Developer of biometric wearable technology sues Apple, Fitbit for patent infringement

By Gene Quinn
January 7, 2016

PerformTek® sensor technology in action.

PerformTek® sensor technology in action.

On Monday, January 4, 2016, Valencell, an innovator in wearable biometric data sensor technology, filed patent infringement lawsuits in the United States District Court for the Eastern District of North Carolina against both Apple, Inc. and Fitbit, Inc. Valencell, a Delaware corporation, has its principle place of business in Raleigh, North Carolina.

“Valencell has repeatedly chosen to partner with existing consumer electronics companies and manufacturers while continuing to focus our R&D on creating the future in biometric wearables,” said Dr. Steven LeBoeuf, President of Valencell. As “the market has begun to value the importance of highly accurate biometric wearables, we’ve seen some companies choose to use our patented inventions without pursuing a patent license. We will defend our intellectual property to ensure our current and future licensees get the full value of licensing our inventions, as we continue to innovate around our foundational dream of seamless, personalized mobile health and fitness.”

Valencell alleges that Apple and Fitbit products both infringe on several patents they own, including U.S. Patent Nos. 8,923,941, 8,886,269, 8,929,965 and 8,989,830, which generally speaking relate to devices for physiological monitoring and associated methods and systems.

The complaint filed against Fitbit alleges that LeBoeuf approached Fitbit co-founder, James Park, dating back to at least 2009 regarding the possibility of Fitbit incorporating Valencell technology. While some interest was expressed the complaint says there was no follow-up. Valencell says they and Fitbit both attended the Consumer Electronics Show (CES) in January 2014, and Fitbit generally knew about the Valencell patent portfolio.

Fitbit, as you probably expect, does not accept the allegations of the Valecell complaint. After the article was originally published a spokesperson for Fitbit provided the following comment on the record:

As the pioneer and leader in the connected health and fitness market, Fitbit has independently developed and delivered innovative product offerings to empower its customers to lead healthier, more active lives. Since its inception, Fitbit has more than 200 issued patents and patent applications in this area. Fitbit plans to vigorously defend itself against these allegations.

Regardless of what the facts ultimately show as the Valencell-Fitbit dispute plays out, this type of allegation and denial looks like a fairly standard, ordinary patent infringement dispute. One party thinks there is infringement, the other party doesn’t think there is infringement. We have a business dispute here that will get sorted out in due order.

The allegations in the separately filed complaint against Apple are another matter entirely.

If the allegations in the Valencell complaint against Apple proves to be true, the dispute between Valencell and Apple yet another example of a small company that was lead astray by a larger company pretending to want to license their technology only to get a better look so they could shamelessly copy without regard to whether they infringed any existing patents. Indeed, the allegations Valencell levies against Apple are quite similar to those made by Separation Design Group IP Holdings against Inogen, Inc. See The story of the bullied patent owner, more widespread than bad acting patent trolls. This type of behavior is well known to be widespread, yet calls for patent reform never seem to address this type of bullying.

 

Valencell v. Apple

The Valencell complaint alleges that Apple contacted the company in February 2013 to inquire about the possibility of a partnership, specifically expressing interest in the Valencell heart sensor technology. In March 2013, the Valencell website was access by a variety of IP address collectively associated with Apple, and individuals at Apple downloaded white papers describing the Valencell biometric sensor technology. The complaint also specifically alleges that various named individuals on the Apple Watch design team were among those who accessed technical information from the Valencell website.

Furthermore, in the summer of 2013, Valencell demonstrated their technology to 15 Apple employees, showing Apple a heart-rate monitor substantially similar to that which was ultimately adopted into the Apple Watch. Subsequently, in August 2013, Apple acquired the Valencell technology and conducted detailed reverse engineering testing and analysis of the product circuitry.

Ultimately, no licensing deal was reached between Valencell and Apple.

In addition to charges of patent infringement the complaint asserts that Valencell believes Apple never had any intention of licensing their technology and gained access to the technology under false pretenses. The complaint says that would be in keeping with Apple’s long standing policy, quoting Steve Jobs as having said that Apple has “always been shameless about stealing great ideas.” See Complaint paragraph 14.

 

Conclusion

Valencell is seeking both preliminary and permanent injunctive relieve against both Apple and Fitbit, as well as a finding that the infringement has been willful. Valencell is requesting their attorneys fees under 35 U.S.C. §285, and is requesting an enhancement of damages under 35 U.S.C. §284.

Valencell is represented locally by Lynne Borchers of Myers Bigel Sibley & Sajovec, with pro hac vice motions for lead counsel Jeffrey Bragalone, Patrick Conroy and Jonahtan Rastegar of Bragalone Conroy to be filed.

 

UPDATED Thursday, January 7, 2016, at 5:03pm ET with statement from Fitbit.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 3 Comments comments.

  1. tim waller January 8, 2016 9:39 am

    Typical willfull infringement as seen throughout the country. shoul this be found true Apple should pay big time!!!!

  2. Pro Se January 8, 2016 12:27 pm

    1300+ pages of invalidatiy contentions for written response is what Valencell is looking at… been there and on to bigger landscapes… 🙂

  3. staff January 9, 2016 2:29 pm

    ‘another example of a small company that was lead astray’

    It happens all the time. Inventors will tell you big companies only look at our inventions so they can find out what we’re doing. It’s a form of industrial espionage. The mindset of large firms is NIH…Not Invented Here. If the inventor doesn’t have quality enforceable patents to protect their development work, they’re screwed. But those are hard to get in this era as the PTO loathes issuing patents covering valuable inventions and most all courts including many judges at SCOTUS and CAFC have bought the large thief ‘troll’ spin hook, line, and sinker. They have become tools for large invention thieves. Except for the wealthy and well connected, you can kiss American property rights good bye.The American dream is largely dead. The masses are now at their mercy as they steal at will -at least for now.

    Meanwhile, inventors tell these thieves to kiss…

    For more information please visit us at https://aminventorsforjustice.wordpress.com/
    or, contact us at tifj@mail.com