◆サーバとデバイス間のデータ通信に関する発明の特許適格性が争点となった事件。Step2の
inventive conceptがあるとして、eligible。
【Alice §101、patent-eligibility、抽象的アイディア、ordered combination】
（Step2について）
”B. Step Two
At step two, the Court must “consider the elements of each claim both individually and ‘as an ordered combination’” and assess whether there are any “additional features” in the claims that constitute an “inventive concept.” Alice, 134 S. Ct. at 2357. Jawbone argues that there are none because the asserted claims are comprised of elements (e.g., transferring information over Bluetooth, connecting to the internet, “mobile devices,” “server,” “client”) that are generic and well-known in the art. Mot. 20-21, Dkt. No. 88. Jawbone maintains that the claims are not confined to applications in wearable activity tracker technology, but that, even if they were, this does not save them under step two because limiting claims to a certain technical environment does not make them patentable. Id. at 21. Jawbone also argues that there is nothing inventive about the claims as an ordered combination, as there is nothing “non-conventional” or “non-generic” about how the claim elements are arranged and nothing they recite constitutes a specific improvement to portable device technology. Id. at 21-22.
Fitbit disagrees, asserting that the use of a server to identify eligible devices and the use of tapping, detected by a motion sensor, to validate a pairing are unconventional elements which supply an inventive concept. Opp. 16-17, Dkt. No. 105. Fitbit also argues that the ordered combination of claim elements also supplies an inventive concept because it recites a specific, detailed, non-conventional sequence of steps, which far from preempt the entire field. Id. at 17. Fitbit further contends that an inventive concept can be found in the fact that the claims “improve[] [the] existing technological process” of portable device pairing by addressing issues relating to security (i.e., setting forth a reliable pairing mechanism, which ensures that a user’s biometric data is not paired to the wrong device) without compromising design constraints. Id. at 17-18.
In reply, Jawbone argues that neither the server nor tapping supply an inventive concept, as the “server” in the claims is just a generic, undefined component and tapping was a known form of validation at the time of invention. Reply 7-10, Dkt. No. 108. Weighing the parties’ arguments against the asserted claims and appropriate context, the Court agrees with Jawbone that none of the claim elements, assessed individually, provide an inventive concept. Even under the Court’s constructions, the “server,” “client,” and “portable monitoring device” are, in broad terms, generic, conventional components, none of which are inventive. The various steps of transmitting or receiving information and how they are accomplished are also generic—the claims recite these steps only functionally and require no inventive algorithm or data structure for performing them. See DIRECTV, 838 F.3d at 1262 (finding no inventive concept where “[t]he claim simply recites the use of generic features of cellular telephones, such as a storage medium and a graphical user interface, as well as routine functions, such as transmitting and receiving signals, to implement the underlying idea.”).
The Court also agrees with Jawbone that the claims’ relation to wearable activity tracker technology, in and of itself, does not make them patent-eligible. As the Supreme Court and Federal Circuit have long held, “limiting the use of an abstract idea ‘to a particular technological environment’” “is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358.
Nevertheless, the Court agrees with Fitbit that the ordered combination of claim elements, interpreted in the light most favorable to Fitbit, contains inventive concepts. First, the addition of tapping as the form of validation is an inventive concept. As the background section of the patents highlights, one problem that confronted the process of pairing small, portable devices was that they were “purposefully designed to eliminate keyboards and multiple buttons in order to satisfy other design criteria.” ’053 patent, col. 1 ll. 49-51. Tapping overcame this problem in an inventive way because it took advantage of the inherent, technical capabilities of the portable monitoring device—its ability to detect motion with a motion sensor—to provide a manner of validating the device that was different from traditional forms of input (i.e., buttons and keyboards). This is similar to the inventive concept in BASCOM, which found that taking advantage of a technical feature of certain ISP servers—the ability “to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account”—transformed the idea of content filtering into a specific type of filtering that constituted a “technical improvement over prior art ways of filtering such content.” 827 F.3d at 1350.
Jawbone nevertheless contends that tapping cannot supply an inventive concept because it was known in the art. This argument conflates patent eligibility with novelty, which are inquiries that, although “might sometimes overlap,” Mayo, 132 S. Ct. at 1304, are separate. See Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (rejecting the argument that adding a second freeze-thaw cycle was not an inventive concept because it was allegedly obvious, reasoning that “patent-eligibility does not turn on ease of execution or obviousness of application. Those are questions that are examined under separate provisions of the Patent Act.”) (citing Mayo, 132 S. Ct. at 1304). 4 Thus, even if tapping was a known form of validation, this does not necessarily prevent it from having a transformative effect on an abstract idea and bringing it within the realm of patentable subject matter. It is the case that “recit[ing] [an] abstract idea . . . along with the requirement . . . to perform it on a set of generic computer components . . . would not contain an inventive concept” because that, at base, would still just be the abstract idea. BASCOM, 827 F.3d at 1350. Adding in tapping to a portable device pairing process—even if tapping was a known form of validation—is not this, because it transforms a more abstract device pairing process into something specific: a pairing process narrowly tailored to a certain class of devices, which enables them to be paired even though they lack buttons or keyboards. In this sense, it “improves an existing technological process” by expanding the scope of devices that can be paired. Alice, 134 S. Ct. at 2358. For these easons, tapping transforms the asserted claims into “something more” than just an abstract device pairing process. Accordingly, the fact that tapping appears in the prior art does not prevent it from supplying an inventive concept here.
Second, the use of a server as a part of the claimed pairing process supplies an inventive concept. As the name suggests, the concept of pairing traditionally involves two devices: the device that gets paired and the device it is paired with. See also ’053 patent, col. 1 ll. 35-38. By injecting a third device—a server—into this process, the asserted claims shift this paradigm so that all of the information needed for pairing does not have to be provided through the two devices.
Instead, the server can also regulate and facilitate this process. For example, the server can narrow the field of possible portable devices to pair by sending the client the list of devices that are “eligible”—e.g., devices that have not already been paired, that belong to a class of devices that that user’s account is authorized to work with, etc. Id., col. 6 l. 40-col. 7 l. 4. This helps accomplish the goal of “minimiz[ing] the amount of user interaction and input required in the pairing process,” because the server can automatically supply eligibility information that a user might otherwise have to supply himself. Accordingly, when viewed in the light most favorable to Fitbit, the server limitation also helps transform a more abstract device pairing process into “something more” because it narrows it to a specific, discrete implementation of this idea that specifically addresses needs in the particular field of portable device monitors.
In sum, both the use of tapping and the use of a server, when considered along with the rest of the claims as an ordered combination, supply an inventive concept that transforms the asserted claims into patent eligible subject matter under step two. ”
（February 9, 2017）
