 12 dismissal | Cellspin relied on specific factual allegations and amended complaints (citing prior-art differences and claimed benefits) to show factual dispute | Defendants argued such disputes belong at summary judgment or later; district court relied on earlier precedent to dismiss | Court: Aatrix and Berkheimer permit patentees to plead facts showing inventive concept; factual disputes can preclude § 101 dismissal under Rule 12(b)(6) |
| Whether district court properly awarded attorney fees under § 285 | Cellspin argued issued patents carry a presumption of validity/eligibility and its amendments were timely and justified by intervening precedent | District court found case ‘‘exceptional’’ due to meritlessness, aggressive multi‑case litigation, and late amendments | Court: Vacated fee award because dismissal was erroneous; district court also erred in treating granted patents as not presumptively eligible and in faulting timely amendments justified by intervening law |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (establishes two-step test for § 101 eligibility)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (framework for inventive concept inquiry)
- Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (patentee may survive Rule 12 by pleading factual allegations that claim elements are nonconventional)
- Berkheimer v. HP Inc., 881 F.3d 1360 (whether claim elements are well‑understood, routine, conventional can be a factual issue)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (claims improving computer functionality can be patent eligible)
- In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (claims for recording/transmitting/storing digital images held directed to an abstract idea)
- BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (inventive concept can lie in a nonconventional, non‑generic arrangement of known elements)
- Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (collecting/analyzing/displaying information falls into abstract-idea class)
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (issued patents are presumptively valid)