Opinion
Case No.: CV 19-06301-AB (KS)
06-08-2022
PHILIPS NORTH AMERICA LLC v. GARMIN INT'L, INC. et al.
Attorney(s) Present for Plaintiff(s): Jean-Paul Ciardullo, Eley O. Thompson, Ruben J. Rodrigues, Lucas I. Silva, John W. Custer. Attorney(s) Present for Defendant(s): Rachael D. Lamkin, Michelle L. Marriott.
Attorney(s) Present for Plaintiff(s): Jean-Paul Ciardullo, Eley O. Thompson, Ruben J. Rodrigues, Lucas I. Silva, John W. Custer.
Attorney(s) Present for Defendant(s): Rachael D. Lamkin, Michelle L. Marriott.
Proceedings: [IN CHAMBERS] ORDER GRANTING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT AND GRANTING-IN-PART AND DENYING-IN-PART DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
ANDRÉ BIROTTE JR., United States District Judge
Defendants Garmin International, Inc. and Garmin Ltd. (collectively, "Defendants") move for summary judgment that the accused Garmin watches do not infringe U.S. Patent No. 8,277,377 ("the ’377 Patent") and U.S. Patent No. 9,801,542 ("the ’542 Patent") (collectively, "the Asserted Patents"), and that the Asserted Patents are invalid. ("D-MSJ," Dkt. No. 145.) Plaintiff Philips North America LLC ("Plaintiff") opposed ("P-Opp.," Dkt. No. 154), and Defendants replied ("D-Reply," Dkt. No. 153).
Plaintiff also moves for summary judgment that Defendants’ Forerunner 301 system does not render the claims of the ’377 Patent invalid or to preclude Defendants from relying on the Forerunner 301 system as prior art to the ’377 Patent for failing to timely disclose the reference. ("P-MSJ," Dkt. No. 136.) Defendants opposed ("D-Opp.," Dkt. No. 150), and Plaintiff replied ("P-Reply," Dkt. No. 158).
The Court deems the matters appropriate for decision without oral argument. (See Fed. R. Civ. P. 78 ; C.D. Cal. L.R. 7-15.) For the reasons explained below, the Court GRANTS Plaintiff's motion and GRANTS-IN-PART and DENIES-IN-PART Defendants’ motion.
I. TECHNOLOGICAL BACKGROUND
A. The ’542 Patent
The ’542 Patent is titled "Health Monitoring Appliance." The earliest patent application it claims priority to is U.S. Patent Application No. 11/433,900, filed on May 12, 2006. The ’542 Patent lists Bao Tran and Ha Tran as the named inventors. The ’542 Patent issued on October 31, 2017.
The ’542 Patent generally relates to monitoring various physiological parameters of a patient without using invasive wiring. See ’542 Patent at 1:23–44. According to the ’542 Patent, the invention—due to its wireless nature—enables monitoring patient physiology without severely complicating sensitive medical procedures. See id. Figure 15A, reproduced below, "shows a system block diagram of the network-based patient monitoring system in a hospital or nursing home setting":
Id. at 62:60–62, Fig. 15A. The patient monitoring system in Figure 15A includes a "a patient component 215 ," "a server component 216 ," "a client component 217 ," "one or more mesh network patient transmitters 202 ," "one or more Web servers 205 ," "one or more waveform servers 204 ," "one or more mesh network receivers 211 ," "the network 105 ," "the hospital database 230 ," "a plurality of nurse computer user interface[s] 208, " "an applet," "a network client component 217 ," "a series of workstations 106 ," "media player applets 210 ," and "a path 221 ." Id. at 62:60–67, 63:1–23.
Plaintiff asserts independent Claim 13 of the ’542 Patent and claims that depend therefrom. See Dkt. No. 145 at 3. Claim 13 of the ’542 Patent recites:
13. A method for maintaining wellness in a user comprising the following steps:
a. using one or more sensors physically coupled to the user and connected to a network, to monitor one or more vital parameters, providing data representative of the user's physical condition;
b. analyzing the one or more vital parameters using a statistical analyzer,
trained with training data representing physiological conditions determined to be undesirable for the user to analyze the vital parameters to determine if the physiological conditions are undesirable; and
c. generating a warning indication when the user's physical condition is undesirable.
’542 Patent, Claim 13.
B. The ’377 Patent
The ’377 Patent is titled "Method and Apparatus for Monitoring Exercise with Wireless Internet Connectivity" and claims priority to Provisional Patent Application No. 61/172,486, filed on December 17, 1999. The ’377 Patent issued on October 2, 2012. According to the specification, the ’377 Patent :
[R]elates to monitoring of living subjects, and more particularly to health-monitoring of persons where measured or input health data is communicated by a wireless device to and from a software application running on an internet-connected server and where the same may be studied and processed by the software application, a health professional, or the subject.
See ’377 Patent at 1:35–41. The ’377 Patent discloses that the invention meets the need of "reduc[ing] health care costs through providing educational health care information and interactive physiological monitoring in the home environment by means of a user-friendly, interactive system." See id. at 2:2–5. Figure 2, reproduced below, "illustrates an embodiment of a wireless health-monitoring apparatus according to the present invention":
Id. at 5:26–28, Fig. 2. The wireless health monitoring system in Figure 2 includes "a[ ] [health monitoring device] 11 , which may include an optional monitor screen 40 , coupled via an optional adaptor 42 to a [wireless web device] 12 ." Id. at 6:46–48. The "[wireless web device] 12 connects wirelessly via an antenna 60 ." Id. at 6:48–49. Plaintiff asserts independent Claim 1 of the ’377 Patent and claims that depend therefrom. See Dkt. No. 145 at 3. Claim 1 of the ’377 Patent recites:
1. A method for interactive exercise monitoring, the method comprising the steps of:
a. downloading an application to a web-enabled wireless phone directly from a remote server over the internet;
b. coupling the a web-enabled wireless phone to a device which provides exercise-related information;
c. rendering a user interface on the web-enabled wireless phone;
d. using the application, receiving data indicating a physiologic status of a subject;
e. using the application, receiving data indicating an amount of exercise performed by the subject;
f. wherein at least one of the data indicating a physiologic status of a subject or the data indicating an amount of exercise performed by the subject is received from the device which provides exercise-related information, and wherein the data indicating a physiologic status of a subject is received at least partially while the subject is exercising;
g. sending the exercise-related information to an internet server via a wireless network;
h. receiving a calculated response from the server, the response associated with a calculation performed by the server based on the exercise-related information; and
i. using the application, displaying the response.
’377 Patent, Claim 1.
II. LEGAL STANDARD
Summary judgment is appropriate where there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a) ; Celotex Corp. v. Catrett , 477 U.S. 317, 330, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A fact is material when, under the governing law, the resolution of that fact might affect the outcome of the case. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. The burden of establishing the absence of a genuine issue of material fact lies with the moving party, see Celotex , 477 U.S. at 322–23, 106 S.Ct. 2548, and the court must view the facts and draw reasonable inferences in the light most favorable to the nonmoving party, Scott v. Harris , 550 U.S. 372, 378, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007).
To meet its burden, "[t]he moving party may produce evidence negating an essential element of the nonmoving party's case, or, after suitable discovery, the moving party may show that the nonmoving party does not have enough evidence of an essential element of its claim or defense to carry its ultimate burden of persuasion at trial." Nissan Fire & Marine Ins. Co. v. Fritz Cos. , 210 F.3d 1099, 1106 (9th Cir. 2000). Once the moving party satisfies its burden, the nonmoving party cannot simply rest on the pleadings or argue that any disagreement or "metaphysical doubt" about a material issue of fact precludes summary judgment. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). There is no genuine issue for trial where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party. Id. at 587, 106 S.Ct. 1348.
III. DISCUSSION
Plaintiff seeks judgment that Defendant's Forerunner 301 system does not invalidate the claims of the ’377 Patent or, alternatively, for an order by the Court that Defendants are precluded from relying on the Forerunner 301 system. (See generally P-MSJ.) Defendants seek judgment of noninfringement and invalidity of the asserted claims in this matter. (See generally D-MSJ.) The Court considers each argument below.
A. Whether Defendants’ Can Rely on the Forerunner 301 System
Plaintiff asserts that Defendants should be precluded from relying on the Forerunner 301 system as invalidating prior art for failing to disclose the reference in their invalidity contentions and in the parties’ joint stipulation to limit the asserted prior art. (See generally P-MSJ.) According to Plaintiff, the parties’ agreed to be bound by Northern District of California Local Patent Rule ("L.P.R.") 3-3, and Defendants did not identify the Forerunner 301 system in their invalidity contentions as required by that rule. (See id. at 4–6.) Instead, Plaintiff asserts that Defendants first disclosed the Forerunner 301 system as invalidity prior art in their expert reports, which Plaintiff contends is improper. (See id. at 6–8.) Plaintiff also argues that Defendants’ disclosure of the Forerunner 301 system for other patents is insufficient to disclose the reference for the ’377 Patent. (See id. at 8–9.) Additionally, Plaintiff asserts that per the parties’ stipulation, Defendants chose seven prior art references to assert against the ’377 Patent, and the Forerunner 301 system was not included. (See id. at 9–11 (citing Dkt Nos. 89, 90).) Finally, Plaintiff argues that the Court should not allow Defendants to amend their contentions now because they cannot show good cause for their delay and Plaintiff would be prejudiced. (See id. at 11–13.)
Defendants respond that the Court cannot grant judgment of no invalidity based on the Forerunner 301 system because Plaintiff does not compare the system to the claims of the ’377 Patent. (See D-Opp. at 2–3.) Instead, Defendants assert that Plaintiff's motion would be better suited as a motion to strike or motion in limine. (See id. at 3–6.) Defendants also argue that the Court never adopted the L.P.R.s, nor did it adopt L.P.R. 3-6 "relating to supplementation or amendment of invalidity contentions." (See id. at 7–8.) Further, Defendants contend that Plaintiff was not prejudiced by its belated disclosure because it had notice that the Forerunner 301 system could be used as invalidity prior art for the ’377 Patent because Defendants identified the prior art reference for other related patents and conducted significant discovery for the reference. (See id. at 9–12.) Finally, Defendants aver that there was good cause for their untimely disclosure because Plaintiff did not produce its interrogatory response regarding the priority date for the ’377 Patent until just before the close of fact discovery. (See id. at 12–15.)
The Court will preclude Defendants from relying on the Forerunner 301 system as invalidating prior art for the ’377 Patent. In patent cases, courts often require the parties to exchange infringement and invalidity contentions "to provide early notice of their infringement and invalidity" theories. O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc. , 467 F.3d 1355, 1365–66 (Fed. Cir. 2006). Requiring the exchange of contentions is "designed [to] make the parties more efficient, to streamline the litigation process, and to articulate with specificity" infringement and invalidity theories. Intertrust Techs. Corp. v. Microsoft Corp. , No. CV 01-1640 SBA, 2003 WL 23120174, at *2 (N.D. Cal. Dec. 1, 2003).
When a party opposing a claim of patent infringement serves its invalidity contentions, typically those contentions must identify "each item of prior art that allegedly anticipates each asserted claim or renders it obvious," including the "number, country of origin, and date of issue" of each prior art patent, and the "title, date of publication, and where feasible, author and publisher" of each prior art publication. See L.P.R. 3-3(a). Additionally, invalidity contentions should explain "[w]hether each item of prior art anticipates each asserted claim or renders it obvious." Id. at L.P.R. 3-3(b). "If obviousness is alleged," invalidity contentions should include "an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness." Id. Further, invalidity contentions should include "[a] chart identifying specifically where and how in each alleged item of prior art each limitation of each asserted claim is found," and disclose "[a]ny grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under 35 U.S.C. § 112(2) or enablement or written description under 35 U.S.C. § 112(1) of any of the asserted claims." Id. at L.P.R. 3-3(c)-(d).
"[C]ourts agree that the degree of specificity" required for contentions is that which is enough "to provide reasonable notice" to the opposing party. Geovector Corp. v. Samsung Electronics Co. Ltd. , No. CV 16-02463 WHO, 2017 WL 76950, at *3 (N.D. Cal. Jan. 9, 2017) (internal quotation marks omitted).
Under L.P.R. 3-6, a party may amend its invalidity contentions "only by order of the Court upon a timely showing of good cause." L.P.R. 3-6. To determine whether a party has shown good cause, a court considers (1) "whether [the party] was diligent in amending its contentions" and (2) whether the non-moving party will suffer prejudice. CBS Interactive, Inc. v. Etilize, Inc. , 257 F.R.D. 195, 201 (N.D. Cal. 2009) (citing O2 Micro , 467 F.3d at 1366–68 ). To show diligence, the party seeking leave to amend must show that it "promptly mov[ed] to amend when [the] new evidence is revealed in discovery." O2 Micro , 467 F.3d at 1363. "The party seeking to amend its contentions bears the burden of establishing diligence." Etilize , 257 F.R.D. at 201 (citing O2 Micro , 467 F.3d at 1366 ).
Although there is "no need to consider the question of prejudice" without diligence, "a court in its discretion may elect to do so." Apple Inc. v. Samsung Elecs. Co. , No. CV 12-00630 LHK, 2012 WL 5632618, at *2 (N.D. Cal. Nov. 15, 2012). Thus, "courts have granted a plaintiff's request to amend when the request does not appear to be motived by gamesmanship or when there is still ample time left in discovery." Dobeck v. Cobra Eng'g, Inc. , No. SACV 16-1570 JVS (FFMx), 2017 WL 8186769, at *2 (C.D. Cal. Apr. 12, 2017) (citing OpenDNS, Inc. v. Select Notifications Media, LLC , No. CV 11-05101 EJD, 2013 WL 2422623, at *3 (N.D. Cal. June 3, 2013) ).
As a preliminary matter, the Court treats Plaintiff's summary judgment motion as a motion to strike. Contrary to Defendants’ assertion, the Court and the parties agreed that the L.P.R.s governed the parties’ infringement and invalidity contentions, including the disclosure requirements for those contentions. (See Dkt. Nos. 46 at 3, 54 at 4.) Accepting Defendants’ position that there were no specific disclosure requirements for subsequent amendments in this case would render the parties’ contentions meaningless. Defendants also had at least two opportunities to identify the Forerunner 301 system as invalidating prior art for the ’377 Patent, both in their invalidity contentions and in their stipulated list of asserted prior art, yet failed to do so. Defendants’ arguments regarding Plaintiff's support for the priority date of the ’377 Patent are also insufficient to show good cause for their amendment. Additionally, Defendants have not shown that they were diligent in requesting leave to amend their contentions, and the Court declines to consider the prejudice to Plaintiff given the late stage of this matter.
Accordingly, the Court GRANTS Plaintiff's motion to preclude Defendants’ from relying on the Forerunner 301 system as invalidating prior art for the ’377 Patent.
B. Whether Defendants Infringe the Asserted Claims
1. Direct Infringement
Determining patent infringement is a two-step process. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1454 (Fed. Cir. 1998). "First, the court determines the scope and meaning of the patent claims asserted, and then the properly construed claims are compared to the allegedly infringing device." Id. (citations omitted). "Whether an accused device or method infringes a claim either literally or under the doctrine of equivalents is a question of fact." Schoell v. Regal Marine Indus., Inc. , 247 F.3d 1202, 1207 (Fed. Cir. 2001).
Because the ultimate burden of proving infringement rests with the patentee, an accused infringer moving for summary judgment may establish that summary judgment is proper "either by providing evidence that would preclude a finding of infringement, or by showing that the evidence on file fails to establish a material issue of fact essential to the patentee's case." Novartis Corp. v. Ben Venue Labs., Inc. , 271 F.3d 1043, 1046 (Fed. Cir. 2001) ; see also Medgraph, Inc. v. Medtronic, Inc. , 843 F.3d 942, 949 (Fed. Cir. 2016) (under the second step, "a grant of summary judgment of noninfringement is proper when no reasonable factfinder could find that the accused product contains every claim limitation or its equivalent"). If the moving party meets this threshold requirement, the burden shifts to the party asserting infringement to set forth, by declaration or as otherwise permitted under Fed. R. Civ. P. 56, "specific facts showing that there is a genuine issue for trial." Anderson , 477 U.S. at 248, 106 S.Ct. 2505.
In construing the claim language, the Court begins with the principle that "the words of a claim are generally given their ordinary and customary meaning." Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks omitted). Further, this ordinary and customary meaning "is the meaning that the [claim] term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1313. "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id.
"In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. In such circumstances general purpose dictionaries may be helpful." Id. at 1314 (internal citation omitted). In other cases, "determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art." Id. In those cases, "the court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Id. (internal quotation marks omitted). These sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. (internal quotation marks omitted).
But it is improper to read limitations from the specification into the claim. Callicrate v. Wadsworth Mfg., Inc. , 427 F.3d 1361, 1368 (Fed. Cir. 2005) (" ‘[I]f we once begin to include elements not mentioned in the claim, in order to limit such claim ... we should never know where to stop.’ " (quoting Phillips , 415 F.3d at 1312 )). "We do not import limitations into claims from examples or embodiments appearing only in a patent's written description, even when a specification describes very specific embodiments of the invention or even describes only a single embodiment, unless the specification makes clear that ‘the patentee ... intends for the claims and the embodiments in the specification to be strictly coextensive.’ " JVW Enterprises, Inc. v. Interact Accessories, Inc. , 424 F.3d 1324, 1335 (Fed. Cir. 2005) (internal citations omitted) (emphasis supplied).
2. Claim 13 of the ’542 Patent
Defendants argue that the accused Garmin watches do not infringe Claim 13 of the ’542 Patent, the only independent claim asserted from the ’542 Patent, because they are not "trained with training data representing physiological conditions determined to be undesirable for the user." (D-MSJ at 3–5.) In the Court's claim construction order, the Court rejected Defendants’ argument that the term "undesirable for the user" in Claim 13 was indefinite, stating, "Defendants have not shown by clear and convincing evidence that one of skill in the art in health monitoring could not determine what would be undesirable for a patient, given the patient's individual characteristics." ("Claim Construction Order," Dkt. No. 102 at 41.) Defendants now argue that because the physiological condition needs to be undesirable to a specific user, the training data representing the physiological condition needs to come from the same user. (D-MSJ at 4 (citing Claim Construction Order at 41).) Defendants argue that the accused watches are not trained by the same user because they are "pre-trained by one hundred and fifty-eight (158) people in Finland before the accused devices are ever sold to ‘the user’ in the United States." (Id. at 5 (citing "D-SUF," Dkt. No. 142 ¶¶ 1–2, 5–6).) Thus, Defendants assert that the accused watches do not infringe Claim 13.
Plaintiff responds that material disputes of fact preclude summary judgment as to whether the accused watches infringe Claim 13 of the ’542 Patent. According to Plaintiff, "[t]he claim does not require that the ‘training data’ of limitation 1(b) be derived from a particular user"; "[r]ather, ‘training data’ must merely represent physiological conditions determined to be undesirable for the user[.]" (P-Opp. at 8–9 (emphasis in original).) Plaintiff argues that Defendants’ interpretation of the claim language renders the term "representing" meaningless. (Id. at 9 (citing Merck & Co., Inc. v. Teva Pharms. USA, Inc. , 395 F.3d 1364, 1372 (Fed. Cir. 2005) ).) Plaintiff also asserts that Defendants reference the Court's Claim Construction Order out of context. (See id. at 9–10.) Additionally, Plaintiff avers that the specification "clearly contemplates the [claimed] statistical analyzer being trained prior to the collection of the specific user's vital signs that are fed to the statistical analyzer." (Id. at 10 (emphasis in original) (citing ’542 Patent at 9:19–41).) Because Plaintiff introduced evidence that the accused watches were trained with data "representing physiological conditions determined to be undesirable for the user," Plaintiff argues that the Court should deny Defendants’ motion. (See id. at 10–11 (citing Dkt. No. 146-2 ¶¶ 348, 354; Dkt. No. 153-2 at 13:2–17:11).)
Defendants reply that "the user" in step (a) of Claim 13 must be the same as in step (b), meaning the training data representing the user's undesirable physiological conditions must come from the user. (D-Reply at 10–11.) Defendants argue that their interpretation does not render the term "representing" meaningless because the "training data" still represents the specific user's physiological conditions. (Id. at 11.) Defendants also agree that the specification discloses that the claimed "statistical analyzer" can be trained in advance but argues that the specification still only discloses using the specific user's data to train the "statistical analyzer" to recognize the user's "undesirable" conditions. (Id. at 12 (citing ’542 Patent at 34:44–53, 36:19–20).)
The Court finds that the intrinsic evidence does not support limiting the term "training data" to data from the claimed "user." First , the claim language does not require the "training data" to come from the claimed user. Step a. of Claim 13 recites using sensors to monitor a user's vital parameters, which provide "data representative of the user's physical condition." ’542 Patent, Claim 13. Step b. of Claim 13 recites analyzing that data with a statistical analyzer to determine if the user's current condition is "undesirable." Id. The statistical analyzer is trained with a separate set of "training data representing" "physiological conditions" determined to be "undesirable" to the specific user. Id. Thus, a plain reading of the claim language suggests that the claimed "statistical analyzer" determines whether the user's condition is undesirable by comparing the data representing the user's current condition with the "training data" representing the undesirable physiological conditions generally. In other words, the claimed "statistical analyzer" can be trained with "training data" representative of certain "physiological conditions" prior to use, the user can later choose which of those "physiological conditions" are "undesirable," and the "statistical analyzer" can then monitor the user for those conditions.
Second , the specification supports interpreting the claimed "training data" to include data from individuals other than the user. For example, the specification discloses that the "statistical analyzer" will send the user a warning when the "statistical analyzer" determines that a user's glucose level is outside of "a well-established range" set by the training data. See ’542 Patent at 9:21–32. That suggests that the "training data" comes from many individuals to determine the "desirable" range for glucose levels. If the "statistical analyzer" determined the range solely based on the user's own data, the range could still include "dangerous" glucose levels associated with "undesirable" physiological conditions. Although Defendants cite instances where the "training data" may come from the user, Defendants have not shown that the specification expresses a clear intent to limit the scope of the term "training data" to data from the claimed user. See Thorner v. Sony Computer Entertainment America, LLC , 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, the Court rejects Defendants’ interpretation requiring the training data to come from the user.
Given that the Court construes the term "training data" to include data from individuals other than the claimed user, there is at least a genuine dispute of material fact whether the accused Garmin watches infringe Claim 13 of the ’542 Patent. Accordingly, the Court DENIES Defendants’ motion as to Defendants’ non-infringement defense for Claim 13 of the ’542 Patent. 3. Claim 1 of the ’377 Patent
Defendants assert that Plaintiff cannot prove that anyone performed all the claimed steps of the method recited in Claim 1 of the ’377 Patent, the only independent claim of the ’377 Patent asserted. (See D-MSJ at 5–6.) The Court previously found that Claim 1 of the ’377 Patent requires "real-time monitoring and uploading of information while a user is exercising." (Claim Construction Order at 34.) As both parties agree, "The data gathered by the Accused Devices can be divided into two categories: data gathered when the watch is ‘in Activity’ mode [i.e., exercise training data] and data gathered when not ‘in Activity’ mode (or all day data)," such as steps taken. (D-MSJ at 6; D-SUF ¶ 25.) According to Defendants, "Both types of data get sent from the watch to the phone application to Garmin's servers and back to the application when the watch and phone application/server perform a ‘sync.’ " (D-MSJ at 6.)
Defendants argue that the "sync" function of the accused watches does not send data in real time while the user is exercising. (D-MSJ at 6.) For the data collected during Activity mode, Defendants assert the accused watches block "all syncing of data between the watch and server/application while the user is exercising in Activity mode." (Id. at 7 (citing D-SUF ¶¶ 10, 11).) Defendants also argue that Plaintiff "has no evidence that any user has ever chosen to exercise out of Activity mode." (Id. (citing D-SUF ¶¶ 21–24).) As Defendants argue, no user would exercise outside of Activity mode either because Activity mode collects, stores, and analyzes specific exercise data that the user would lose if she exercised outside of Activity mode. (See id. at 7–8 (citing D-SUF ¶¶ 51–62).)
For the "synced" data outside of Activity mode, Defendants contend that "[s]ynced data is by definition and function historical data," and cannot be "real-time" data collected while the user is exercising. (See id. at 8 (citing D-SUF ¶ 8).) Defendants also aver that although the accused watches display real-time data outside of Activity mode, such as heart rate, "No athlete would stop her run, save her training data, perform a sync, and then wait for the data to return to her phone application if one wants real time data during exercise." (See id. at 8–9 (citing D-SUF ¶¶ 8, 16).)
Defendants also argue that Plaintiff cannot prove Defendants induced infringement of Claim 1 of the ’377 Patent. (See generally D-MSJ at 10–13.) Specifically, Defendants assert they do not encourage their "customers to use their watches to exercise, without putting the watch in exercise (Activity) mode, and to sync an accused device while exercising." (Id. at 11.) Defendants further contend that the other features cited by Plaintiff are either irrelevant or operate only in the non-infringing Activity mode. (See id. at 11–12.)
Defendants also assert that Plaintiff cannot prove its contributory infringement claim, which Plaintiff does not contest. (See id. at 13; P-Opp at 1 n.1.)
Plaintiff responds that it does not accuse the Activity mode feature of infringing limitation 1(f)(ii) of Claim 1, but rather the "Move IQ" feature and the sync feature that occurs when a user continues to exercise after exiting Activity mode. (See generally P-Opp at 2–6.) Plaintiff asserts, "the Move IQ feature analyzes users’ movement patterns to identify when users are exercising (such as running, walking, or riding a bike) with Activity Mode off." (Id. at 3 (citing "Heikes Dep. Tr.," Dkt. No. 153-3 at 17:12–21:12; "Henderson Dep. Tr.," Dkt. No. 153-4 at 56:5–10, 90:25–91:3, 92:4–93:5).) Plaintiff also contends that when a user exits Activity mode, the accused watches automatically trigger a data sync. (Id. at 5 (citing "Martin Infringement Rpt.," Dkt. No. 146-2 ¶¶ 196, 207).) Thus, if a user continued exercising after exiting Activity mode, the sync would send and display real-time data, as evidenced by one user's testimonial on an internet forum. (See id. at 5–6 (citing Martin Infringement Rpt. ¶ 207 n.23; Dkt. No. 153-6).) Considering that evidence, Plaintiff avers there is at least a genuine issue of material fact to defeat Defendants’ motion.
Additionally, Plaintiff argues that Defendants instruct their users to use the Move IQ feature and "on how to exit Activity Mode and save their Activities, which as discussed above, triggers an automatic sync, which also infringes the claims." (See id. at 6 (citing Martin Infringement Rpt. ¶ 196; "Fenix 5 User Manual," Dkt No. 153-7 at 2; "Forerunner 245/245 Music User Manual," Dkt No. 153-8 at 2–3; "Vivoactive 3 User Manual," Dkt. No. 153-9 at 7–8; "D2 Charlie User Manual," Dkt. No. 153-11 at 4).) Thus, Plaintiff asserts that there is a genuine dispute of material fact whether Defendants’ induce infringement of Claim 1 of the ’377 Patent.
Defendants reply that Plaintiff provides no evidence that anyone performed the steps recited in Claim 1 using the accused watches. (See generally D-Reply at 3–9.) Defendants argue that the only evidence Plaintiff provides for either theory is the testimony of Plaintiff's expert, Dr. Tom Martin, and "a person posting on a Garmin Forum," which Defendants assert do not create a genuine issue of material fact. (Id. at 5.) Defendants argue that Dr. Martin's opinions are not evidence that anyone performed the claimed steps. (Id. ) Defendants also emphasize that the forum post does not say the user continued to exercise after exiting Activity mode, does not say the user's watch synced with the user's phone, does not say when the user performed the step, and does not say the user performed the other recited steps. (See id. at 5–6.) Defendants further contend that the forum post is inadmissible hearsay, which Plaintiff cannot introduce through its expert. (See id. at 6–7 (citing Universal Elecs., Inc. v. Universal Remote Control, Inc. , No. SACV 12-00329 AG (JPRx), 2014 WL 12586737 at *5-6, 2014 U.S. Dist. LEXIS 182756, at *15–17 (C.D. Cal. Apr. 21, 2014) ).)
Regarding the Move IQ feature, Defendants argue that Plaintiff provides no evidence that anyone performed any of the recited steps or that Defendants told their "customers to monitor (send and upload) exercise data in real time." (Id. at 7 (citing Dkt. 157-2 ¶ 21).) Further, Defendants highlight that Plaintiff does not dispute that "Move IQ events do not infringe the ’377 Patent." (See id. (citing D-SUF ¶ 47).) Moreover, according to Defendants, "Move IQ does not allow the user to monitor her exercise in real time" by showing "physiologic data" as required by Claim 1, and "[i]t is not a real time event." (Id. at 9 (citing Henderson Dep. Tr. at 56:5–16).)
Finally, Defendants assert that Plaintiff's induced infringement claims fail because Defendants "actively discourage[ ] exercising when not in Activity mode," and the accused watches have substantial non-infringing uses. (See id. at 10.)
The Court finds that Plaintiff has not provided sufficient evidence to show that anyone has directly infringed Claim 1 of the ’377 Patent. "Unless the claim language only requires the capacity to perform a particular claim element, ... it is not enough to simply show that a product is capable of infringement; the patent owner must show evidence of specific instances of direct infringement." Fujitsu Ltd. v. Netgear Inc. , 620 F.3d 1321, 1329 (Fed. Cir. 2010). Nevertheless, "where an alleged infringer designs a product for use in an infringing way and instructs users to use the product in an infringing way, there is sufficient [circumstantial] evidence for a jury to find direct infringement." C. R. Bard Inc. v. AngioDynamics, Inc. , 979 F.3d 1372, 1379 (Fed. Cir. 2020) (quoting Toshiba Corp. v. Imation Corp. , 681 F.3d 1358, 1365 (Fed. Cir. 2012) ).
There is no direct evidence that anyone performed the claimed steps using the accused watches. Plaintiff does not offer any direct evidence for the Move IQ feature. For Plaintiff's theory that a user infringes Claim 1 when she continues to exercise after exiting Activity mode, the Court agrees with Defendants that Plaintiff's evidence does not create a genuine dispute of material fact. Dr. Martin's testimony cited by Plaintiff shows that the accused watches are only capable of infringing, which is insufficient to create a genuine dispute of material fact. See Fujitsu , 979 F.3d at 1379 (finding that expert testimony and instructions for a product proving that a product is capable of infringing was insufficient to create a genuine dispute of material fact that the product directly infringes). Further, Plaintiff's cited forum post is inadmissible hearsay and only shows that a user could split the exercise up into separate activities, not that the user actually did. (See Dkt. No. 153-6.) As Defendants also highlight, the post does not show that the user performed any of the other recited steps. (See id. )
Plaintiff's circumstantial evidence is also insufficient to create a genuine dispute of material fact. There is no evidence that Defendants instruct the user to continue exercising after exiting Activity mode. The evidence Plaintiff does provide suggests that the accused watches save the data "automatically" 30 minutes after the user exits Activity mode. (See Fenix 5 User Manual at 2.) Thus, the user would have to continue exercising for 30 minutes after exiting Activity mode, which Defendants do not instruct either.
Additionally, Plaintiff states that it is undisputed that Move IQ events do not infringe the ’377 Patent. (D-SUF ¶ 47; P-SGD," Dkt. No. 154 ¶ 47.) Further, the evidence shows that Move IQ is an optional feature that displays only the type of "activity" the user completed and the duration of the activity, not "data indicating a physiologic status of a subject" in real-time as required by Claim 1. (See, e.g. , Vivoactive 3 User Manual at PNA-GAR0001790–791; see also "Martin Dep. Tr," Dkt. No. 146-1 at 163:2–164:24; D-SUF ¶¶ 44, 45; P-SGD ¶¶ 44, 45.) As Dr. Martin explains, the accused devices only sync data "whenever a user manually requests a sync through the ’377 Device, whenever the Garmin Connect App is brought to the foreground of the phone, whenever a user indicates an activity is finished, and whenever the device initiates a periodic sync (which defaults to 4 hours)." (Martin Infringement Rpt. ¶ 200.) Dr. Martin concedes that "not every sync that occurs will happen while the user is exercising," and the evidence cited by Plaintiff does not instruct a user to perform any of the actions to sync the data. (Id. ¶ 201; see also, e.g. , Vivoactive 3 User Manual at PNA-GAR0001790–791.) Thus, the evidence falls short of showing that Defendants "design[ed] a product for use in an infringing way and instruct[ed] users to use the product in an infringing way." AngioDynamics , 979 F.3d at 1379.
Accordingly, the Court GRANTS Defendants’ motion as to Plaintiff's infringement claims for the ’377 Patent.
C. Whether the Asserted Patents are Valid
Defendants assert that Claims 13 and 15 of the ’542 Patent are invalid under 35 U.S.C. § 102 and the claims of the ’377 Patent are invalid under 35 U.S.C. § 101. (See D-MSJ at 14–20.) The Court considers each argument below.
1. The ’542 Patent
The Asserted Patents were filed before March 16, 2013, so the pre-America Invents Act version of § 102 applies. See Manual of Patent Examining Procedures (" MPEP") § 2159.01. It provides:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
* * *
(e) the invention was described in – (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent....
35 U.S.C. § 102 (2002).
Defendants assert that Claims 13 and 15 of the ’542 Patent are anticipated by U.S. Patent No. 7,502,498 to Wen et al. ("Wen ’498"), and is therefore, invalid under § 102. (D-MSJ at 19.) Wen ’498 was filed on September 10, 2004, and lists Huafeng Wen and Bao Tran as the named inventors. Wen ’498 predates the ’542 Patent, and both Wen ’498 and the ’542 Patent list Bao Tran as a named inventor. According to Defendants, "There is no dispute between the parties that Wen ’498 contains an identical relevant disclosure to the ’542 Patent." (Id. at 18 (citing D-SUF ¶¶ 98 (citing ’542 Patent at 2:39–51, 3:4–9:60 (except 3:41), 10:64–15:60, 16:15–18, 16:64–19:3)); see also P-SGD ¶ 98 (confirming undisputed as to the cited portions); "Wen ’498," Dkt. No. 146-17 (highlighting identical relevant disclosure).) Defendants argue that "if Wen is a joint inventor of the anticipating disclosure, then [Wen ’498 ] is ‘by another’ inventor, and is an invalidating reference." (D-MSJ at 18 (citing Duncan Parking Techs. Inc. v. IPS Group Inc. , 914 F.3d 1347, 1357 (Fed. Cir. 2019) ).) Defendants contend that because the two patents share the same relevant disclosure and Wen ’498 includes an additional inventor, Defendants have satisfied their burden of persuasion that the ’542 Patent is invalid. (Id. (citing Taurus IP, LLC v. DaimlerChrysler Corp. , 726 F.3d 1306, 1322 (Fed. Cir. 2013) ; United Video Prop., Inc., v. Haier Group Corp. , No. 11-cv-1140-KAJ, 2014 WL 12774922, at *30 (D. Del. May 16, 2014) ). Defendants therefore argue that the burden shifts to Plaintiff to produce evidence to rebut Defendants’ anticipation defense. (See id. )
Defendants also assert that Plaintiff cannot meet its burden to rebut Defendants’ anticipation defense. According to Defendants, "There is no contemporaneous documentary evidence in the record regarding the conception of the Wen ’498, and certainly none that would rebut the presumption that the Wen ’498 was the invention of Wen and Tran." (D-MSJ at 18–19.) Citing AMP, Inc. v. Fujitsu Microelectronics, Inc. , 853 F. Supp. 808, 821 (M.D. Pa. 1994), Defendants aver that Wen and Tran's "self-interested and uncorroborated testimony should not rebut Garmin's prima facie showing." (Id. at 19.) Thus, Defendants argue that the Court should grant summary judgment in their favor on their anticipation defense.
Plaintiff counters that Tran, not Wen, invented the technology described in the identical disclosures of the ’542 Patent and Wen ’498, and thus that technology was "not invented by another as required under § 102(e)." (P-Opp at 16–17.) Plaintiff asserts that "the inventors of Wen ’498 have offered sworn testimony regarding each inventor's contribution to Wen ’498 which would suffice to defeat summary judgment," but does not cite any evidence. (See id. ) Plaintiff cites United Video to argue that "the Federal Circuit has not yet applied the corroboration requirement" to situations where an asserted patent shares "almost an identical specification[ ]" with an earlier patent, and an inventor named on both patents testifies that they invented the technology shared by both patents. (See id. at 17–18 (citing 2014 WL 12774922, at *28–31 ).)
Plaintiff also argues that Wen and Tran's motivation for testifying goes to the credibility of their testimony, which is a dispute of material fact. (See id. at 18.) Further, Plaintiff avers that unlike the claims of Wen ’498, the claims of the ’542 Patent "are directed to wearable sensors, and Mr. Wen testified under cross examination from Garmin that he disagreed with the concept of using the ‘sensors coupled to the users approach[.]’ " (Id. (citing "Wen Dep. Tr.," Dkt. No. 153-3 at 122:18-21).) Plaintiff asserts that Wen's testimony shows that he did not contribute to the full scope of the claims of the ’542 Patent. (See id. )
Finally, Plaintiff asserts that the court's decision in AMP is distinguishable because the patentee moved for summary judgment that the inventors named on both patents invented the shared disclosure, and only offered declarations from the common inventors. (See id. at 18 (citing 853 F. Supp. at 818, 822 ).) By contrast, Plaintiff emphasizes that Defendants are the movants here and Plaintiff offered testimony from Wen, who is unnamed on the ’542 Patent and has no interest in the result of Defendants’ defense. (See id. )
Defendants reply that the only evidence Plaintiff submits to support that Tran invented all of the shared disclosure is an excerpt from Wen's deposition, which does not discuss inventorship at all. (D-Reply at 16.) Additionally, as Defendants highlight, United Video held that "a U.S. patent ... by a different inventive entity, whether or not the application shares some inventors in common with the patent, is prima facie evidence that the invention was made ‘by another.’ " (Id. at 17 (emphasis removed) (citing 2014 WL 12774922, at *30 ).) Therefore, Defendants argue the burden was on Plaintiff to rebut the fact that Wen ’498 and the ’542 Patent have the same relevant disclosure but different inventive entities, which Plaintiff failed to do. (Id. )
The Court agrees with Defendants that the burden shifted to Plaintiff to produce evidence to rebut that claimed invention of the ’542 Patent was invented "by another," which Plaintiff failed to do. The court in United Video held that "a full description of the invention in a different inventive entity's earlier-filed patent application," regardless of "whether or not the application shares some inventors in common with the patent, is prima facie evidence that the invention was made ‘by another’ " under § 102(e). 2014 WL 12774922, at *30. Plaintiff does not offer any law to the contrary, and the Court finds the analysis in United Video persuasive. Defendants assert that Wen ’498 and the ’542 Patent contain the same relevant disclosure, which Plaintiff does not meaningfully dispute. Although Plaintiff claims that both Wen and Tran testified on their respective contributions to Wen ’498, Plaintiff does not provide that testimony. Instead, Plaintiff only cites Wen's deposition testimony that Tran and Wen discussed using wearable sensors, and that "at the time [of the invention of Wen ’498 ], [Wen was] always against put[ting] wearables on the patient," whereas Tran said they should "because of the privacy issues." (See P-Opp at 18 (citing Wen Dep. Tr. at 122:18-21).) That testimony alone is insufficient to show that Tran conceived of using wearable sensors.
Because Plaintiff did not produce sufficient evidence to rebut Defendants’ prima facie case of anticipation under § 102, the Court GRANTS Defendants’ motion that Claims 13 and 15 of the ’542 Patent are invalid.
2. The ’377 Patent
Defendants move for summary judgment that the claims of the ’377 Patent are patent ineligible under § 101.
Under § 101, Congress granted broad patent eligibility to inventions or discoveries including "processes, machines, manufactures, and compositions of matter." See Bilski v. Kappos , 561 U.S. 593, 601, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). These broad categories notwithstanding, the Supreme Court has carved out three exceptions to patent eligibility under § 101 : " ‘laws of nature, physical phenomena, and abstract ideas.’ " Id. (quoting Diamond v. Chakrabarty , 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) ). The last exception, abstract ideas, is relevant here.
"[A]n invention is not rendered ineligible for patent simply because it involves an abstract concept. Applications of such concepts to a new and useful end ... remain eligible for patent protection." Alice Corp. Pty. v. CLS Bank Int'l , 573 U.S. 208, 217, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) (asking whether the invention "claim[s] the ‘buildin[g] block[s]’ of human ingenuity" or "integrate[s] the building blocks into something more"). In Alice , the Supreme Court set forth a two-step framework for determining patent eligibility under § 101. A claim is ineligible under section 101 if "(1) it is ‘directed to’ a patent-ineligible concept, i.e., a law of nature, natural phenomenon, or abstract idea, and (2), if so, the particular elements of the claim, considered ‘both individually and as an ordered combination,’ do not add enough to ‘transform the nature of the claim’ into a patent-eligible application.’ " Elec. Power Grp., LLC v. Alstom S.A. , 830 F.3d 1350, 1353 (Fed. Cir. 2016) (quoting Alice , 573 U.S. at 217, 134 S.Ct. 2347 (internal quotations omitted)).
Patent eligibility is a question of law that may include underlying questions of fact. Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d 1121, 1128 (Fed. Cir. 2018) ("While the ultimate determination of eligibility under § 101 is a question of law, like many legal questions, there can be subsidiary fact questions which must be resolved en route to the ultimate legal determination."); accord Berkheimer v. HP Inc. , 881 F.3d 1360, 1365 (Fed. Cir. 2018).
Under step one, "courts may ask whether the claims ‘focus on a specific means or method that improves the relevant technology’ or are ‘directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.’ " Nagravision SA v. NFL Enterprises, LLC , No. CV 17-03919 AB, 2018 WL 1807285, at *3 (C.D. Cal. Mar. 9, 2018) (quoting McRO, Inc. v. Bandai Namco Games Am. Inc. , 837 F.3d 1299, 1314 (Fed. Cir. 2016) ). In the software context, this step often "turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies as an abstract idea for which computers are invoked merely as a tool." Uniloc USA, Inc. v. LG Elecs. USA, Inc. , 957 F.3d 1303, 1306 (Fed. Cir. 2020) (quotation marks omitted).
If the claims fail step one, under step two, "the court must 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." accord Timeplay, Inc. v. Audience Entm't LLC , No. CV 15-05202 SJO, 2015 WL 9695321, at *3 (C.D. Cal. Nov. 10, 2015). This step is satisfied when the claim limitations "involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’ " Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n , 776 F.3d 1343, 1347–48 (Fed. Cir. 2014). "Whether the claim elements or the claimed combination are well-understood, routine, conventional is a question of fact." Aatrix Software , 882 F.3d at 1128.
Defendants assert that the claims of the ’377 Patent are directed to "idea of collecting, analyzing, and displaying data in real time." (D-MSJ at 14.) According to Defendants, another court has already held that the claims of the ’377 Patent are directed to an abstract idea in Philips North Am. LLC v. Fitbit, Inc. , No. CV 19-11586 FDS, 2021 WL 3516487, at *5 (D. Mass. Aug. 10, 2021), and Claim 1 of the ’377 Patent is "indistinguishable" from Claim 12 in Electric Power. (D-MSJ at 14 (citing 830 F.3d at 1353–54 ).) Although the court in Fitbit has yet to determine whether the claims recite an inventive concept, Defendants contend that the specification of the ’377 Patent and the testimony of the named inventor on the ’377 Patent, Roger Quy, show that the invention uses only conventional "off-the-shelf" equipment. (See id. at 15 (citing 2021 WL 3516487 at *6–8 ; ’377 Patent at 2:37–40, 3:52–65; 6:29–33; D-SUF ¶¶ 69–89).) Defendants also aver that the alleged inventive concepts that Dr. Martin identifies are not recited in the claims, are generic functionality, and were not inventive. (See id. at 15–17.)
Plaintiff responds that Defendants have not satisfied their burden of showing that Claim 1 of the ’377 Patent is directed to an abstract idea. (See P-Opp. at 11.) Plaintiff argues that Defendants’ reliance on the court's decisions in Fitbit and the Federal Circuit's decision in Electric Power alone is insufficient to prove that the claims are directed to an abstract idea. (See id. at 11–12.) Instead, Plaintiff characterizes Claim 1 as follows:
[C]laim 1 of the ’377 [P]atent is directed [to] a network platform architecture that includes downloading an application from a server to a web-enabled phone, employing the application to gather data from an exercise device coupled to the phone, then wirelessly sending that data to an interactive remote server, where the remote server performs calculations on the data and then returns that data to the web-enabled phone, where the application displays the response from server.
(Id. at 12.) According to Plaintiff, Claim 1 provides a patent-eligible improvement to computer functionality because "[b]y providing significant application functionality on the back end, less memory and processing capabilities become necessary on the WWD (i.e., on the ‘front-end’)," thereby providing an "enhanced user interface." (Id. at 12–13 (citing ’377 Patent at 2:27–28, 2:41–46, 4:32–41; LG Elecs. , 957 F.3d at 1307, 1309 ; SRI International, Inc. v. Cisco Systems, Inc. , 930 F.3d 1295, 1301–03 (Fed. Cir. 2019) ).)
Plaintiff argues that Defendants have not satisfied their burden of showing that Claim 1 does not recited an inventive concept either. (See id. at 14.) Specifically, Plaintiff contends that Defendants have not shown that the ordered combination of elements was routine or conventional at the time of the invention, December 17, 1999. (Id. at 14–15.) According to Plaintiff, "the ordered combination of the elements in [C]laim 1 are an improvement on the prior art devices that were limited in location, required modifications to the web-enabled phone, and did not have interactive, two-way communication to a back-end server." (Id. at 15 (citing BASCOM Glob. Internet Svcs. v. AT&T Mobility, LLC , 827 F.3d 1341 (Fed. Cir. 2016) ).) Plaintiff also cites the improvement to computer functionality recited above for step one of the Alice test as an inventive concept. (See id. at 16.) Moreover, Plaintiff asserts that because Dr. Martin opined that the ’377 Patent contains "multiple inventive concepts," there is at least a genuine dispute of material fact that forecloses Defendants’ motion. (Id. (citing "Martin Invalidity Rpt.," Dkt. No. 153-29 ¶¶ 94–98).)
Defendants reply that there is no factual dispute that Claim 1 is representative of the claims of the ’377 Patent and is directed to an abstract idea. (See D-Reply at 13.) Defendants also assert that the inventive concepts cited by Plaintiff, such as "memory" and "enhanced user interface," are not recited in the claims. (See id. at 13–14.) Additionally, Defendants aver that Plaintiff never disclosed the ordered combination of elements as an inventive concept, and even if it did, the order combination is "the natural, logical progression, not a unique combination." (Id. at 14–15 (citing Uniloc USA, Inc. v. ADP, LLC , 772 F. App'x 890, 900 (Fed. Cir. 2019) ; Strikeforce Techs., Inc. v. SecureAuth Corp. , No. CV 17-04314 JAK (SKx), 2017 WL 8808122, at *6–7, 2017 U.S. Dist. LEXIS 222516, at *18–19 (C.D. Cal. Dec. 1, 2017) ).) Finally, Defendants argue that Dr. Martin's unsupported opinions alone are insufficient to create a genuine dispute of material fact. (Id. at 15.)
The Court agrees that the claims of the ’377 Patent are directed to the abstract idea "of collecting, analyzing, and displaying data in real time," specifically "health" or "exercise-related" data. As an initial matter, Plaintiff does not genuinely dispute that Claim 1 is representative of the claims of the ’377 Patent, and the Court treats it as such. Additionally, as the court in Fitbit stated, "the Federal Circuit has ‘repeatedly held’ that ‘collecting, analyzing, and displaying data’ are ‘abstract concepts.’ " 2021 WL 3516487, at *5 (collecting cases). Claim 1 recites receiving health and exercise-related data from a subject, "sending the exercise-related information to an internet server via a wireless network," calculating a response based on the exercise-related information, and displaying the response. ’377 Patent, Claim 1. Claim 1 also recites the various means necessary for implementing the abstract idea, such as downloading an application to the "web-enabled wireless phone" and pairing the phone with a "device" to receive the data from the user, but those steps do not change that Claim 1 as a whole is directed to the abstract idea. See id. ; see also In re TLI Commc'ns LLC Pat. Litig. , 823 F.3d 607, 611 (Fed. Cir. 2016) ("[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.").
The specification also indicates that the claimed invention is directed to an abstract idea rather than an improvement to computer functionality. See TLI , 823 F.3d at 611 (finding claim that recited tangible components was still directed to an abstract idea where the "specification makes clear that the recited physical components merely provide a generic environment in which to carry out the abstract idea"). The specification of the ’377 Patent states that the claimed invention relates "to health-monitoring of persons where measured or input health data is communicated by a wireless device to and from a software application running on an internet-connected server and where the same may be studied and processed by the software application, a health professional, or the subject." ’377 Patent at 1:35–41. That statement, which addresses the invention as a whole, describes neither an improved wireless device nor an improved internet-connected server. Thus, the specification suggests that the tangible components "merely provide a generic environment in which to carry out the abstract idea." TLI , 823 F.3d at 611.
The Court finds that there is a genuine dispute of material fact whether Claim 1 recites an inventive concept, however. Specifically, a reasonable juror could find that Claim 1 recites the inventive concept of pairing the "web-enabled wireless phone" to a "device which provides exercise-related information" so that the "application" on the phone receives that data from the subject in real-time. The Federal Circuit's decision in Bascom is instructive. See 827 F.3d at 1349–52; see also Fitbit , 2021 WL 3516487, at *6–7 (finding that Plaintiff plausible alleged that Claim 1 of the ’377 Patent recited an inventive concept in view of Bascom ). The court in Fitbit provided a summary of the relevant portion of Bascom , which the Court reproduces below:
[T]he court found that the relevant claims were directed to filtering content on the Internet, an abstract idea, at step one. Yet it further found that the claimed invention contained a saving inventive concept—"the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user"—at step two. It reasoned that "the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content." The "non-conventional and non-generic arrangement of known, conventional pieces" transformed "the abstract idea of filtering content into a particular, practical application of that abstract idea."
2021 WL 3516487, at *6 (internal citations omitted).
Like in Bascom , the specification of the ’377 Patent ’s description of the technical improvement over the prior art suggests that Claim 1 recites an inventive concept. For the purposes of the motion, the Court accepts that the priority date of the ’377 Patent is December 17, 1999. In the "Background of the Invention" section, the specification describes prior art systems for accomplishing "efficient interactive communication of medical or health information between a subject or patient and a reviewer or provider of that information," which includes "a software application or algorithm that may analyze the information." ’377 Patent at 1:45–53. The specification disparages prior art systems that: (i) "limited the user to location in which the device was located," (ii) were "limited in their range" when wireless, (iii) required "significant modification to [a] mobile phone" to "increase the wireless health monitoring range," (iv) were "not designed to be used with ‘off-the-shelf’ wireless devices or health measuring equipment," and (v) offered only "one-way non-interactive data transfer" over the internet instead of employing "full back-end functionality." See id. at 1:54–2:51. The specification then discloses that the invention overcame those disadvantages "by providing a full-feature health-monitoring system that may wirelessly connect to a back-end server application via the internet," using a "wide variety of present medical or health-related instruments and devices." Id. at 2:22–63. Thus, the intrinsic evidence suggests that using a mobile device that had two-way communication with the internet to collect, analyze, and display health and exercise-related data in real-time was not routine or conventional at the time of the invention.
Dr. Martin also opined that the ordered combination of the recited components supplies the inventive concept. Specifically, Dr. Martin explained, "the ’377 Patent provided an advantage over the prior art by including a wireless system that provided ‘significant application functionality on the back-end,’ freeing up memory and processing capabilities on the front-end (the web-enabled wireless phone)." (Martin Invalidity Rpt. ¶ 95 (citing ’377 Patent at 4:36–40).) Although Dr. Martin did not recite the claimed components or state explicitly that it was the ordered combination of components that provided the inventive concept, his opinion implicitly suggests as much. Thus, Defendants had notice of Plaintiff's ordered combination theory, and Dr. Martin's testimony further supports that Claim 1 of the ’377 Patent recites an inventive concept.
Defendants’ arguments to the contrary are unpersuasive. Defendants argue that the recited "application," "server," and "phone" are generic (see D-Reply at 14), but the "non-conventional and non-generic arrangement of known, conventional pieces" may still provide an inventive concept. See Bascom , 827 F.3d at 1350. Defendants also assert that "[m]emory and an ‘enhanced user interface’ don't appear in the claims and cannot be relied upon." (See D-Reply at 14 (emphasis removed) (citing Am. Axle & Mfg. v. Neapco Holdings LLC , 967 F.3d 1285, 1293 (Fed. Cir. 2020) ).) Although Claim 1 does not explicitly recite those improvements, the recited elements provide those improvements. See ’377 Patent at 4:30–42. Finally, it is undisputed that Quy did not invent many of the components of the ordered combination, including several combinations of those elements. (See D-SUF ¶¶ 69–89; P-SGD ¶¶ 69–89.) Nevertheless, that evidence at most creates a triable issue of material fact whether the entire ordered combination is an inventive concept rather than routine and conventional components and activity.
Accordingly, the Court DENIES Defendants’ motion as to invalidity of the ’377 Patent.
IV. CONCLUSION
For the foregoing reasons, the Court GRANTS Plaintiff's motion and GRANTS-IN-PART and DENIES-IN-PART Defendants’ motion.