The Software IP Report

Fitness-Tracking Cartoon Not Patent Eligible

Personal Beasties stumbled out of the gate against Nike, with a district court invalidating Personal Beasties’ patent for ineligible subject matter on a motion to dismiss. Personal Beasties Group LLC v. Nike Inc., An animated character—even an encouraging one—did not provide enough to leap the § 101 hurdle.

Personal Beasties accused Nike of patent infringement in the Southern District of New York over U.S. Patent No. 6,769,915 for an “Interactive System for Personal Life Patterns.” Personal Beasties makes an app to improve breathing, which displays a cartoon monster that reacts enthusiastically when the user breathes well:

The accused product is Nike’s FuelBand, a fitness-tracking wristband with an accompanying app that also displays a cartoon creature with a positive attitude:

Nike discontinued the FuelBand in 2015 and stopped supporting the app earlier this year, so Personal Beasties’ complaint is only requesting damages.

But Personal Beasties won’t see those damages because the court found that the patent covered ineligible subject matter under § 101. The court deemed claim 1 representative:

1. A user-interactive behavioral modification system for modifying undesired behavioral patterns comprising:

an input means for inputting a first set of personal data by a user into a base module; the base module further including at least one feedback interface means for providing a feedback to the user in response to the first set of personal data;

a main database component separated from the base module operative to maintain at least the first set of personal data entered into the base module;

a main controller unit operatively coupled to at least the main database component for generating a main output signal for causing feedback to the user according to a predetermined set of behavioral pattern rules adapted for the user;

a feedback signal is communicated to the feedback interface; the feedback interface means further includes a display unit for displaying an appearance of a character having different appearances based on the first set of personal data and in response to the input signal;

whereby the appearance of the character is controlled to encourage the user to perform desired behavioral responses according to the behavioral pattern rules.

The court applied the two-step Alice test: (1) whether the claim is directed to a patent-eligible concept and (2) if not, whether the claim encompasses “something more” that makes it patent eligible. Under Step One, the claim constituted an abstract idea because “it collects, analyzes, and displays data.” Courts have repeatedly found pure data processing to be patent ineligible. Personal Beasties tried to distinguish that line of cases by pointing to the purpose of the claim in “helping users improve their behavior,” but the court characterized that as “merely influenc[ing] the type of information that is used by the system.” And, of course, Personal Beasties pointed to the expressive cartoon monster, i.e., the “character having different appearances,” but according to the court, “[t]he character simply anthropomorphizes information; it is a substitute for displaying the words ‘good job,’ for instance.”

The cartoon monster also failed to save the patent at Step Two. Personal Beasties compared its claim to McRO v. Bandai Namco, in which the invention dealt with computer animation. Other patentholders have recently experienced success citing McRO, but (*sad monster face*) not here. The distinction was that the McRO invention “synchronized animated facial expressions and mouth movements in a manner that differed from the way in which human animators accomplished the same task. … The McRO invention did not transpose an old practice into a new environment, but used claimed rules to improve an existing technological process.” And so the patent hit the wall.

Lessons for Practice

The patent eligibility test under § 101 has been accused of overlapping with anticipation and obviousness inquiries under §§ 102 and 103 (including by me), and this case provides another example. The distinction with McRO turned not on whether a human could perform the process mentally, but whether a human already had performed the process mentally—that is, whether there was prior art. Defendants should ask themselves whether their prior-art invalidity arguments can be turned into eligibility arguments.

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