In re Certain Activity Tracking Devices, Systems, and Components Thereof
Pepys (17th century) recorded his sleep patterns, so wearable devices that record sleep patterns unpatentable?
On April 27, 2016, the U.S. International Trade Commission (ITC) issued an Order indicating that two patents owned by Jawbone are directed to ineligible subject matter. In a matter between activity tracking providers (Jawbone vs. Fitbit), Fitbit, Inc. filed a motion for summary determination, during an ITC proceeding, that U.S. Patent Nos. 8,961,413 and 8,073,707 are directed to ineligible subject matter under 35 U.S.C. § 101.
The ITC found that claims of the ‘413 and ‘707 patents seek a monopoly on the abstract ideas of collecting and monitoring sleep and other health-related data, and are therefore ineligible under section 101. No innovative concept was found to be claimed in either patent so as to save the patents from the claws of section 101. Specifically, with respect to systems for organizing human activity, the ITC found that courts have determined that a patent is not eligible when it claims the use of computer technology to accomplish tasks that were in the past performed by human beings.
Turning to the patents, the ‘413 and ‘707 patents are in the same patent family, and the ‘413 patent covers sleep monitoring, and the ‘707 patent adds an output step to the generic version of the computerized system using sensors for monitoring health and wellness data.
First, the ‘413 patent is entitled “Wireless Communications Device and Personal Monitor,” and is generally directed to a user-worn device for collecting and monitoring sleep and other health-related data. Jawbone asserted claims 1, 2, 3, 9, 11, and 12, and claim 1 is representative and reproduced below.
1. A system for monitoring and reporting a human status parameter of an individual, said system comprising:
a. a sole, unitary housing configured to be removably mounted on said individual’s body;
b. a first physiological sensor which automatically generates a first electronic sensor signal representative of a first physiological parameter of said individual, said sensor mounted within said housing;
c. a second sensor, mounted within said housing, which automatically generates a second electronic sensor signal representative of at least one of a contextual and a second physiological parameter of said individual;
d. a processing unit, mounted within said housing and in electronic communication with said sensors to receive said first and second electronic output signal representative of said individual’s sleep-related analytical status data from at least one of said first and second electronic sensor signals, wherein the sleep-related analytical status data includes sleep onset and wake information that is derived from the at least one of said first and second electronic sensor signals; and
e. a transceiver unit, mounted within said housing and in electronic communication with said processing unit which receives said electronic output signal from said processing unit, said transceiver unit generating an electronic transmission output signal for reception by another device.
Second, the ‘707 patent has claims that are similar to the ‘413 patent and add aspects of making data from the system available to the individual, “preferably over an electronic network.” The ‘707 patent states, however, that components of the device are well-known, and data collected can be stored in memory and uploaded “in various ways,” to a personal computer, and further that once the data is received, it is optionally compressed and encrypted by any one of a variety of “well-known methods” and then sent out over a local or global electronic network. The ‘707 patent goes so far as to state that electronic components of the system are off-the-shelf items available for purchase, and then lists specific products and companies offering the products.
Section 101 — Ineligible Subject Matter
The Supreme Court’s two-step test was utilized by the ITC to determine whether the claims satisfied section 101. In the first step, the court must decide whether a patent is drawn to an abstract idea. If the patent claims an abstract idea, the court in the second step seeks to identify an “inventive concept” sufficient to transform the claimed abstract idea into patent-eligible subject matter. The limitations must “narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.”
The ‘413 patent
Step One: The ITC stated that claim 1 of the ‘413 patent describes steps and means for collecting and recording information about an individual’s sleep status using conventional electronic components housed in a wearable device, and that utilizing conventional electronic devices to obtain and manipulate sleep-related data of an individual is an abstract idea bereft of any innovative technological concept. The ITC found that this type of information can be and has been collected and recorded by human minds and hands, and like other methods of organizing human activity that collect and manipulate data using a general-purpose computer, discloses an abstract idea directed towards ineligible subject-matter.
The ITC stated that monitoring sleep patterns using generic sensors and computer processors does not make claim 1 of the ‘413 patent less abstract. Referring to the Ultramercial decision, the ITC noted that a process of collecting data, organizing it in a computer database, and generating reports from the database to be communicated to the product’s user is “an abstraction.”
The ITC found that “[r]ecording times of sleep and wakefulness is a function that can be carried out in the human brain by an individual or by someone observing the individual, with or without the use of sensors,” and thus, because such methods can be performed mentally or are the equivalent of human mental work, the methods are unpatentable abstract ideas.
The ITC went so far as to say that human beings have recorded their sleep patterns for ages, and that the 17th century English diarist Samuel Pepys recorded this fact using quill and paper, and he passed it on to generations of readers over the centuries by means of print media.
Even assuming that Pepys was the first person on earth to invent the idea of organizing the events of his life and recording them in a diary, Pepys would not be permitted under Alice to patent his system so as to preclude others from using a quill and paper to record, for example, the time they awoke each day. Moreover, if Pepys used a ball point pen to record his diary entries more quickly and easily than with his quill, he still could not patent his system of organizing and recording the events of his daily life by writing them down on paper, so as to compel other diarists to pay him when they recorded, using a ball point pen, the time they awoke. It follows that, even if Pepys owned a unitary, wearable housing containing electronic components that could organize the events of his daily life and enable him to blog on the Internet that he was “up betimes” (which is exactly the sort of thing Pepys would do), he still would not be allowed under Alice to obtain a patent to exclude others from using computers to organize, record and transmit data about their own sleep habits. Obviously, if Pepys had invented quill, paper, pen, electronic sensors, processors, and transceivers, he could patent his inventions and prevent others from using these devices without a license during the statutory period to make a record of the days of their lives, but he did not.
That the ‘413 patent claims physical components does not rescue it from ineligibility. The ITC concluded that here, as in Alice, the recitation of a system consisting of “a handful of generic computer components” and a wearable device to house them is in substance no different than the abstract idea itself.
Step Two: The generic, off-the-shelf components included in the ‘413 patent’s system lack any inventive aspect.
The ‘707 Patent
Step One: The ITC similarly found that the independent claim of the ‘707 patent claims an abstract idea: collecting information about an individual’s health status and presenting information to the individual based on the data obtained.
Jawbone asserted that human beings cannot perform the functions of its patented system; but the ITC found that there is nothing to stop human beings from making the same calculations that a computer can perform using data derived from conventional sensors.
Jawbone claims that the system “transforms” the quality of the data, but the ITC stated that the actual claims do not encompass any transformation: the data inputs are manipulated in conventional, programmable devices that present the results to the user. The data remain data, and the patent describes only the use of generic computer functions using known methods.
Step Two: The ‘707 patent describes no technological advance and relies purely on conventional electronic devices.
Perhaps in this instance, based on how courts have been invalidating software claims with ease, looking forward some claims of this type could have been drafted more specifically to define how the first and second electronic output signal is representative of said individual’s sleep-related analytical status data, or to define how the sleep onset and wake information “is derived from” the at least one of said first and second electronic sensor signals. Without definitions, and only the broad/vague recitation, the court effectively ignored such limitations in the claims. Such limitations also seem to go to the heart of novel aspects, and could use additional details to guard against section 101 attacks.
Order by Dee Lord, Administrative Law Judge