On September 7, 2016, the Commission partially vacated and remanded Administrative Law Judge Pender's Initial Determination (ID) that the three patents-in-suit in the 973 Investigation (Wearable Activity Tracking Devices) were invalid under Section 101.

Fitbit, Inc. brought this investigation, alleging infringement of three of its patents: U.S. Patent No. 8,920,332 ("the '332 patent"); U.S. Patent No. 8,868,377 ("the '377 patent"); and U.S. Patent No. 9,089,760 ("the '760 patent"). Respondents moved for summary determination that all three patents were invalid under Section 101. The OUII investigative attorney filed a response supporting Respondents' motion as to the '760 patent but opposing as to the '332 and '377.

Judge Pender granted summary determination of invalidity as to all three patents. Judge Pender held that the '332 patent claimed the abstract ideas of measuring a user's heart rate when the heart rate monitor is in close proximity to the user and conserving power when that device is removed, relying pointedly on Fitbit's own representation that "[t]hese are all activities that have historically been performed by human beings without the need for a computer, much less a wearable computing device." 337-TA-973, Initial Determination, at 17 (July 19, 2016). Judge Pender also accepted Respondents' arguments that the '332 patent lacked an inventive step, which was "further underscored by a comparison to [a prior art application]." Id. at 13. Judge Pender held that "the evidence shows that using the same sensor to measure heart rate and to detect skin proximity was known at the time of the claimed invention" and that Fitbit's arguments that the prior art failed to disclose a sensor that can be used to measure heart rate and skin proximity were "mere denials or conclusory statements [] insufficient to survive summary judgment." Id. at 23-24. Similarly, Judge Pender found that the '377 patent, once "stripped of any conventional elements," recited "nothing more than the naked abstract idea of a portable activity monitoring device to calculate activity points corresponding to an amount and/or intensity of the physical activities of a user" (id. at 37) and that the '760 patent was directed to the "abstract concept of collecting information about a user's physical activity based on thresholds stored in the computer memory." (Id. at 50.)

The Commission did not review Judge Pender's determination as to the '760 patent but vacated as to the '332 and '377 patents. The Commission held that, by finding various elements claimed by those patents "conventional," "the ID did not view the evidence in the light most favorable to Fitbit as required to grant summary determination." 337-TA-973, Commission Opinion, at 2 (September 7, 2016). The Commission noted that the parties disputed what elements were present in the prior art. The Commission remanded the investigation to Judge Pender for further proceedings regarding those two patents.

This decision is important to practitioners considering moving for summary determination based on Section 101. While Judge Pender reasoned that a "pragmatic analysis of Section 101 is facilitated by considerations analogous to those of Sections 102 and 103," (citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015)), the Commission's opinion suggests that this analysis may not be ripe for resolution at the summary determination stage when there are disputed questions of fact as to what is disclosed by the prior art.

The parties to this investigation were on opposite sides of another ITC investigation that reached a different outcome. Fitbit, the Complainant in this 973 Investigation, was a Respondent in the 963 Investigation (Activity Tracking Devices), and some of the Respondents in the 973 Investigation (Jawbone Entities) were the Complainants in the 963 Investigation. In the 963 Investigation, Administrative Law Judge Lord agreed with Fitbit that Jawbone's asserted patents were invalid under Section 101 (see posts here and here), and the Commission affirmed that initial determination (see post here).

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