United States: Activity Tracking Devices: ALJ Finds Jawbone Patents Invalid Under Alice

On March 3, 2016, Administrative Law Judge Dee Lord granted summary determination of invalidity in Certain Activity Tracking Devices, Systems, and Components Thereof, Inv. No. 337-TA-963, Order No. 40 (Mar. 3, 2016), finding claims from two asserted patents invalid under Section 101.  This marks the first time since the Supreme Court's landmark decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), that any ITC judge has found claims invalid for claiming ineligible subject matter, and only the second time since 2010.

In the last six years, the Supreme Court has issued a series of important decisions concerning 35 U.S.C. § 101, which defines patentable subject matter (a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof").  Patents that attempt to claim a law of nature, a natural phenomenon, or an abstract idea fail to comply with Section 101.

The Supreme Court's decision in Alice, heralded a new era of successful defenses based on Section 101.  There have been more than a dozen Federal Circuit decisions on Section 101 issues since Alice, and in all but one, the Federal Circuit found the asserted patents invalid.  Alice has been cited in more than two hundred district court cases, and many patents have been successfully invalidated based on Section 101 challenges in post-grant proceedings before the PTO.

Until now, this trend has had minimal impact at the ITC.  As discussed in an earlier post, since 2010, each of the seven previous motions for summary determination filed at the ITC based on Section 101 was denied, and only once had that defense succeeded after a full hearing.  In denying summary determination motions, ITC judges have typically concluded that Section 101 issues could not be resolved before claim construction.  Indeed, Judge Lord aptly summarized the judges' typical stance on this issue less than a year ago, when she stated that "[a]lthough claim construction is not a prerequisite to a validity determination under § 101, 'it will ordinarily be desirable—and often necessary—to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.'"  Certain Communications or Computing Devices and Components Thereof, Inv. 337-TA-925, Order No. 32 at 5 (May 19, 2015), quoting Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012).

In the 963 Investigation (Certain Activity Tracking Devices, Systems, and Components Thereof), however, Judge Lord concluded that summary determination as to two patents was warranted because the patents were directed to ineligible subject matter and complainant had not established that a genuine issue of material fact existed because that precluded summary determination.   The patents were related to data used by wearable fitness trackers, like those allegedly manufactured by complainant Jawbone.  One patent claimed a "nutrition and activity management system that monitors energy expenditure through the use of a body-mounted sensing apparatus"; the second claimed methods for comparing values received from a wearable computer to a target score.  The Office of Unfair Import Investigations (OUII) agreed with respondents that these patents claimed only an abstract idea.

In an expansive, 32-page opinion, Judge Lord determined that the patents were invalid under Section 101.  Judge Lord first concluded that no presumption of eligibility applied to a Section 101 challenge.  Applying the two-part test articulated in Mayo Collaborative Services v. Prometheus Laboratories, Inc. 566 U.S. __, 132 S. Ct. 1289 (2012), and further explained in Alice, Judge Lord concluded that the disputed claims recited an abstract idea, and failed to add any inventive concept sufficient to transform the claim into patent-eligible subject matter.  Judge Lord held that "the subject matter of [one of the patents] is the collection and manipulation of information, not any specific, innovative technological means for performing these functions," and the other challenged patent was much the same.

Perhaps most significantly for ITC practitioners, Judge Lord also discussed why the Section 101 defense presented here was ripe for summary determination.  Citing two recent Federal Circuit opinions in Wireless Media Innovations v. Maher Terminals, Nos. 2015-1634, 2015-1635, 2016 WL 463218 (Fed. Cir. Feb. 8, 2016), and Mortgage Grader v. First Choice Loan, No. 2015-1415, 2016 WL 362415, at *8 (Fed. Cir. Jan. 20, 2016), Judge Lord noted that "several courts have held . . . that patent eligibility can be decided as early as the pleadings stage."  Judge Lord concluded that nothing prevented her from deciding the Section 101 issue now, rather than after a hearing on the full merits.

It bears not that there was no argument that claim construction precluded summary determination in this Investigation, which is unusual.  As Judge Lord explained, claim construction in the 963 Investigation was complete; a claim construction order issued on February 17.  There was therefore "no disputed claim construction" and no other "genuinely disputed facts that need to be resolved in order to determine patentability."  This is not often the case; in previous summary determination proceedings, including Judge Lord's decision last year in the 925 Investigation, ALJs have held that disputed claim construction issues precluded early resolution of Section 101 defenses.

Jawbone has petitioned the Commission for review of Judge Lord's Initial Determination (ID).  Respondents and the Staff have responded to that petition, and the Commission should decide whether to review the ID by May 2.  As Judge Lord observed in a footnote in her ID, the full Commission has not addressed Section 101 issues since Alice.  Meanwhile, respondents have moved for summary determination of Section 101 invalidity for all claims of the two remaining patents in the case, both of which are family members of one of the patents already held invalid.  However, on March 15 the parties jointly requested an extension of time to conduct settlement negotiations, highlighting the possibility that the dispute may be resolved before the Commission rules upon Judge Lord's ID.

This decision is only one more data point–it will be some time before a clear picture emerges of how the Commission views Section 101 defenses in this post-Alice era.  In particular, it will be interesting to see whether any ITC judge is willing to resolve a Section 101 issue before claim construction occurs or if other ALJs are also willing to resolve the issue after claim construction but before the evidentiary hearing, as Judge Lord did in the 963 Investigation.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Lynn I. Levine
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.