Cellspin Soft, Inc. v. Fitbit, Inc.
316 F. Supp. 3d 1138
N.D. Cal.2018Background
- Four patents ('794, '752, '847, '698) assert methods/systems for transferring data from an "internet-incapable" capture device to an internet server via an intermediary mobile device using paired short-range wireless (e.g., Bluetooth) connections.
- The '752, '847, and '698 patents add features such as encrypted/secured paired connections and pushing event notifications within an already-paired connection; hardware recitations are generic (e.g., Bluetooth-enabled phone, mobile application, digital camera).
- Defendants moved to dismiss/for judgment on the pleadings under Rule 12(b)(6)/12(c), arguing claims are patent-ineligible under 35 U.S.C. § 101.
- The court applied the two-step Alice framework: (1) whether claims are directed to an abstract idea, and (2) if so, whether they contain an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter.
- Plaintiff (Cellspin) argued the patents disclose specific technological improvements (efficiency, battery/resource savings, leveraging mobile Internet capabilities) that render claims patent-eligible; the court found those benefits absent or unsupported in the specification and pleadings.
- The court held the '794 patent representative and concluded all asserted patents are directed to an abstract idea and lack an inventive concept; motions to dismiss and for judgment on the pleadings were granted.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the asserted claims directed to an abstract idea under Alice step one? | Patents claim specific technological improvements in acquiring/transferring/publishing data rooted in computer/network problems. | Claims merely recite collection, transfer, and publication of data using conventional wireless/phone technology — an abstract idea. | Held: Directed to an abstract idea (collecting/transferring/publishing data). |
| Do claims recite a specific improvement in computer functionality (distinguish Enfish/McRO)? | Analogized to Enfish/McRO, asserting nonconventional structure and rule-based improvements. | Patents lack specific novel structure or technical rules; they use generic components and known protocols. | Held: Not analogous; claims do not recite a specific technical improvement. |
| Do claim elements supply an inventive concept under Alice step two? | Benefits (efficiency, battery savings, resource conservation, encrypted push notifications) supply inventive concept. | Those benefits are not described in the specification/claims as inventive; recited components perform routine functions. | Held: No inventive concept; elements are conventional and perform expected functions. |
| Are differences among the patents ('752, '847, '698) sufficient to change § 101 outcome? | Variations (encryption, pushing event notifications, short-range wireless terminology) are inventive distinctions. | Differences do not supply an inventive concept beyond the same abstract idea. | Held: Differences insufficient; all asserted patents are unpatentable under § 101. |
Key Cases Cited
- Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) (establishes the two-step framework for patent-eligibility analysis under § 101)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (explains the need for an "inventive concept" at step two)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims directed to a specific improvement in computer functionality may avoid abstract-idea finding)
- In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) (collecting/transmitting images via conventional smartphone/server held abstract)
- Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting and presenting information is an abstract idea)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (some internet-centric solutions can be patent-eligible when rooted in computer technology, but caution against overbroad application)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343 (Fed. Cir. 2014) (use of generic computer functions does not render an abstract idea patent-eligible)
- McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (automation via detailed, non-subjective rules held patent-eligible)