Apple settles Apple Watch heart rate sensor lawsuit with biometrics firm Valencell

AppleInsider · January 22, 2019 12:52PM

Apple has settled a lawsuit with biometrics firm Valencell claiming the iPhone producer infringed patents relating to sensing technology, one that accused Apple of acquiring data on its technology during the development of the Apple Watch's heart rate sensor.

A reference design by Valencell for a wearable heart rate monitor.

Valencell filed a patent lawsuit in January 2016 against Apple as well as fitness wearable maker Fitbit in the U.S. District Court for the Eastern District of North Carolina, alleging there to have been infringement of four patents owned by the firm. Three years later, Apple has been dropped from the case after settling.

"Valencell's case against Apple has now been settled and neither is able to further comment," a statement from Valencell received by The5KRunner advises, adding "So you will have to draw your own conclusions."

It is unknown what the terms of the settlement are, nor how much cash will trade hands between Apple and Valencell. What is known is that the settlement only applies to Apple, with the lawsuit against Fitbit set to continue.

At the time of its filing, the lawsuit alleged Apple went to great lengths to examine Valencell's technology in early 2013, at around the same time development of the Apple Watch was occurring. Apple also allegedly reached out to the firm with a partnership proposal for wrist-based heart rate sensing technology.

A short while later, it is claimed Apple instructed "agents" to download white papers from Valencell's website relating to its "PerformTek-Powered" biometric technology. It is noted that to download the papers, users had to provide their identity, but it is thought multiple Apple-owned IP addresses were used by individuals masking their identities, providing false information to access the papers.

Later on, in June 2013, Apple met with Valencell staff and its cofounder and president Dr. Steven LeBoeuf to discuss integrating PerformTek-Powered technology into certain product lines. At the time, a Valencell prototype watch unit with the ability to sense the wearer's heart rate was demonstrated to Apple employees.

Technical samples were provided to Apple for testing and analysis, with further wrist-worn wearables data offered throughout 2014. Apple then announced the Apple Watch in September of that year.

While the use of LEDs to detect blood flow in the technique known as photoplethysmography (PPG) is a common technique, used by both companies, Valencell had made patented breakthroughs in light-guiding technology to increase the accuracy and reliability of the system, which it accused Apple of risking infringement on instead of licensing the technology.

marsorry · January 22, 2019 1:03PM

Oh dear! Huge Apple Watch fan, but if the tech was acquired through dubious means - Apple's gotta pay - fair and square. Some say it's easier to apologise than to ask for permission, but pay - they must - as they're not struggling for cash. If anything, buy them out completely - surely can't be as expensive as that pricy Beats by Dre acquisition.

gatorguy · January 22, 2019 1:04PM

... busted. LOL. It happens.

With Apple deciding to settle I can't imagine Fitbit won't do the same too rather than risk a trial unless they truly don't believe they infringe and think they can prove it.

carnegie · January 22, 2019 2:18PM

According to this filing available from Court Listener, the case was settled last September.

At one point the case had been stayed pending an IPR by the USPTO. I hadn't followed close enough to know the result of that review. I'll have to look into that when I get a chance.

carnegie · January 22, 2019 2:31PM

So I found a PTAB decision from June of last year which essentially found in Apple's (and Fitbit's) favor regarding some of Valencell's claims. Those claims were found to be unpatentable based on prior art. I'll have to do some more digging to figure out what valid claims Valencell might have still had to assert.

Settlement in this case might mean that Valencell effectively dropped the suit for little or no compensation. Or it could mean that, with Valencell having less but still some leverage, the parties were able to agree on an acceptable amount of compensation.

gatorguy · January 22, 2019 2:37PM

carnegie said:

So I found a PTAB decision from June of last year which essentially found in Apple's (and Fitbit's) favor regarding some of Valencell's claims. Those claims were found to be unpatentable based on prior art. I'll have to do some more digging to figure out what valid claims Valencell might have still had to assert.

Settlement in this case might mean that Valencell effectively dropped the suit for little or no compensation. Or it could mean that, with Valencell having less but still some leverage, the parties were able to agree on an acceptable amount of compensation.

Good research Carnegie.

carnegie · January 22, 2019 2:40PM

Okay, here's another decision from the PTAB from August of last year. Apple and Fitbit managed to get some other claims invalidated, while some of Valencell's challenged claims were upheld.

So I'd guess that the PTAB's decisions precipitated the settlement. Apple probably agreed to pay something but Valencell probably agreed to accept less than it would have had a number of its claims not been invalidated.

EDIT: I made a correction, but it turns out my correction was incorrect so I removed it.

carnegie · January 22, 2019 3:18PM

Here is yet another PTAB decision from last June which found some of Valencell's claims to be unpatentable.

Valencell originally asserted claims from 4 different patents. The PTAB instituted IPRs with regard to all 4 patents. (That's why both the Fitbit and Apple cases were stayed.) So there's still one more PTAB decision to be found, assuming it was made. But the results of the other three are mostly in Apple and Fitbit's favor. All but 3 claims from one of the asserted patents were invalidated.

carnegie · January 22, 2019 3:26PM

And here's the PTAB decision regarding the fourth patent which Valencell asserted. It invalidated all of the challenged claims for that patent.

So... it appears these suits (against Apple and Fitbit) didn't go as Valencell might have hoped. That's not to say that Apple wouldn't have agreed to pay something. Perhaps it did.

Rayz2016 · January 22, 2019 5:26PM

carnegie said:

And here's the PTAB decision regarding the fourth patent which Valencell asserted. It invalidated all of the challenged claims for that patent.

So... it appears these suits (against Apple and Fitbit) didn't go as Valencell might have hoped. That's not to say that Apple wouldn't have agreed to pay something. Perhaps it did.

I'm sorry, but I'm going to have to stop reading and applaud you for a stunning piece of research.

Good job.

carnegie · January 22, 2019 9:22PM

gatorguy said:

carnegie said:

So I found a PTAB decision from June of last year which essentially found in Apple's (and Fitbit's) favor regarding some of Valencell's claims. Those claims were found to be unpatentable based on prior art. I'll have to do some more digging to figure out what valid claims Valencell might have still had to assert.

Settlement in this case might mean that Valencell effectively dropped the suit for little or no compensation. Or it could mean that, with Valencell having less but still some leverage, the parties were able to agree on an acceptable amount of compensation.

Good research Carnegie.

Rayz2016 said:

carnegie said:

And here's the PTAB decision regarding the fourth patent which Valencell asserted. It invalidated all of the challenged claims for that patent.

So... it appears these suits (against Apple and Fitbit) didn't go as Valencell might have hoped. That's not to say that Apple wouldn't have agreed to pay something. Perhaps it did.

I'm sorry, but I'm going to have to stop reading and applaud you for a stunning piece of research.

Good job.

Thanks.

I found some more information which might lend some insight into what this settlement looked like.

There was one more decision from the PTAB from last June which invalidated some other claims from the '941 patent. The '941 patent was the one which had 3 challenged claims which, in an August decision, weren't invalidated. So there were apparently 2 separate IPRs relating to that patent. What's noteworthy about this fifth decision I found is this. It means that all of the claims which were mentioned in Valencell's original complaint against Apple have been invalidated. It's possible that other claims, which weren't invalidated, were (or could have been) asserted at some point. And Valencell's suit included causes of action other than straight infringement. So I can't say that there was nothing left for Valencell to argue. But it's possible that was, for all intents and purposes, the case.

I also found several other IPRs which were instituted against Valencell patents based on petitions brought by Apple. These involved patents which weren't, as far as I can tell, asserted by Valencell against Apple in the case which is the subject of this thread. To be clear, these weren't just petitions made by Apple. The reviews had been instituted, which means that the PTAB found a reasonable likelihood that Apple would succeed in demonstrating that some claims weren't patentable. Reasonable speculation might be that Apple identified what it thought were other vulnerable Valencell patents, in addition to the ones which Valencell had asserted against it, and sought to have their validity reviewed. That might have given Apple additional leverage to force Valencell to drop its suit.

Anyway, all of those other IPRs were terminated in September of last year after Apple and Valencell jointly asked the PTAB to terminate them. So, again, reasonable speculation... Apple essentially said to Valencell, you don't have anything left to argue in this current suit against us, and you're not having much luck in these IPRs, so if you'll agree to drop the suit we'll agree to ask the FTAB to terminate the still open IPRs and you can avoid having even more of your patent claims invalidated. And Valencell said... Sounds good. According to this filing, on August 31, 2018 Apple and Valencell entered into a confidential agreement. Then on September 7, 2018 they let the federal district court know they had settled the suit pending there. Then on September 11, 2018 they asked the FTAB to terminate the still-open IPRs relating to Valencell patents which Apple had initiated.

Knowing all of that, I think it's likely that in this case the settlement amounted to Valencell dropping its suit. I suspect if Apple paid anything, it was a very modest amount.

bestkeptsecret · January 23, 2019 5:50AM

gatorguy said:

... busted. LOL. It happens.

With Apple deciding to settle I can't imagine Fitbit won't do the same too rather than risk a trial unless they truly don't believe they infringe and think they can prove it.

Popped the champagne cork a little too early.

Apple settles Apple Watch heart rate sensor lawsuit with biometrics firm Valencell

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