Patent for electronic pedometer found to be obvious. BLACKBIRD v. FITBIT

A patent is a set of exclusive rights granted by a government to an inventor, for a limited period of time, in exchange for detailed explanation of how an invention works. The purpose of a patent is encourage the sharing of knowledge by rewarding inventors with a monopoly on their invention for a period of time, if the inventor teaches the public how to use the invention. In the United States the authority to grant patents is granted to congress by the United States Constitution. The United States Patent and Trademark Office is an agency in the United States Department of Commerce to which Congress has delegated the authority to issue patents in the United States.

Inter partes review is intended to fight bad patents. Inter partes review are a way to ask the United States Patent and Trademark Office to rescind a patent which was granted in error. Before inter partes review a patent which had been granted could only be challenged in federal court, a long and expensive process. Inter partes review created a parallel track to challenge the validity of a patent which was much faster and less expensive than litigation in a federal court.

Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. If a member of the public discovers a piece of prior art which anticipates, or renders obvious, a patent which has been granted they may request an inter partes review of the patent. An inter partes review can result in invalidation of some or all of the claims of a patent.

BLACKBIRD TECH LLC, v. FITBIT, INC., 19-1879 (C.A.F.C. 2020) illustrates a case where a patent was found to be obvious to a person having ordinary skill in the art (PHOSITA).

Blackbird Tech LLC, owns U.S. Patent No. 6,434,212, which describes and claims a device that counts an individual’s steps and, based on the length and rate of those steps, provides the individual with information such as distance traveled and speed.

In August 2017, Fitbit petitioned for an inter partes review of claims 2, 5, and 6 of the ’212 patent. Fitbit argued
that the claims are unpatentable on three grounds: first, claims 2 and 5 are anticipated by U.S. Patent No. 6,241,684
(Amano); second, claims 2 and 5 are unpatentable for obviousness over Amano; and third, claim 6 is unpatentable for obviousness over a combination of Amano and U.S. Patent No. 5,033,013 (Kato).

The Patent Trial and Appeal Board ultimately determined that Fitbit had proven claim 6 of the ’212 patent unpatentable for obviousness but had not proven claims 2 and 5 unpatentable. The PTAB explained, Kato’s method for calculating distance travelled can be expressed as simply “determining the number of steps and multiplying them by a stride length.” The PTAB then reasoned that a PHOSITA would interpret Kato to teach a method of determining distance traveled using stride length and number of steps taken.

Blackbird appealed the PTAB’s decison to the Court of Appeals for the Federal Circuit on the grounds that the PTAB erred in finding that Kato discloses claim 6’s limitation “a data processor programmed to calculate a distance traveled by multiplying a number of steps counted by a stride length.” Blackbird claimed the PTAB looked at the ‘212 patent and worked backwards to arrive at Kato without explaining why a PHOSITA would have found the ‘212 patent obvious.

The Federal Circuit found that Kato disclosed a processing means that uses a walker’s stride length, along with the walker’s “pitch,” to determine the walker’s speed. Using the “same steps as in the method of measuring walking speed,” Kato discloses calculating the distance traveled by the walker over a given period of time by adding an extra step—“multiplying the walking speed by said unit of time.”

The Federal Circuit affirmed the PATB’s decision. The Federal Circuit held that the PTAB had a sufficient basis to find that a PHOSITA would have considered Kato’s method for calculating distance traveled to be identical to claim 6’s limitation.

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