Scott Holland Sep. 14, 2015, 12:23pm

Fitbit and Fitbug, two leading competing manufacturers of activity-tracking electronic devices, might be headed for trial after a federal judge rejected Fitbug’s request for summary judgment in a pending patent lawsuit.

The matter dates to Feb. 20, 2014, when Fitbit sued Fitbug alleging a single count of patent infringement. It amended its complaint on March 11, 2014, to add Fitbug Limited as a defendant. Fitbug filed a counterclaim on April 16, 2014, seeking a declaratory judgment that the patent in Fitbit’s initial complaint is invalid, and that Fitbug had therefore not committed infringement.

The companies are competitors in the business of digital fitness tracking. Each supplies its users with “trackers” and other related electronics and services designed to monitor how physically active users have been. In addition to its website, Fitbug at times has offered its products through “various incentive provides and corporate wellness programs, including the Vitality Group,” court documents say, and those partners, in turn, “utilize Fitbug products and … website to incentivize their members to take proactive measures to improve their health and fitness.”

Fitbug has been in business since 2005, but contends in court documents it did not become aware of the patent at the center of Fitbit’s lawsuit until Fitbit sent Fitbug a letter in February 2014. Fitbit filed suit six days after sending the letter.

Two days after discovery opened in the action, Fitbug asked to file a motion for summary judgment on two grounds: that Supreme Court precedent in Limelight Networks v. Akami Techs eliminated Fitbit’s ability to state a claim for induced infringement, and that the contested patent is invalid. It filed the motion May 9, 2014. Yet on Dec. 12, 2014, Fitbug asked to pull back the portion of its motion dealing with the patent’s validity. Fitbit opposed the attempt to withdraw and, in turn, requested payment of legal fees “as a sanction against Fitbug for raising an allegedly frivolous argument.”

In his opinion delivered Sept. 9 in Chicago, U.S. District Judge John Robert Blakey

largely addressed Fitbug’s non-infringement argument. Whereas Fitbit contended it had argued induced infringement — that Fitbug’s actions essentially forced its wellness partners to infringe on Fitbit’s patent — Fitbug maintained any possible infringement was divided between it and its wellness partners, and the Limelight decision holds “divided infringement cannot give rise to a claim of patent infringement.”

The judge noted Fitbit, however, had argued “Fitbug’s wellness partners … perform every step of every asserted claim and are the direct infringers,” and further that Fitbug induces that infringement.

Fibit claims Fitbug’s role, as a supplier of devices and services, is sufficient to establish a single entity “exercised control or direction over the entire process such that every step is attributable to the controlling party” – in this case, Fitbug.

Ultimately, rather than determine induced or direct infringement himself, Blakey found enough evidence that Fitbit may be able to establish direct infringement liability at trial, and notes “relevant facts remain in dispute” since Fitbit was “denied substantive discovery” based on the timing of Fitbug’s summary judgment motion.

In light of the Limelight decision, he denied with prejudice Fitbug’s summary judgment request regarding induced infringement. And he denied without prejudice the portion of Fitbug’s motion for summary judgment under federal civil procedural rules on the question of just how central a role Fitbug played in potentially inducing its wellness partners to allegedly infringe Fitbit’s patent.

However, Blakey granted Fitbug’s request to withdraw its invalidity argument without prejudice, while denying Fitbit’s request for sanctions, saying any harm to Fitbit prompted by the need to respond to Fitbug’s withdrawn contentions would be “short-lived.”

“If Fitbit’s position is meritorious now … it will be equally meritorious when presented a later date,” the judge said.

This case marks yet another legal battle between the competitors. Earlier this year, a federal judge in San Francisco rejected a trademark infringement lawsuit brought by Fitbug against Fitbit in 2013.

Fitbit is represented in the pending action by the firms of Dykema Gossett, of Chicago; Durie Tangri, of San Francisco; and Freeborn & Peters, of Chicago.

Fitbug is represented by the firms of Tarter Krinsky & Drogin, of New York, and Chuhak & Tecson, of Chicago.

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Organizations in this Story

405 Howard Street
San Francisco, CA 94105

Fitbug Inc.
566 West Lake Street
Chicago, IL 60661

Tarter Drinsky & Drogin
1350 Broadway
New York, NY 10018

Freeborn & Peters LLP
311 S Wacker Dr
Chicago, IL 60606

Chuhak & Tecson, P.C.
30 S Wacker Dr
Chicago, IL 60606

Dykema Gossett, PLLC
10 S Wacker Dr
Chicago, IL 60606

Durie Tangri
217 Leidesdorff Street
San Francisco, CA 94111

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