Cellspin Soft Inc v. Nike Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Cellspin Soft, Inc. (California)
  • Defendant: Nike, Inc. (Oregon)
  • Plaintiff’s Counsel: Garteiser Honea, PLLC
• Case Identification: 2:22-cv-00455, E.D. Tex., 11/23/2022
• Venue Allegations: Plaintiff alleges venue is proper because Nike has at least one regular and established place of business in the district, including Nike Stores and/or Nike Outlet Stores.
• Core Dispute: Plaintiff alleges that Defendant’s Nike Adapt line of smart footwear and the associated mobile applications infringe three patents related to the automatic transfer of data from a peripheral device to a mobile device and subsequent publication to a web service.
• Technical Context: The technology concerns the automated synchronization of data between a wearable electronic device and a smartphone via a wireless protocol, and the subsequent transfer of that data to a remote server, a foundational concept in the wearable technology and Internet of Things (IoT) markets.
• Key Procedural History: The complaint notes that the patentability of the asserted claims under 35 U.S.C. § 101 was previously addressed and confirmed by the Federal Circuit in related litigation against Fitbit. The complaint also references a prior, administratively closed case between Cellspin and Nike in the Northern District of California, where Nike successfully opposed the inclusion of the currently accused Adapt products by arguing they were technically distinct and would require new claim construction for terms such as "data capture device".

Case Timeline

Date	Event
2007-12-28	Earliest 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
2017-08-29	U.S. Patent No. 9,749,847 Issued
2019-07-26	Federal Circuit decision in Cellspin v. Fitbit
2021-04-14	N.D. Cal. order in Cellspin v. Fitbit
2022-11-23	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 describes the process of sharing multimedia content as inconvenient and time-consuming, requiring users to manually transfer files from a capture device (like a digital camera) to a computer using a cable and then manually upload the content to a website (’794 Patent, col. 1:36-48).
• The Patented Solution: The invention proposes a method where a "digital data capture device" is wirelessly paired with a "mobile device" (e.g., a smartphone) using a protocol like Bluetooth. A client application on the mobile device can then automatically detect new data on the capture device, transfer it to the mobile device, and publish it to one or more web services with minimal user intervention (’794 Patent, Abstract; col. 3:32-38). The system architecture consists of two physically separate devices that communicate wirelessly (’794 Patent, Fig. 2).
• Technical Importance: The technology aimed to automate the content sharing workflow from peripheral devices by using a smartphone as a connected hub, prefiguring common architectures in the modern IoT market (’794 Patent, col. 1:49-54).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2, 3, 4, 7, and 9 (Compl. ¶22).
• Independent Claim 1 is a method claim with the following essential elements:
  • Providing software modules on both a Bluetooth enabled "data capture device" and a Bluetooth enabled "mobile device".
  • Establishing a "paired connection" between the two devices.
  • Acquiring new data on the "data capture device" after the connection is established.
  • The "data capture device" "detecting and signaling" the new data to the mobile device.
  • "Transferring" the new data from the capture device to the mobile device.
  • The "mobile device" "applying a user identifier" to the new data for a "destination web service".
  • "Transferring" the new data and user identifier from the mobile device to one or more "web services".
  • The "web services" receiving and making the new data available.

U.S. Patent No. 8,892,752 - "Automatic Multimedia Upload for Publishing Data and Multimedia Content" (Issued Nov. 18, 2014)

The Invention Explained

• Problem Addressed: The patent addresses the same problem of inconvenient manual data transfer and uploading as its parent, the ’794 patent (’752 Patent, col. 2:36-54).
• The Patented Solution: This continuation patent claims a more specific and secure method for data transfer. The solution requires establishing a "secure" paired Bluetooth connection using a "cryptographic encryption key". The method involves the mobile device sending a message to the data capture device to enable "event notifications". The data capture device then encrypts the new data and transfers the encrypted data to the mobile device, which decrypts it and sends it to a remote internet server (’752 Patent, Abstract; col. 12:7-28).
• Technical Importance: This invention adds layers of security (encryption) and a more sophisticated, managed communication protocol (event notification) to the base concept, enhancing its suitability for transferring potentially sensitive user data (’752 Patent, col. 12:50-65).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 12, and dependent claims 2, 4, 5, 13, and 14 (Compl. ¶32).
• Independent Claim 1 is a method claim with the following essential elements:
  • Performing steps at the "data capture device", including:
  • Establishing a "secure paired Bluetooth connection" using a "cryptographic encryption key".
  • Acquiring new data.
  • "Detecting and signaling" the new data, which includes receiving a message to "enable event notifications".
  • "Encrypting" the new data using the cryptographic key.
  • "Transferring the encrypted data" to the mobile device.
  • The claim further specifies steps at the mobile device, including receiving and decrypting the data, attaching user identifiers and a "destination web address", and sending the data to a "remote internet server".

Multi-Patent Capsule: U.S. Patent No. 9,749,847 - "Automatic Multimedia Upload for Publishing Data and Multimedia Content" (Issued Aug. 29, 2017)

• Technology Synopsis: This patent, a continuation in the same family, claims a "system" rather than a method. It addresses the same problem of automated data transfer and publishing. The claimed solution is a system comprising a Bluetooth enabled data capture device (with a processor configured to send an "event notification" and new data) and a mobile application on a cellular phone (with a processor configured to receive the data and use HTTP to transfer it to a website) (’847 Patent, Abstract; Claim 1).
• Asserted Claims: Independent claim 1 and dependent claims 2 and 3 (Compl. ¶42).
• Accused Features: The complaint alleges that the "Nike Systems," comprising the Nike Adapt Wearable and the Nike Adapt App operating together, infringe the system claims of the ’847 patent (Compl. ¶43-44).

III. The Accused Instrumentality

• Product Identification: The accused instrumentalities are the "Nike Adapt shoe line," including multiple listed models such as the Nike Adapt Auto Max and Nike Adapt BB, and the associated "Nike Adapt" mobile applications for iOS and Android (Compl. ¶14-15).
• Functionality and Market Context: The complaint alleges the Nike Adapt shoes ("Nike Adapt Wearable") are smart footwear that contain electronic components capable of connecting to a smartphone via Bluetooth. The cover page image shows a Nike Adapt shoe, a smartphone displaying the app logo, and a small electronic module, illustrating the alleged infringing system (Compl. p. 1). The system allows for "acquiring and transferring data from Nike Adapt wearables to Nike web services via Nike Adapt App on a Smart Phone," which includes "storing user's data within Nike's web service and Adapt applications" (Compl. ¶24). The complaint frames this as a system where Nike and its users jointly perform the infringing methods (Compl. ¶24).

IV. Analysis of Infringement Allegations

The complaint references infringement claim chart exhibits for each patent, but these exhibits were not filed with the complaint. The narrative infringement theories are summarized below.

’794 Patent Infringement Allegations

The complaint alleges that Nike's system practices the claimed method through the combined actions of Nike and its end-users (Compl. ¶24). The Nike Adapt shoe allegedly functions as the "data capture device", pairing with the user's smartphone (the "mobile device") running the Adapt App. The complaint alleges this system is used to acquire data, transfer it from the shoe to the phone via Bluetooth, and then upload it to Nike's web services, thereby meeting the steps of the claimed method (Compl. ¶24).

• Identified Points of Contention:
  • Scope Question: A central issue, which the complaint notes was raised by Nike in prior litigation, is whether a smart shoe that captures performance and fit data constitutes a "data capture device" as contemplated by the patent, whose specification primarily provides examples of cameras for capturing multimedia content (’794 Patent, col. 2:15-19; Compl. ¶18).
  • Technical Question: Does the Nike Adapt shoe's hardware include a "software module" that independently performs the "detecting and signaling" of new data to the mobile app, as required by claim 1? The infringement analysis may turn on whether the system uses a "push" model initiated by the shoe, or a "pull" model controlled by the app, and whether the latter meets the claim's specific language.

’752 Patent Infringement Allegations

The complaint alleges that the Nike Adapt system infringes by using a secure, paired connection to transfer data from the shoe to the app and then to Nike's servers (Compl. ¶35). The allegations include inducement, based on Nike providing instructions that lead users to perform the infringing steps (Compl. ¶35).

• Identified Points of Contention:
  • Technical Question: Does the communication protocol between the Nike shoe and the Adapt App implement the specific "event notification" handshake of claim 1, which requires the mobile device to first send a message to the capture device to "enable event notifications"? Evidence of this specific two-way signaling will be critical.
  • Technical Question: Does the "data capture device" (the shoe) itself perform the "encrypting" of new data before transfer, as required by claim 1? The infringement question may depend on where in the system architecture encryption occurs.

V. Key Claim Terms for Construction

The Term: "data capture device"

• Context and Importance: The definition of this term is central to the dispute. The complaint explicitly states that in prior litigation, Nike argued its Adapt products do not meet this term's definition (Compl. ¶18). The patentability of the claims was upheld by the Federal Circuit, but the scope of this term as applied to the accused products remains a key issue for infringement. Practitioners may focus on this term because its construction could determine whether the patents read on the accused smart shoe technology at all.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims themselves refer to acquiring "new data," not just multimedia content (’794 Patent, cl. 1). The patent repeatedly uses the phrase "data and multimedia content," suggesting "data" is distinct from and broader than "multimedia" (’794 Patent, col. 1:36-38). This may support an interpretation that includes devices capturing any form of digital data, such as performance metrics from a shoe.
  • Evidence for a Narrower Interpretation: The specification's exemplary embodiments consistently refer to devices for capturing media, such as a "digital camera" or a "video camera" (’794 Patent, col. 2:15-19). The patent title itself, "Automatic Multimedia Upload", may be used to argue the invention's scope is confined to devices whose primary purpose is capturing multimedia content.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement for all three patents, asserting that Nike provides instructions, software, and web services that guide and encourage end-users to operate the Adapt system in an infringing manner (Compl. ¶35, 46). For the ’794 patent, it also pleads a theory of joint infringement, alleging Nike directs or controls its users' performance of the claimed method steps (Compl. ¶24).
• Willful Infringement: Willfulness is alleged for all three patents. The complaint bases this on Nike’s alleged pre-suit knowledge of the patents from "at least one prior lawsuit" between Cellspin and Nike (Compl. ¶25, 34, 45). This allegation of specific, long-held notice of the asserted patents raises the potential for enhanced damages if infringement is found.

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: can the term "data capture device", which is described in the patents' specification with examples like digital and video cameras, be construed to cover a smart shoe that captures athletic performance and fit data? The outcome of this claim construction, foreshadowed by prior litigation between the parties, may be determinative.
• A key evidentiary question will be one of technical operation: does the accused Nike Adapt system’s communication protocol match the specific signaling sequences required by the claims? This includes whether the shoe initiates a "push" signal as recited in the ’794 patent and whether the system uses the specific "enable event notification" handshake recited in the ’752 patent.
• The final major question concerns willfulness: given the complaint’s specific allegations that Nike had knowledge of the patents-in-suit from prior litigation years before this case was filed, the factual record surrounding that notice will be central to whether any potential infringement is deemed willful.