As an update to our April 13, 2016 blog post, US International Trade Commission administrative law judge (ALJ) Dee Lord has granted summary determination that the asserted claims of two of Jawbone’s remaining patents in its Section 337 action against Fitbit are directed to ineligible subject matter under 35 U.S.C. § 101.  Certain Activity Tracking Devices, Systems, and Components Thereof, Inv. No. 337-TA-963, Initial Determination Granting Respondents’ Motion for Summary Determination That The ‘413 And ‘707 Patents Are Directed to Ineligible Subject Matter, Order No. 54 (April 27, 2016).  Just last month, the Commission affirmed a prior Section 101 summary determination ruling by ALJ Lord in the same case regarding two other asserted patents.  That ruling was significant as it was the first ITC ruling involving patentable subject matter under Section 101 since the Supreme Court’s seminal decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).

ALJ Lord’s new summary determination ruling piggybacks on the earlier ruling, noting that the two patents subject to the instant motion and one of the activity-tracking patents previously found invalid are in the same patent family and have common priority claims.  According to the ruling, one of the patents “covers sleep monitoring, as opposed to [the] weight monitoring” of a previously invalidated patent, while the other patent “adds an output step to the generic version of the computerized system using sensors for monitoring health and wellness data that is described in the other patents.”  The decision holds that the claims of the two 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.”

In determining invalidity, ALJ Lord was unconvinced by the argument that the system’s wearability (i.e., it is “‘configured to be removably mounted’ on the individual’s body”) renders the subject matter patentable.  The ALJ states that “recording sleep and wakefulness is a function that can be carried out” by human mental processes and that humans have done so “for ages,” citing for support the famed 17^th century English diarist, Samuel Pepys, who tracked his sleep (among a multitude of other mundane, daily occurrences). The ALJ further notes that the patent describes off-the-shelf components that are not used “in new and unexpected ways” but rather for “their intended purposes,” and (citing Ultramercial Inc. v. Hulu LLC, 772 F.2d 709 (Fed. Cir. 2014)) that “[e]ven if the wearable device were new to the health care industry, that fact alone would not transform an abstract idea into patentable subject matter.”

The ALJ’s initial determination is now subject to review by the Commission within 30 days, or longer if the Commission determines to extend its time for review.