Cellspin Soft, Inc. v. Fitbit LLC

Opinion

1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 OAKLAND DIVISION 4 CELLSPIN SOFT, INC., 5 Plaintiff, ORDER REGARDING DEFENDANTS’ MOTION FOR 6 SUMMARY JUDGMENT v. 7 FITBIT, INC., Case No. 17-cv-05928-YGR 8 Defendant. Dkt. Nos. 148, 151 9 v. 10 Case No. 17-cv-05929-YGR MOOV, INC., 11 Dkt. Nos. 130, 133 Defendant. 12 v. 13 Case No. 17-cv-05931-YGR NIKE, INC., 14 Dkt. Nos. 128, 131 Defendant. 15 v. 16 Case No. 17-cv-05932-YGR UNDER ARMOUR, INC., 17 Dkt. Nos. 110, 113 Defendant. 18 v. 19

Case No. 17-cv-05933-YGR 20 FOSSIL GROUP, INC., ET AL., Dkt. Nos. 193, 199 Defendants. 21

22 v. Case No. 17-cv-05934-YGR 23 G

ARMIN INTERNATIONAL, INC., ET AL., Dkt. Nos. 130, 133, 134 Defendants. 24

25 v. 26 Case No. 17-cv-05936-YGR NIKON AMERICAS, INC., ET AL., Dkt. Nos. 127, 130 27 Defendants. 1 Defendants have filed a motion for summary challenging the validity of the asserted patents under 35 2 U.S.C. § 101. Plaintiff opposes by identifying 55 inventive concepts in the 21 asserted claims. The Court 3 has reviewed the alleged inventive concepts and finds them insufficiently tied to the claims.1 Accordingly, 4 the parties are ORDERED to (1) submit a chart linking each alleged inventive concept to the asserted claims, 5 in the format illustrated below, and (2) identify representative claims that the Court may evaluate. 6 Alleged Inventive Relevant Claims Relevant Limitation or Representative 7 Concept Combination of Claim 8 Limitations Capturing and publishing Claim 1 of the ’794 “acquiring new data in the Claim 1 of the ’794 9 data using different Patent, etc. Bluetooth enabled data Patent devices captured device” . . . 10 “transferring the new data 11 received by the Bluetooth 12 enabled mobile device . . .to the one or more web 13 services” The ordered combination Claim 1 of the ’794 “establishing a paired Claim 1 of the ’794 14 of establishing a pair Patent, etc. connection between the Patent 15 connection before Bluetooth enabled data sending data capture device and the 16 Bluetooth enabled mobile device” . . . 17 “acquiring new data in the 18 Bluetooth enabled data 19 capture device”

20 A claim is representative if “the patentee does not present any meaningful argument for the 21 distinctive significance of any claim limitation not found in the representative claim or if the parties agree to 22 treat a claim is representative.” Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018). Thus, the 23 parties shall endeavor to agree, and if they cannot agree, plaintiff shall identify a meaningful argument, with 24 25 26 1 Although the Court has previously found claim 1 of the ’794 Patent representative of all asserted claims, that is plainly no longer the case. For example, the parties agree that use of HTTP is an alleged 27 inventive concept, but claim 1 of the ’794 Patent does n ot mention HTTP. A section 101 analysis divorced from the claims is improper. See Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285, 1293 1 || citation to its opposition brief, that a limitation that presents a distinctive significance to the section 101 analysis. Alternatively, the parties may identify representative claims for each alleged inventive concept 3 || while noting that claims generally overlap in those concepts. 4 The chart should be kept as short as possible. Minor differences in claim language should not be 5 || noted; language from the representative claim should be used instead. Failure to include an alleged 6 || inventive concept in the chart shall be deemed waiver of arguments related to that concept. The parties sh: 7 || file the chart and any statement regarding representative claims by December 22, 2020. 8 The hearing scheduled for December 15, 2020 regarding defendants’ motion for summary judgmer 9 || plaintiff’s motion to strike, and defendant Garmin’s motion to amend invalidity contentions is VACATED. 10 || The Court will reset the hearing date at a later date. 11 12 IT Is SO ORDERED. 13 || Dated: December 10, 2020 14 ‘prt Hag fg 15