Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's what's crossing my desk today:

• Fitbit and Garmin take two different approaches to Philips patent infringement suits.

• Kirkland turns down the volume on long-running Bionic Wrench patent suit.

• PTO's advisory committee is kinda, sorta pleased with report on inventor demographics.

As always, you can email me your feedback and follow me on Twitter.

 

Diverging Defenses in Fitness Tracker Cases

The fitness-tracking patent wars are flaring again in the run-up to Google's proposed $2.1 billion acquisition of Fitbit.

Philips North America sued Fitbit in Massachusetts federal court and Garmin in the Central District of California on the same day in July. Backed by Foley & Lardner partner Eley Thompson and senior counsel Lucas Silva, Philips accuses each company of marketing products that infringe its patents on a GPS-based athletic performance monitor and secure transmission of information between wireless devices, among other things.

Philips casts itself as the original innovator in the space, as embodied by its Actiwatch family of devices. It claims to have notified Fitbit and Garmin of their infringement in 2016, and says each "failed to provide any response to Philips."

It's interesting to compare the two defendants' reactions. Fibit brought a motion to dismiss under Section 101 on Wednesday, accusing Philips of taking known concepts about collecting and analyzing health and exercise information and applying them in a generic mobile phone environment.

The patents range from 11 to 22 years old—long before the Supreme Court began tightening standards for patent eligibility—and are rife with technology that was conventional even at the time, according to the Fitbit motion signed by Yar Chaikovsky and others at Paul Hastings. "The 'security mechanism' can include 'standard encryption algorithms,' and human behavior, such as a request for access to 'a responsible third party,'" Fitbit argues.

Garmin, meanwhile, has mounted only a cursory Section 101 defense. Instead it's filed what I would call half-counterclaim, half rant, accusing Philips of misleading the court about Garmin's supposed non-responsiveness. In fact, Garmin just concluded protracted litigation with Philips' parent company over European counterparts to the same patents, Garmin says. It resulted in the UK Patents Court invalidating many of the claims, based in part a 1997 study involving Garmin trackers.

"Philips' Complaint omits that Justice [Henry]Carr found that the very idea of asserted Claim 23 of the '007 Patent (audio performance feedback) was obvious: 'the applicability of audio feedback to runners using a GPS-based APMD was obvious,'" Rachael Lamkin of Lamkin IP Defense writes for Garmin (bold italics in original).

Garmin wants U.S. District Judge Andre Birotte to likewise declare the U.S. patents invalid and for Philips to pay Garmin's attorneys fees.

Philips says those were different patents decided under different laws, and that, actually, Justice Carr ordered Philips to pay damages based on an amended claim.

Lamkin and Garmin aren't backing off. "In the United States, a patentee cannot amend its claims during litigation, so Philips' only small victory in the European litigation will not be available to it here," Lamkin writes.

Birotte has indicated he'll rule on Philips' motion to dismiss the counterclaims without oral argument.

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Kirkland Turns the Screws in Tools Case

Kirkland & Ellis has thrown a hex on the Bionic Wrench. The Federal Circuit on Wednesday turned away an appeal from LoggerHead Tools, whose case against Sears Holding Corp. and a global tool supplier once drew national TV attention.

Backed by Bartlit Beck, LoggerHead had won a $6 million jury verdict in 2017 and was looking to triple it and add attorneys fees. The accused product was the Craftsman Max Access Locking Wrench, which LoggerHead claimed was a knockoff of its popular, made-in-America tool.

But the trial had been conducted under a claim construction from U.S. District Judge John Darrah, who passed away prior to trial. On post-trial motions Judge Rebecca Pallmeyer concluded that Darrah's construction was inaccurate, and eventually granted summary judgment of non-infringement to Sears and Apex.

At oral argument before the Federal Circuit earlier this month, LoggerHead appellate attorney Paul Skiermont of Skiermont Derby emphasized that Darrah had ruled for LoggerHead on "the exact same issue, with the exact same arguments."

Kirkland argued that Sears and Apex had taken the classical approach of designing to prior art that LoggerHead had been forced to distinguish when prosecuting its patent. "All of the intrinsic and extrinsic evidence supports the ultimate construction of the court by Judge Pallmeyer," Kirkland partner Marc Sernel told the court.

The Federal Circuit summarily ruled in Apex's favor on Wednesday. (The court had previously stayed the appeal against Sears, which is in bankruptcy proceedings.)

"We are very pleased by the Federal Circuit's decision, which affirms Judge Pallmeyer's well-reasoned opinion finding no infringement and confirms our belief all along that Apex and Sears acted appropriately throughout," Sernel said in a written statement. "We expect that this should be the last chapter in a long and sometimes painful road to the correct result."

PPAC Weighs in on SUCCESS Act Report

The Patent Public Advisory Committee sounds pleased with, though perhaps not enthused about, a USPTO report on the underrepresentation of women and minorities among named patent inventors.

In response to academic studies, Congress directed the PTO in last year's SUCCESS Act to identify publicly available data on the number of patents applied for and obtained each year by women, minorities and veterans, and make recommendations for promoting their participation.

The PTO issued its report last month. It concluded that while the gender of inventors can be inferred from names, there's no data for minorities and veterans. "Overall, there is a need for additional information to determine the participation rates of women, minorites and veterans in the patent system," the report concluded.

Congress could authorize a voluntary, confidential survey of patent applicants, but care would have to be exercised to avoid any perception that demographics are being taken into account in patent examination, the report cautions.

In the meantime, the PTO is planning to create an IP toolkit for corporate employee inventors to encourage greater participation, and an Innovation Council with representatives from the public, private corporations, academia, nonprofits and the government to help develop a national strategy.

The report also suggests Congress could authorize additional funding to promote invention and entrepreneurship and create a set of quarters and postage stamps featuring American inventors from a variety of backgrounds.

The Patent Public Advisory Committee (PPAC), which reviews the policies, goals and operations of the PTO, offered up its feedback at its quarterly meeting Thursday. PPAC chair Marylee Jenkins said she's heard from inventors and small business owners who were excited about the SUCCESS Act, "but didn't necessarily feel that some of the comments and suggestions that they made to the office were fully appreciated, maybe that's the best way to put it."

"I think folks would like to know that this is an ongoing process," added Jenkins, who's a partner at Arent Fox.

PPAC member Julie Mar-Spinola, chief IP officer at Finjan Holdings, commended the agency's efforts on diversity but said "it can't stop with the report."

Former PTO general counsel Bernard Knight asked for assurances that the forthcoming Innovation Council will consider the pros and cons of incentivizing underrepresented groups to file patents. "We were hoping that you'd at least take a look at it and let the user community know why you can or can't do certain things," Knight said.

Branden Ritchie, the PTO's director of government affairs, assured PPAC that PTO Director Andrei Iancu and Deputy Director Laura Peter are "fully committed to expanding the innovative ecosphere," and the agency's efforts "did not start nor will they end with the SUCCESS Act."

That's all from Skilled in the Art this week. I'll see you all again on Tuesday.