Cellspin Soft, Inc. v. Fitbit, Inc. et al. (Moov, Nike, Fossil, Canon, GoPro, Panasonic, and JKI); Docket Nos. 2018-1817-26, -2178-84 (June 25, 2019)
Brief Summary: DC grant of Fitbit’s motion to dismiss for patent ineligibility under section 101 and the award of attorney’s fees vacated and remanded (Cellspin’s complaint alleged an inventive concept under Alice/Mayo’s step two, DC erroneously concluded “that issued patents are presumed valid but not presumed patent eligible”).
- DC granted motion to dismiss under section 101 of Cellspin’s patents directed to automated publishing of content onto websites
- FC panel found DC erred since “patentees who adequately allege their claims contain inventive concepts survive a § 101 eligibility analysis under Rule 12(b)(6)” (Aatrix, FC 2018)
- FC panel also found the DC erroneously concluded “that issued patents are presumed valid but not presumed patent eligible”.
Summary: Cellspin appealed DC grant of Fitbit’s motion to dismiss for ineligibility under section 101 and the award of attorney’s fees to Fitbit. Cellspins’ four asserted patents (US 8,738,794; 8,892,752; 9,258,698; and 9,749,847) having the same specification and relating to automatic publishing of content captured from, e.g., digital camera to a website “automatically or with minimal user intervention” using “short range wireless communication protocols such as Bluetooth.” The DC found the ‘794 patent to be ineligible under section 101 under the Alice/Mayo framework (step one: is the “claim at issue is ‘directed to . . . [a] patent-ineligible concept,’ such as an abstract idea”; step two: “a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself’” (“‘an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity,’ are patent eligible” (Enfish, FC 2016; Elec. Power, FC 2016)). “While Cellspin alleged that the “asserted claims are directed to improving Internet-incapable data capture devices and mobile networks”, the FC panel disagreed, finding instead that those claims “are drawn to the idea of capturing and transmitting data from one device to another” and explained that it has “consistently held that similar claims reciting the collection, transfer, and publishing of data are directed to an abstract idea” (Alice/Mayo step one). The FC panel explained that under Alice/Mayo step two, “[i]f a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea” (BSG, FC 2018). Cellspin argued that its claimed method functions in several “unconventional” ways (e.g., “it was unconventional to separate the steps of capturing and publishing data so that each step would be performed by a different device linked via a wireless, paired connection”, “its specific ordered combination of elements was inventive”), and that these arguments were not accepted by the DC because “Cellspin ‘fail[ed] to cite to support in the [shared specification]’ for its allegations.” The FC panel explained that “[i]n Aatrix, however, we repeatedly cited allegations in the complaint to conclude that the disputed claims were potentially inventive” (Aatrix, FC 2018 (“patentees who adequately allege their claims contain inventive concepts survive a § 101 eligibility analysis under Rule 12(b)(6)”), and that the DC therefore erred in granting the motion to dismiss (Accepting the allegations stated above as true, we cannot conclude that the asserted claims lack an inventive concept.” BASCOM, FC 2016 (“[A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”)). The award of attorney’s fees was therefore vacated. On this point, the FC panel explained that the DC erroneously concluded “that issued patents are presumed valid but not presumed patent eligible” (Berkheimer, FC 2018) (“Cellspin’s decision to amend [its complaint] was also justified in light of Berkheimer and Aatrix, decided just a few weeks earlier.”)