It looks like the long-running Jawbone v. Fitbit trade secrets show will continue in California Superior Court. Judge Richard Ulmer on Friday (24 Mar) in San Francisco ruled that the scope of the Jawbone-initiated lawsuit, charging that Fitbit and five former Jawbone employees stole trade secrets, was far larger than the dismissal handed down last October by the US International Trade Commission (ITC) in Washington, DC, rejecting Fitbit’s claim. To Bloomberg Technology, a Jawbone spokesperson crowed, “We look forward now to focusing on presenting our case to a California jury, which will not be bound by the strict procedural limitations that we faced in the ITC. We will push the case to trial as quickly as possible and are confident that justice will be done.” Fitbit is expected to appeal, but this is not good news for them if this drags out–their share price is down 72 percent from a year ago (Marketwatch)–and threatens their IP which is key to a pivot to the clinical monitoring market.
A sidebar to this is Business Insider’s recent report that one of Jawbone’s law firms, Susman Godfrey LLP, has withdrawn from three pending cases citing ‘professional considerations’, remaining on two. This Editor cannot confirm whether Susman Godfrey is representing Jawbone in the above case, as Plainsite records indicate that Skadden Arps is their counsel. The California courts website has not been updated for the case (Aliphcom Inc. v. Fitbit Inc., CGC15-546004). Previous TTA coverage 9 Feb.
While most industry observers are perceiving Jawbone’s abandoning the consumer fitness tracker market, repositioning into the clinical B2B2C vitals market, and seeking fresh financing as a last-ditch effort to save the company, Jawbone continues to be highly active in one place–court. Last week, Jawbone filed a lawsuit against Fitbit and five former employees in California state court for theft of trade secrets and has rebutted Fitbit’s motion to dismiss in a 27-page filing. According to Fortune’s account of the lawsuit, Jawbone’s filing states: “Each of the defendants has been, for more than five months, the subject of a criminal grand jury investigation regarding theft of Jawbone’s trade secrets that is being conducted by the Department of Justice and the Department of Homeland Security,” a charge that Fitbit calls ‘fictional’ and false. The court hearing in San Francisco is 15 February.
The legal skirmishing, which largely has gone Fitbit’s way [TTA 27 July] in the US International Trade Commission, indicates that Jawbone is still spending money to protect what is left of value in the company–its patents and intellectual property (whatever hasn’t been voided). Jawbone $100 million ‘gem’: the BodyMedia patents acquired in 2013 [TTA 30 Apr 13]. BodyMedia had FDA Class II clearance but a clunky form factor. This IP is a critical save if they want to go clinical. Fitbit’s shares continue to go down, an indicator that the mud is rising. Also Bloomberg with video.
Mobihealthnews provides a recap of the past four years of patent actions pitting company against company in the hushed but deadly rings of the US Patent and Trademark Office (USPTO) and the US International Trade Commission. On the fight card: the never-ending American Well-Teladoc bout (Teladoc winning every decision so far by a knockout [TTA 18 June]–a second American Well patent being invalidated on 25 August); CardioNet vs MedTel, which the former won but has had to chase the latter out of the arena and down the street to collect; Fitbit-Jawbone which has gone both ways [TTA 27 July]; and the long trail of blood, sweat and Unintended Consequences around Bosch Healthcare’s heavyweight IP pursuit against mainly flyweight early-stage companies (not noting, as we did, their apparent ‘draws’ vs Philips and Viterion, then owned by Bayer).
The Reader will note our tracking Bosch’s activities go back to 2012 (here, here and here). Moreover, with Mr Tim Rowan of Home Care Technology, we broke the news of Bosch’s demise in June 2015, drawing the conclusion that their offense versus Cardiocom’s patents (now in Medtronic’s cardiac division) directly led to the invalidation of their key patents, IP–and the very basis of the company’s existence. See the 19 June 2015 article and our recap one year later in reviewing AW-Teladoc. (Any similar phrasing or conclusions within the Mobihealthnews article, we will leave to our Readers to decide!)
The wearables war continues, and the Law of Unintended Consequences seems unbreakable. This one was decided in a US International Trade Commission court, with the judge ruling that the three patents in question “don’t cover ideas eligible for protection” and dismissed the August trial between Fitbit and Jawbone. This is a reversal of fortune for the two competitors as a similar patent challenge to Jawbone was won by Fitbit back in April in the same court. In the new ruling, the judge said that Fitbit “seek(s) a monopoly on the abstract ideas of collecting and monitoring sleep and other health-related data.”
The skirmishing has a deeper context. Jawbone has accused Fitbit of hiring former employees and purloining trade secrets like product design and marketing plans, and alleges that the suits were “brought improperly by Fitbit in an attempt to burden Jawbone with having to defend invalid patents in multiple venues.” Fitbit reportedly has 300 patents, so that is a lot of defending for a company that has issues of its own. Jawbone has struggled in past months with its products, with various (and contradictory) reports indicating it’s exiting the wearable business, working on a new wearable and selling its audio business (which has also been crushed by competition.) Undoubtedly this will continue as Fitbit plans to challenge the ruling. Your Editor suspects that their legal and IP offense/defense activity is a substantial budget line for them. Bloomberg (20 July and April), The Verge
Update: Jawbone is rumored to be up for sale, with reports that they have approached at least one hardware manufacturer about a purchase. Reportedly they missed an August payment to a business partner. Investor BlackRock has marked down their shares, formerly valued at $5.97 a share, to less than a single penny. Since 1999, Jawbone has had funding of over $900 million. 9to5Mac, The Verge Even the much-publicized hiring of high-profile exec Adam Pellegrini from Walgreens to Fitbit to lead digital health has a Jawbone twist, as both the former and latter were partners. MedCityNews