U.S. District Court Judge Beth Labson Freeman, Northern District of California
U.S. District Court Judge Beth Labson Freeman, Northern District of California (S. Todd Rogers / The Recorder)

Fitbit Inc. and Jawbone are fighting hard over patent eligibility. So hard, it might take a bench trial to sort it out.

U.S. District Judge Beth Labson Freeman raised the possibility Thursday after questioning the inventiveness of two Fitbit patents on wearable fitness monitoring devices. The San Jose-based judge broke out her personal running log, complete with sticky notes, while probing whether Fitbit has simply automated the abstract idea of monitoring workouts.

But Freeman also sounded wary of passing judgment herself on Jawbone’s Section 101 challenge, at least not without more information about the state of wearable technology when Fitbit applied for its patents a decade ago.

“I’m not sure this is any different from alarms and reminders, but that comes back to what is state of the art,” Freeman said. “I don’t have any evidence of the state of the art at the time.”

That led to some uncharted territory: whether a jury would have to be empaneled as the ultimate decision maker on a patent eligibility challenge. “I don’t know of any district court that has decided that,” Freeman told Gibson, Dunn & Crutcher partner Mark Reiter, representing Fitbit.

Reiter pointed out that some judges—including Freeman—have ruled on Section 101 challenges after holding a jury trial. But Freeman said she “will never do that again” because she doesn’t want to waste jurors’ time deciding infringement and validity if she’s ultimately going to make the call on the more fundamental ground of eligibility.

Thursday’s hearing stems from one of a series of patent infringement suits Fitbit and Jawbone have filed against each other in district courts and the International Trade Commission. Each persuaded the ITC to invalidate some patent claims last year. Fitbit says Jawbone and its parent Aliphcom are now on a “Section 101 witch hunt,” challenging all nine patents that Fitbit is asserting in the various proceedings.

Three of the patents were at issue Thursday. Much of the discussion centered around No. 8,909,543, which covers methods of recording and reporting user movements. Susman Godfrey associate Lindsay Calkins, representing Jawbone, said that’s just the kind of business method patent that is frowned on following the Supreme Court’s 2014 Alice decision, because it doesn’t improve technology. “This is not a computer-based problem,” she said.

“I wish obesity were, because with artificial intelligence we’d all be thin and fit,” Freeman quipped.

Freeman said the patent seemed “vulnerable” but that she wanted to be careful. “Just because one can get a pulse from placing a thumb on a wrist doesn’t mean you can’t get a patent on a heart rate monitor,” she said.

Gibson Dunn’s Reitman argued that the patent solved the problem of monitoring and encouraging fitness, eliminating the “expensive infrastructure” of traditional heart monitors and trainers.

Freeman also seemed dubious of Fitbit’s 9,042,971 patent, which describes an “activator” that responds to a user gesture to start heart rate monitoring. Freeman pressed Reitman on the difference between an “activator” and the on/off switch that controls the lights in her courtroom.

Reitman said the activator conserves power and employs an intelligent surface area that “knows that it’s being touched in some way.”

“So does an on-off switch,” Freeman replied.