DCT
4:17-cv-05932
Cellspin Soft Inc v. Under Armour Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cellspin Soft, Inc. (California)
- Defendant: Under Armour, Inc. (Maryland)
- Plaintiff’s Counsel: Collins Edmonds Schlather & Tower, PLLC
- Case Identification: 4:17-cv-05932, N.D. Cal., 03/02/2018
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant Under Armour operates regular and established places of business, such as retail stores, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s ecosystem of fitness tracking devices, mobile applications, and web services infringes patents related to methods and systems for automatically uploading data from a peripheral capture device to a web service via an intermediary mobile device.
- Technical Context: The technology concerns the connection of peripheral data capture devices (e.g., fitness trackers) to internet-based services using a smartphone as a bridge, a foundational architecture for the wearable technology and Internet of Things (IoT) markets.
- Key Procedural History: The complaint is an Amended Complaint, filed while motions to dismiss under 35 U.S.C. § 101 (concerning patent eligibility) were pending. The amendment was filed pursuant to a court order and plaintiff’s stated awareness of recent Federal Circuit decisions on the topic, suggesting an effort to add factual allegations to bolster the patents against invalidity challenges based on claiming an abstract idea.
Case Timeline
| Date | Event |
|---|---|
| 2007-12-28 | Priority Date for ’794, ’752, and ’847 Patents |
| 2014-05-27 | U.S. Patent No. 8,738,794 Issued |
| 2014-11-18 | U.S. Patent No. 8,892,752 Issued |
| 2017-06-15 | Plaintiff sent first notice letter regarding ’794 and ’752 Patents |
| 2017-08-29 | U.S. Patent No. 9,749,847 Issued |
| 2017-08-31 | Plaintiff sent second notice letter regarding ’794, ’752, and ’847 Patents |
| 2017-10-16 | Original Complaint Filed |
| 2018-03-02 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,738,794 - "Automatic Multimedia Upload for Publishing Data and Multimedia Content," issued May 27, 2014
The Invention Explained
- Problem Addressed: The patent's background section and the complaint describe the contemporary (c. 2007) process of publishing multimedia content from a dedicated capture device (e.g., a digital camera) as "cumbersome and time consuming" (Compl. ¶10). This typically involved manual, off-line transfers using cables or memory cards to a personal computer before the content could be uploaded to a website (’794 Patent, col. 1:38-47).
- The Patented Solution: The invention describes a method to streamline this process by using a Bluetooth-enabled mobile device as an intermediary. A software application on the mobile device establishes a paired connection with the data capture device, detects when new data is captured, automatically transfers the data to the mobile device, and then publishes it to one or more websites (’794 Patent, Abstract). This architecture shifts the data processing and internet connectivity tasks from the specialized, and potentially offline, capture device to the more versatile mobile device (’794 Patent, col. 4:26-53).
- Technical Importance: The claimed invention aimed to provide a method for near "real time" content publishing from devices that were not themselves internet-enabled, leveraging the emerging connectivity of smartphones to improve user convenience and the battery life of the capture device (Compl. ¶16, ¶18).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- The essential elements of independent claim 1 include:
- Providing a software module on a Bluetooth enabled data capture device and another on a Bluetooth enabled mobile device.
- Establishing a paired connection between the two devices.
- Acquiring new data on the capture device.
- The capture device's software module "determining the existence of new data" and "sending a data signal" to the mobile device.
- Automatically transferring the new data from the capture device to the mobile device.
- The mobile device's software applying a "user identifier" to the new data.
- The mobile device transferring the new data and user identifier to a web service.
- The web service making the new data available.
- The complaint reserves the right to assert dependent claims 2, 3, 4, 7, and 9 (Compl. ¶27).
U.S. Patent No. 8,892,752 - "Automatic Multimedia Upload for Publishing Data and Multimedia Content," issued November 18, 2014
The Invention Explained
- Problem Addressed: The ’752 Patent addresses the same general problem of inefficiently transferring data from a capture device to the internet (’752 Patent, col. 1:38-54). It places a greater emphasis on the specific protocols and security of the communication between the devices.
- The Patented Solution: The invention claims a method centered on a secure paired Bluetooth connection that uses a cryptographic encryption key. A key distinction is its use of an "event notification" model. The mobile device sends a message to the capture device to "enable event notification"; later, the capture device, upon determining new data exists, sends an "event notification" to the mobile device, which is configured to listen for it. The mobile device then handles the transfer of the encrypted data and subsequent upload to a remote server using a specified protocol (e.g., HTTP), destination address, and user identifier (’752 Patent, col. 12:1-34). The complaint suggests this event-driven model improves battery life for the capture device by avoiding constant broadcasting or polling (Compl. ¶18).
- Technical Importance: This patent describes a more power-efficient and secure communication architecture for peripheral-to-mobile data transfer, using an event-driven mechanism rather than continuous polling.
Key Claims at a Glance
- The complaint asserts independent claim 1.
- The essential elements of independent claim 1 include:
- Establishing a "secure paired Bluetooth connection" using a "cryptographic encryption key."
- Acquiring new data on the capture device.
- Detecting new data, which involves the capture device receiving a message from the mobile device "to enable event notification" and later "sending an event notification" to the listening mobile device.
- Encrypting the new data on the capture device.
- Transferring the encrypted data to the mobile device.
- The mobile device obtaining the new data from the encrypted data and sending it to a remote server with an attached "user identifier, an action setting and a destination web address."
- The complaint reserves the right to assert dependent claims 2, 4, 5, 12, 13, and 14 (Compl. ¶37).
U.S. Patent No. 9,749,847 - "Automatic Multimedia Upload for Publishing Data and Multimedia Content," issued August 29, 2017
- Technology Synopsis: This patent claims a system rather than a method. The system comprises a Bluetooth enabled data capture device (with a processor and memory) and a mobile application on a cellular phone. The capture device's processor is configured to acquire new data, store it, and send an "event notification" along with the new data to the paired phone. The mobile application is configured to listen for the notification, receive the data, store it in the phone's memory, and then use HTTP to transfer the data and user information to a website over a cellular network (Compl. ¶46).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶47).
- Accused Features: The accused systems are comprised of Under Armour's Bluetooth-enabled fitness tracking devices (e.g., Under Armour Band, UA HOVR smart shoes) and its mobile applications (e.g., UA Record, MapMyRun) (Compl. ¶47-48).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are a range of Under Armour ("UA") Bluetooth-enabled fitness tracking devices, mobile applications, and web services. The devices include the Under Armour HealthBox, Under Armour Band, Armour39, MapMyRun Bluetooth HR Monitor, Under Armour Scale, and smart footwear such as the UA HOVR series (Compl. ¶27). These are used in conjunction with UA's mobile applications, including UA Record and MapMyRun, which connect to UA's web services, such as record.underarmour.com (Compl. ¶27).
Functionality and Market Context
The complaint alleges that the accused devices function as data capture devices that monitor a user's biological and fitness metrics, such as heart rate and steps (Compl. ¶10). These devices establish a paired Bluetooth connection with a user's mobile device (e.g., a smartphone) (Compl. ¶28). The UA mobile application on the phone then allegedly receives the fitness data from the UA device and transfers it, along with user account information, to UA's web servers for storage, analysis, and display (Compl. ¶28). These products operate within the competitive market for consumer wearable technology and connected fitness services.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’794 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a software module on the Bluetooth enabled data capture device; | The firmware and software operating on the accused UA fitness tracking devices. | ¶29 | col. 12:56-61 |
| establishing a paired connection between the Bluetooth enabled data capture device and the Bluetooth enabled mobile device; | UA devices pair with a user's mobile phone via Bluetooth 4.0 protocols. | ¶28 | col. 4:54-56 |
| acquiring new data in the Bluetooth enabled data capture device... | UA devices monitor and record new fitness data, such as heart rate or steps. | ¶28 | col. 4:21-24 |
| determining the existence of new data for transfer, by the software module on the Bluetooth enabled data capture device; and sending a data signal... | The UA device determines that new tracking data is available and signals the mobile app to initiate a transfer. | ¶28 | col. 12:1-13 |
| transferring the new data from the Bluetooth enabled data capture device to the Bluetooth enabled mobile device automatically... | Fitness data is automatically synchronized from the UA device to the paired mobile device over Bluetooth. | ¶28 | col. 4:35-39 |
| applying, using the software module on the Bluetooth enabled mobile device, a user identifier to the new data... | The UA mobile application associates the incoming fitness data with the user's account information. | ¶28 | col. 12:20-24 |
| transferring the new data received... along with a user identifier to the one or more web services... | The UA mobile application uploads the fitness data and associated user account information to UA's web service. | ¶28 | col. 12:25-29 |
- Identified Points of Contention:
- Technical Question: What evidence demonstrates that the capture device's software performs the claimed step of "determining the existence of new data for transfer" and actively "sending a data signal," as opposed to a more common architecture where the mobile application periodically polls the capture device to "pull" new data? The claim places the intelligence for initiating the transfer on the capture device.
- Scope Question: Does the firmware on the accused fitness trackers constitute a "software module" as contemplated by the patent, which illustrates distinct functional modules (’794 Patent, Fig. 2), or is it a simpler, integrated set of instructions that may not meet the claimed limitation?
’752 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| establishing a secure paired Bluetooth connection between a Bluetooth enabled data capture device and a Bluetooth enabled mobile device using a cryptographic encryption key; | UA devices use Bluetooth 4.0, which includes security protocols, to establish a secure, encrypted connection with a mobile device. | ¶38 | col. 11:51-55 |
| receiving a message from the mobile device...to enable event notification...; determining existence of the new data...; sending an event notification to the mobile device... | The UA device receives a command from the mobile app to enable notifications, and later sends a notification when new data is ready for transfer, with the mobile app listening for that specific event. | ¶38 | col. 12:1-12 |
| encrypting, using the cryptographic encryption key, the new data acquired... | Data transferred between the UA device and the mobile device is encrypted as part of the secure Bluetooth connection. | ¶38 | col. 12:13-16 |
| transferring the encrypted data from the...capture device to the...mobile device, over the established secure paired Bluetooth connection... | The encrypted fitness data is transferred from the UA device to the mobile app over the secure connection. | ¶38 | col. 12:17-21 |
| ...the Bluetooth enabled mobile device is configured to send the obtained new data with an attached user identifier, a hypertext transfer protocol method, and a destination web address to a remote internet server. | The UA mobile application sends the fitness data, user account information, and a destination server address (e.g., record.underarmour.com) to UA's servers using an HTTP request. | ¶38 | col. 12:21-34 |
- Identified Points of Contention:
- Technical Question: Does the UA system's communication protocol match the specific two-step sequence claimed, where the mobile device first sends a message to enable notifications and the capture device later sends an event notification? The complaint's general allegations may not capture this specific technical nuance, which differs from a simple, one-way notification or a polling mechanism.
- Scope Question: Does the phrase "action setting" in the claim require a specific, discrete data field to be sent with the upload, and if so, does the accused system's HTTP request contain such a field, or does it merely imply the action (e.g., via the API endpoint that is called)?
V. Key Claim Terms for Construction
The Term: "software module on the Bluetooth enabled data capture device" (’794 Patent, Claim 1)
- Context and Importance: The definition of this term is critical because the accused capture devices are fitness trackers that may contain simple firmware. The dispute may turn on whether this firmware qualifies as a "software module" capable of the intelligent functions recited in the claim, such as "determining the existence of new data."
- Evidence for a Broader Interpretation: The specification suggests the "BT communication device" can be a simple "in-built BT capability chip" (’794 Patent, col. 4:44-45), which could support construing "software module" broadly to include basic, embedded firmware.
- Evidence for a Narrower Interpretation: The patent's figures depict distinct, named modules within the system architecture, such as a "data and file monitoring and detection module" (’794 Patent, Fig. 2, 203b). A defendant could argue this implies a requirement for more complex, compartmentalized software than what exists on a simple fitness tracker.
The Term: "sending a data signal" (’794 Patent, Claim 1) versus "sending an event notification" (’752 Patent, Claim 1)
- Context and Importance: The nature of the communication initiated by the capture device is central to infringement. Practitioners may focus on this term because the technical implementation (e.g., a simple broadcast vs. a structured, registered event) will determine whether the accused systems meet these limitations. The '752 Patent's language appears more specific and demanding.
- Intrinsic Evidence for Interpretation: The '794 Patent describes the signal more simply, stating the device "sends a signal... on creation of a new file" (’794 Patent, col. 4:56-58). In contrast, the '752 Patent embeds "sending an event notification" within a more complex, multi-step protocol that includes first "receiving a message... to enable event notifications" (’752 Patent, Claim 1), suggesting a more structured, pre-configured communication channel than a generic "signal."
VI. Other Allegations
- Indirect Infringement: The complaint alleges that UA induces infringement of the method claims in the ’752 Patent by providing users with the devices, software, and instructions, and by conditioning the benefits of its web service on users performing the claimed steps (Compl. ¶40). Similar allegations are made for the system claims of the ’847 Patent, where UA is alleged to induce users to assemble and use the infringing systems (Compl. ¶50).
- Willful Infringement: Willfulness is alleged for all three patents-in-suit. The allegations are based on UA's alleged continued infringement after receiving pre-suit notice letters from Cellspin. The complaint cites letters dated June 15, 2017 and August 31, 2017 for the ’794 and ’752 patents, and a letter dated August 31, 2017 for the ’847 patent (Compl. ¶30, ¶39, ¶49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of technical implementation: Does the accused Under Armour system rely on a "pull" architecture, where the mobile app polls the fitness tracker for data, or does it use a "push" architecture where the tracker itself autonomously determines new data exists and initiates a "signal" or "event notification" to a listening mobile app, as required by the claims?
- A key question of claim construction will be the scope of "software module on the... data capture device." The case may turn on whether this term can be construed to cover the integrated firmware of a consumer fitness tracker, or if it requires the more discrete, functionally-specific software components illustrated in the patent specification.
- A threshold question for the court, as signaled by the procedural history, will be patent eligibility: Are the claims directed to the abstract idea of collecting, transferring, and publishing data, or do they recite a specific, concrete, and unconventional technological improvement to the functionality of data capture devices and computer networks, sufficient to constitute an inventive concept under 35 U.S.C. § 101?