Significant IP Strategies for Wearable Technology in 2016 & Beyond LIVE Webcast

Speaker Firms and Organization:
Lee, Hong, Degerman, Kang & Waimey
David N. Makous
Attorney
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Presented By:
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Partner Firms:
Bookoff McAndrews, PLLC
Christopher Agrawal
Partner
Leydig, Voit & Mayer
John M. Augustyn
Shareholder

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Partner Firms:
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At the forefront of intellectual property law for more than a century, Leydig,
Voit & Mayer provides valued advice and trusted counsel on intellectual
property issues to industry leaders around the world. Our IP litigation,
licensing, and prosecution services encompass patent, trademark, copyright,
trade secrets, Internet and other IP issues, including post-grant proceedings.
Our clients’ industries include pharmaceutical, chemical and chemical
engineering, software, electronics, manufacturing and machine design,
biotechnology, medical devices, financial services, and consumer products.
The wealth of litigation and technical experience of the firm’s attorneys and
staff enables the firm to tailor its services to the unique needs of each client.
Established in 1991, and with offices in Los Angeles, Newport Beach, Seoul,
London and DC, LHDK&W has helped industry leaders across a broad
array of sectors manage the complex challenges of succeeding in the global
economy by utilizing the firm's exceptional and experienced attorneys,
supporting professionals and staff, we are able to provide our clients with
comprehensive tailored solutions to their business-related legal issues.
LHDK&W's attorneys and supporting professionals come from different
backgrounds and experience. Yet, we share a common goal of exceeding
our clients' expectations and satisfying their needs in multiple areas:
Admiralty & Maritime, Banking & Financial Services, Business & Corporate,
Litigation, Insurance, Intellectual Property, International Arbitration and
Dispute Resolution Practice, Labor & Employment, Products Liability, and
Real Estate.
More can be learned about us at lhlaw.com.

Partner Firms:
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Bookoff McAndrews (BoMc) has emerged to be recognized and valued by corporations around the world for its unequivocal focus on providing the
highest quality patent counseling and prosecution services. Since opening just three years ago, BoMc has experienced great success, growing from two
attorneys to 18 attorneys. This rapid growth continues to be fueled by clients trusting its attorneys’ ability to provide tailored, strategic, and timely advice
on all aspects of patent counseling, including patent prosecution; portfolio development and management; clearance, validity, and infringement opinions;
contested proceedings before the United States Patent & Trademark Office (USPTO); licensing; and due diligence investigations for acquisitions and
investments.
BoMc’s co-founders, Les Bookoff and Roland McAndrews, were previously featured by Legal 500 and more recently in IAM Patent 1000 as top IP
practitioners. BoMc’s attorneys counsel startups, midsize, and Fortune 100 companies as well as venture capital firms and universities across diverse
industries and technology areas spanning medical devices, pharmaceuticals, aerospace and defense, materials, heavy machinery, software, electrical
and computer technology, consumer products, alternative energy and green technology, chemistry, Internet, and e-commerce. BoMc’s attorneys
continue to engage scores of new clients each year by providing the same high-quality patent prosecution, strategic counseling, and transactional
representation that contributed to its attorneys’ success prior to the firm’s formation.

Brief Speaker Bios:
John M. Augustyn
Mr. Augustyn is active in all facets of patent litigation, client counseling, and prosecution. His litigation experience has involved several
industries, including medical devices, electrical devices, magnetic devices, printing processes, agricultural equipment, manufacturing
equipment, automotive equipment, fuel storage containers, and consumer products. He also manages the patent prosecution for
several international corporations. Furthermore, he has extensive experience in the drafting and negotiation of agreements relating to
intellectual property, including patent licenses, technology licenses, joint venture agreements, and research and development
agreements.
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David N. Makous
David presently works with the international law firm Lee Hong Degerman Kang Waimey in Los Angeles. He has acted as global IP
counsel for a number of products and brands, acting on IP litigation, including class action claims, regulatory matters and complex
licensing for companies large and small, in many countries. David has appeared in many federal district courts and courts of appeal.
He also publishes, has lectured to engineering and business students about IP matters, and taught Conflicts of Law at a local law
school.
► For more information about the speakers, you can visit: https://theknowledgegroup.org/event-homepage/?event_id=1290
Christopher Agrawal
Chris Agrawal is a patent counseling partner with Bookoff McAndrews, one of the country’s premier patent prosecution and counseling
boutiques. Chris was named a 2015 “Rising Star” in Washington D.C. by Super Lawyers and is retained by several of the region’s
largest tech companies for developing patent portfolios and analyzing patent-related risks and opportunities. Chris focuses especially
in Internet, mobile, and wearables technologies, and on developing and implementing patent strategies that help leading innovators
secure market exclusivity and freedom to market new products and services.

Wearable Devices and related technology are electronics or computers incorporated into clothing and
other accessories worn by people. Although smaller such wearable devices can perform the same
computing tasks as mobile phones and laptop computers. However, some also incorporate sensors and
scanners that can monitor, control, and provide tracking or bio-feedback of physiological activity. These
devices are used in education, health, medicine, security, sports, gaming, and many other activities. Such
devices include caps, contact lenses, headbands, jewelry, glasses, 'smart' fabrics, watches, and other
paraphernalia.
Although wearable technology offers new capabilities, it lacks a genuinely evident need in the current
market. It is possible that, like bluetooth headsets, Google Glass, white Apple ear-buds, and Beats Bat-
eared headphones, many of these small devices may not be worn by people, other than for health and
fitness, once the fad wears off.
Irrespective of the technology, all such devices need intellectual property (IP) protection. Protection must
be considered for registered appearance, operation, and branding, This includes the design, content,
components, methods, functions, and patents and trademarks.
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The Knowledge Group has assembled a panel of notable technological and legal leaders and other
seasoned professionals in this two hour, LIVE Webcast to offer the audience a note-worthy review and
discussion of the Intellectual Property Protection of Wearable Technology in 2016 & Beyond. The panel of
speakers also will provide the audience their insights and opinions on safe-guarding the IP rights of
wearable devices.
Key Topics
• IP Strategies for Wearable Technologies – An Overview
• IP Rights for Wearable Devices
• IP Issues in the Wearable Technology Sector
• Legal Challenges to Wearable Technologies
• Regulatory Developments
• Best Practices in IP Protection
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Featured Speakers:
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SEGMENT 1:
John M. Augustyn
Shareholder
SEGMENT 2:
David N. Makous
Attorney
SEGMENT 3:
Christopher Agrawal
Partner

Introduction
Mr. Augustyn is active in all facets of patent litigation, client counseling, and prosecution. His litigation experience has involved several industries,
including medical devices, electrical devices, magnetic devices, printing processes, agricultural equipment, manufacturing equipment, automotive
equipment, fuel storage containers, and consumer products. He also manages the patent prosecution for several international corporations.
Furthermore, he has extensive experience in the drafting and negotiation of agreements relating to intellectual property, including patent licenses,
technology licenses, joint venture agreements, and research and development agreements.
Mr. Augustyn received a B.S. in Engineering, with honors, from the Illinois Institute of Technology, and a J.D. degree in 1987 from Loyola University
Chicago, where he graduated at the top 10% of his class. In law school, he received several awards for scholarship and writing, and was on the
National Moot Court Team. He has authored articles and chapters for books, has appeared on television and radio, and has provided seminars for
attorneys and clients.
Mr. Augustyn was an instructor at Loyola University Chicago School of Law for over five years. In addition, he was the advisor of the Intellectual
Property Moot Court Team at Loyola University Chicago for over fifteen years. Prior to attending law school, he worked as an engineer at a large
equipment manufacturer in the areas of Design Engineering, Manufacturing Engineering, and Quality Engineering.
Mr. Augustyn has received several legal awards, including Super Lawyer, Top Rated Lawyer, and Leading Lawyer.
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SEGMENT 1:
John M. Augustyn
Shareholder

Agenda
John Augustyn
– What is Wearable Technology?
– Examples of Wearables
– Recent Cases
– Design Patents
– Trade Secrets
– Data Security and Privacy
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John M. Augustyn
Shareholder

David Makous
– Trademarks
• Trademark Overview
• Examples for wearables
– Trade Dress
• Trade Dress Overview
• Examples for wearables
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John M. Augustyn
Shareholder

Chris Agrawal
– Utility patents
• Patenting wearables: brief history
• Patentability
• Divided/joint infringement
• Patent damages
• Challenges in patent clearance
• What’s next in wearables patents
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John M. Augustyn
Shareholder

What is Wearable Technology?
Several possible definitions
– A device which is worn by a person and the device includes a new technology.
– A device which is worn by a person and the device includes electronics.
– A device which is worn by a person and the device communicates with another device, such as, a
phone or a network.
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John M. Augustyn
Shareholder

EXAMPLES OF WEARABLES
Head
– Virtual Reality Headsets
– Google Glass
– Blue Light Eyeglasses (filter out blue light from TV’s, computers, and phones about 2-3 hours before
bedtime).
– Sleep Hat (Sleep Shepherd-stocking-type hat with speakers. Monitors brain waves to generate
sounds to aid sleeping).
– Spree Smart Cap (Fitness tracker which includes an electronic pod in the headband which connects
to app.)
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John M. Augustyn
Shareholder

Wrist
– Apple Watch
– Fit Bit
– Jawbone
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John M. Augustyn
Shareholder

Body
– Shirts which monitor your heart rate, breathing, muscle usage, and other items.
 Catapult (measures metrics and used by NFL, NBA and college teams)
 Adidas miCoach (measures metrics and used by soccer teams)
 Zebra (RFID chips in shoulder pads of football players which tracks player stats)
 Athos (measures metrics including muscle groups)
 Sensoria (measures metrics and used by Formula 1 racing teams)
 Ralph Lauren Polo Shirt ((measures metrics and connects to phone)
– Clothes printed on 3D printer. Danit Peleg on Ted Talk. Made five outfits using open source file for fabric. Used a
soft filament vs. hard filament. Assembled fabric pieces into outfit. Also printed shoes on 3D printer.
Shoes
– Electronics to monitor your activity. (GPS SmartSole monitors the location of people who may get lost due to
memory impairment.)
– Shoes printed on 3D printer.
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John M. Augustyn
Shareholder

Accessories
– Handbags which charge your phone.
– Cuff (An electronic module which vibrates to notify you of calls and messages. The module fits inside
several different styles of bracelets and pendants.)
– Ringly (A ring which changes color and vibrates to notify you of preselected calls, messages, apps or
people. Customize notifications with 5 different colors and 4 different vibration patterns.)
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John M. Augustyn
Shareholder

RECENT CASES
Ralph Lauren’s Ricky Bag
– Patent infringement suit over bag with illuminable interior and charger for electrical devices.
– Leoht Inc. was technology partner with Ralph Lauren.
– Leoht used Kickstarter to develop products for the technology.
– Inventor sued Ralph Lauren, Leoht and Kickstarter.
Adidas miCoach Training Shirts
– Patent infringement suit over Adidas miCoach training shirts which measure heart rate, etc. and use a
smart phone app.
– Adidas and Textronics (body sensor manufacturer) sued by body sensor manufacturer, Sarvint.
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John M. Augustyn
Shareholder

Jawbone versus Fitbit
– Jawbone files lawsuit against former employees who left for Fitbit. Lawsuit alleges breach of
contract for trade secret misappropriation. (May 2015).
– Jawbone sues Fitbit for patent infringement. (June 2015).
– Jawbone files an ITC action against Fitbit for patent infringement. (July 2015).
– Fitbit files an ITC action against Jawbone for patent infringement. (November 2015).
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John M. Augustyn
Shareholder

DESIGN PATENTS
– New, original and ornamental design for an article of manufacture. 35 USC § 173.
– Design patents have been used for shoes and other articles of clothing and accessories.
– Ornamental vs. Functional.
– Shape of an Article.
– Surface Ornamentation.
– Protect only certain portions or features of an article (versus the entire article) using broken lines to
show environment.
– Use design patents in conjunction with trademark protection and trade dress protection for the shape
or feature.
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Shareholder

TRADE SECRETS
– The Uniform Trade Secrets Act defines a trade secret as:
• information, including a formula, pattern, compilation, program, device, method, technique, or
process.
• that derives independent economic value, actual or potential, from not being generally known
to or readily ascertainable through appropriate means by other persons who might obtain
economic value from its disclosure or use; and
• is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
– Laws vary by state.
– Federal legislation proposed.
– Trade secrets in software.
– Trade secrets in manufacturing process.
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John M. Augustyn
Shareholder

DATA SECURITY AND PRIVACY
Fair Information Practice Principles (FIPPs)
1. Notice
2. Choice
3. Access/Participation
4. Security
– Items 1 and 2 (Notice and Choice) may be achieved by consent of user via app, packaging or website
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John M. Augustyn
Shareholder

Data Collected
– Health Data
– Location Data
– Financial Data
Data Flow
– Between Wearable and Receiver [Phone or Network (Wi-Fi/Broadband or Cellular)]
– Between Phone and Network (Wi-Fi/Broadband or Cellular)
– Between Network (Wi-Fi/Broadband or Cellular) and Wearable Provider (Manufacturer or Service
Provider)
– Between Wearable Provider and Third Parties (Analytics, Advertisers, Insurance Companies, etc.)
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John M. Augustyn
Shareholder

Data Breaches
– Interception of data between the data flows noted above
– Disclosure of data on devices and servers of the entities involved in the data flows noted above (via
hacking, theft or accidental disclosure)
Use of Collected Data
– Positive Uses – advertising for goods or services relating to an activity (i.e. buy new shoes for
running) or to a location (i.e. buy sports drinks at nearby store).
– Negative Uses – insurance company monitoring your exercise activity (or lack thereof) or your
medical metrics during exercise to adjust your insurance premiums. Criminals monitoring your
location to commit robbery, burglary or kidnapping.
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John M. Augustyn
Shareholder

Federal Regulation
– Proposed Location Privacy Protection Act
 Prohibit collecting or disclosing geolocation information without consent of the user
– Proposed Geolocation Privacy and Surveillance Act (“GPS Act”)
 Amends the criminal code to prohibit intercepting, disclosing, or using the geolocation
information of another person
Data Security
– Policies and procedures to maintain security of data collected from user of wearable device.
– Written plan and procedures for responding to a data breach.
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John M. Augustyn
Shareholder

Data Breach Liability
– Causes of Action
• Negligence to maintain adequate security.
• Misrepresentation of facts relating to security measures.
– Government Actions (FTC, State Agencies, etc.)
– Civil Actions
 Class actions
 Business-to-business litigation
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John M. Augustyn
Shareholder

Introduction
David presently works with the international law firm Lee Hong Degerman Kang Waimey in Los Angeles. He has acted as
global IP counsel for a number of products and brands, acting on IP litigation, including class action claims, regulatory
matters and complex licensing for companies large and small, in many countries. David has appeared in many federal
district courts and courts of appeal. He also publishes, has lectured to engineering and business students about IP matters,
and taught Conflicts of Law at a local law school. David previously chaired the IP group at a national law firm for 20 years,
and is also a registered patent attorney. His firm presently acts as patent counsel for LG.
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SEGMENT 2:
David N. Makous
Attorney

Trademark Overview
Trademarks (and service marks) are words, names, symbols or devices to identify and distinguish goods (or services). 15 USC 1127.
Rights are created if the mark is:
a. Valid; and
b. Used in the United States, or the subject of an intent to use, or convention based, application filed with the PTO;
Valid marks are many. The common law hierarchy of marks was generic, descriptive, suggestive and arbitrary, coined or fanciful. But a valid mark
cannot be generic, or descriptive (unless it has acquired distinctiveness or secondary meaning).
Examples of marks are words (ordinary, coined, combined, or re-purposed), personal names, letters, logos or designs, packaging, the shape of
goods (three-dimensional mark), colors, sounds and smells.
Registration requires multiple steps: filing, PTO review, publication for opposition, notice of allowance (for ITU), and proof of usage (for ITU), then
registration.
Marks can be rejected as generic, descriptive, surname, geographic, deceptive, scandalous, and more.
Descriptive, surname, and geographic marks can be overcome with proof of acquired distinctiveness which requires proof sufficient to establish prima
facie that the relevant consuming public has come to identify the mark with a specific source. Sales, units sold, advertising expenditures, and extent,
media exposure, surveys, consumer testimonials, etc. are used to prove this.
Marks can be rejected as confusingly similar to a prior rights holders’ mark, either by the PTO or via opposition or cancellation brought by the holder
in the TTAB.
Registration is optional, but once granted pre-empts all who come later with a confusingly similar mark in the trade territory of the entire USA.
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Attorney

Example of Wordmark Creation and Evaluation for a Wearable re Validity:
Quick Exercise.
Same notions are in play that apply to all trademarks, and there really is nothing new at issue.
Follow strategic naming practices.
Using the first FITBIT registration we will consider the hypothetical imagined creation and registration of this mark.
"Fitbit" is an obvious combination (a coined construct) of "fit" (i.e. suitable, or healthy) and "fitness" (i.e. a personal health goal) with "bit" (basic
computer programming unit).
a. Not a good idea to identify it as FITNESS METER with a goods ID reading: "Computer device for measuring fitness", as then a descriptiveness
objection is blatantly teased out;
b. So move away from these issues by suggesting user goals, and selecting relevant morphemes.
c. Combine the notions and further move it into the realm of "suggestiveness" calling it a FITBIT, and give it an obscure yet accurate goods ID
reading: "Cl. 9 electronic device for displaying information." This avoids the risk of descriptiveness objections.
Word Mark FITBIT
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Attorney

Word Mark FITBIT
Goods and Services
IC 009. US 021 023 026 036 038. G & S: Multifunctional electronic devices for displaying, measuring, and uploading to the Internet information including time, date, [ body and heart
rates, global positioning, direction, ] distance, altitude, speed, steps taken [, ] * and * calories burned [, navigational information, weather information, the temperature, wind speed, and
the declination of body and heart rates, altitude and speed ]. FIRST USE: 20090929. FIRST USE IN COMMERCE: 20090929
IC 038. US 100 101 104. G & S: Providing online chat rooms and electronic bulletin boards for registered users for transmission of messages concerning food, nutrition, personal
activities, general interest, classifieds, virtual community, and social networking. FIRST USE: 20090925. FIRST USE IN COMMERCE: 20090925
IC 041. US 100 101 107. G & S: Providing a website featuring information regarding fitness training. FIRST USE: 20090925. FIRST USE IN COMMERCE: 20090925
IC 044. US 100 101. G & S: Providing a website featuring information regarding nutrition, dieting, wellness, and health. FIRST USE: 20090925. FIRST USE IN COMMERCE: 20090925
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 77549355
Filing Date August 18, 2008
Current Basis 1A
Original Filing Basis 1B
Published for Opposition January 20, 2009
Change In Registration CHANGE IN REGISTRATION HAS OCCURRED
Registration Number 3732334
International Registration Number 1094793; 1218353
Registration Date December 29, 2009
Owner (REGISTRANT) FITBIT, INC. CORPORATION DELAWARE 150 SPEAR STREET, SUITE 200 SAN FRANCISCO CALIFORNIA 94105
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Mark I. Feldman
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE
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Trade Dress Overview
Trade dress is a special type of trademark. It may be comprised of either how a product is packaged and
promoted, or the configuration of the product itself. It can be registered as a trademark with the PTO.
Distinctiveness must be proven to obtain protection in the court for unregistered dress, or in the PTO to
obtain registration. This is generally shown by the same manner of acquired distinctiveness called out in
the previous section with one major additive: the protected feature is advisedly called out to the consumer
(such as” Look at our distinctive unique grille”) to obtain the necessary of association in the mind of the
consuming public. Examples of protectable trade dress are grilles on autos (e.g. Rolls Royce), bottle
shapes (e.g. Coca Cola), and restaurant layouts (e.g. Fuddruckers).
Functional features of trade dress are not protectable under this body of law. Functionality is defined as
that which is “essential to the use or purpose of the product, or effects its cost or quality” (See Ives.).
These are four tests. In theory if one is proven, then the product feature is functional. A key consideration
in this determination is the need by the competitors to use the same elements. If there are but a few ways
to do something, then it will be difficult to usurp it as proprietary.
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Introduction
Chris Agrawal is a patent counseling partner with Bookoff McAndrews, one of the country’s premier patent prosecution and
counseling boutiques. Chris was named a 2015 “Rising Star” in Washington D.C. by Super Lawyers and is retained by
several of the region’s largest tech companies for developing patent portfolios and analyzing patent-related risks and
opportunities. Chris focuses especially in Internet, mobile, and wearables technologies, and on developing and
implementing patent strategies that help leading innovators secure market exclusivity and freedom to market new products
and services. Chris counsels clients on portfolio strategies, patent infringement, validity, and clearance, especially for
clients growing into new business areas. Chris also has particular experience in patent transactions and related activities,
such as searching for target patent acquisitions, conducting due diligence investigations, and negotiating patent sales and
licenses. Chris’s experience also includes several district court litigations, providing significant insights for developing high-
value patent portfolios and evaluating third-party patents. For more information, please click here.
February 05, 2016
53
SEGMENT 3:
Christopher Agrawal
Partner

Patent Strategies for Wearables
• Patenting wearables: brief history
• Patentability
• Patent-eligibility
• Divided/joint infringement
• Patent damages
• Challenges in patent clearance
• What’s next in wearables patents
February 05, 2016
54
SEGMENT 3:
Christopher Agrawal
Partner

Patent challenges on the horizon
“[T]he market for smart devices, such as wearables, will grow to $70 billion dollars in the next ten years.
Like many other emerging technologies, the entrepreneurs and companies developing these applications
will seek patent protection for their inventions. In turn, the current U.S. patent system will present
challenges for IoT technologies.”
- Wake Forest Journal of Business And Intellectual Property Law, Summer 2015
February 05, 2016
55
SEGMENT 3:
Christopher Agrawal
Partner
1975 1992

Patenting wearables: brief history
• Early “pioneering” patents dating to late ’90s
• Later Bluetooth-era patents of ’00s
• Pre-commercialization patents of 2008-2014
• Post-commercialization patents ’14-today
• It’s a relatively diffuse market
– Pebble, Basis
– Jawbone, Fitbit, Garmin
– Nike, Reebok, Polar, Withings
– Samsung, Sony, Huawei, LG, Microsoft, Apple, Google, etc.
– Next gen, startups, etc.
February 05, 2016
56
SEGMENT 3:
Christopher Agrawal
Partner
17th-century Chinese abacus ring

February 05, 2016
57
SEGMENT 3:
Christopher Agrawal
Partner
Patenting wearables: 1998-2001
Earliest Bluetooth patents for wrist and eyewear:

Sample Patents of Earliest Commercially-Adopted Wearables
February 05, 2016
58
SEGMENT 3:
Christopher Agrawal
Partner

Earliest Jawbone- and Fitbit-owned Patents
February 05, 2016
59
SEGMENT 3:
Christopher Agrawal
Partner

February 05, 2016
60
SEGMENT 3:
Christopher Agrawal
Partner
0
2
4
6
8
10
12
14
16
18
20
1990 1995 2000 2005 2010 2015
Commercial Adoption Catching-up to Patent
Literature
Commercial Adoption Patent Maturity
IoT Devices
Outnumber
Humans on Earth
Pebble watch first
launched
Pioneering
wearable patents
Bluetooth first
invented

February 05, 2016
61
SEGMENT 3:
Christopher Agrawal
Partner
0
2
4
6
8
10
12
14
16
18
20
1990 1995 2000 2005 2010 2015
Commercial Adoption Catching-up to Patent
Literature
Commercial Adoption Patent Maturity
Source of Patent Conflict

Patentability
February 05, 2016
62
SEGMENT 3:
Christopher Agrawal
Partner
• Novelty, non-obviousness, and utility
• Commoditization of wearables components:
• What’s actually novel?
– Hardware components?
– Assembled device?
– Kit, system, platform?
– Method?
– Software/apps?
– Branding, trade dress, packaging?
• Accelerometer
• Bluetooth antenna
• NFC antenna
• GPS
• Printed circuit board
• LEDs
• Battery
• USB interface
• haptic devices

Patentability challenges: analogous art
February 05, 2016
63
SEGMENT 3:
Christopher Agrawal
Partner
Medical devices Health and Fitness devices
Smart-tech Fashion/horology
New wristwatch with a heart
monitor

Patent-eligibility in the wake of Alice v. CLS Bank
• What can you even patent anymore?
• Is software of a wearable “patent-eligible”?
• To be eligible:
– Is the invention abstract?
– If so, does it recite “significantly more”
• “Fitbit seeks to force the challenged patents into the category of ineligible subject matter by ignoring
the concrete, articulated limitations of the inventions claimed and, instead, stripping down the
claims until an element that can be characterized as an abstract idea is revealed”
– Jawbone brief before the International Trade Commission.
February 05, 2016
64
SEGMENT 3:
Christopher Agrawal
Partner

65
Current Status of Wearables Patent “Arms Race”
SEGMENT 3:
Christopher Agrawal
Partner

Divided/Joint Infringement
• Most wearables involve communication between:
– Two or more devices of the same person or entity
• Ex: user’s Apple smartphone talking to the same user’s
Jawbone bracelet
– Two or more devices of different individuals
• Ex: spouse A’s Fitbit talking to spouse B’s Fitbit
– Two or more different entities
• Ex: Nike sharing sneaker motion data with Apple
iPhone motion data
• Different communications protocols
• Each of these scenarios raises serious joint infringement issues: Who is
liable when practice of a claim is split across two or more actors?
February 05, 2016
66
SEGMENT 3:
Christopher Agrawal
Partner

Divided/Joint Infringement, cont.
• Consider this Example:
1. Using an iBeacon to detect when a customer walks into a store [Store, Customer]
2. Photographing a product barcode using the customer’s iPhone [Customer]
3. Collecting payment data from the customer’s Apple Watch [Verifone, Apple, Store]
4. Processing a payment discount if the customer entered the store at a desired time [Amex,
Store, Customer, Verifone, etc. etc.]
February 05, 2016
67
SEGMENT 3:
Christopher Agrawal
Partner

Divided/Joint Infringement, cont.
• Imagine case of third party apps:
• API to access third-party’s raw sensor data
• API to access third-party’s mobile app
• API to share interfaces/data between platforms
• The law is in tremendous amount of flux, and may be different five years from now
• Recent rule: Single party of multi-party may be liable if “[e]xercises ‘control or direction’ over the
entire process such that every step is attributable to the controlling party”
• Strategic claim drafting becomes critical:
– Single actor claims
– Combination of systems, methods, devices, CRM
February 05, 2016
68
SEGMENT 3:
Christopher Agrawal
Partner

Patent damages
• What is the value of the patented system?
• Apportion to the value of the infringing component?
• Status of the entire-market-value (EMV) rule
• VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308 (Fed. Cir. Sep. 16, 2014)
• Example: What are the damages caused by a wearable bracelet that infringes a system-type claim
for analyzing wrist movement relative to shoe movement?
February 05, 2016
69
SEGMENT 3:
Christopher Agrawal
Partner

Challenges in Patent Clearance
February 05, 2016
70
SEGMENT 3:
Christopher Agrawal
Partner
Substantial volumes of background
technology to scour and clear:
New
Smart
watch
Hrt-rate
sensor
patents
Accelero-
meter
patents
Coms
patents
Wrstbnd
/clasp
patents
Circuit /
PCB
patents
Bezel
and face
patents
Battery/
power
mgmnt.
patents
Horology
patents

What’s next in wearable patents?
• Looming flood of litigation
– District courts
– ITC
• Post-grant challenges of older, “pioneering” patents and later but still pre-commercial acceptance
• High bar for receiving broad “blocking” patents
• What is an established company to-do if it wants to enter this area?
• Medical device company wants to design and sell an activity tracker
• Pharmaceutical company wants to design and sell a glucose monitor
• Fashion company wants to design and sell a smart watch or shirt
• Opportunities for white-label wearables to minimize risk to Fortune 500 set.
February 05, 2016
71
SEGMENT 3:
Christopher Agrawal
Partner

February 05, 2016
72
Contact Info:
John M. Augustyn
Member
E: jaugustyn@leydig.com
T: 312-616-5600
Christopher Agrawal
Partner
E: cagrawal@bookoffmcandrews.com
T: (202) 808-3552
David N. Makous
Attorney
Lee, Hong, Degerman, Kang
& Waimey
E: dmakous@lhlaw.com
T: 213 244 7064

► You may ask a question at anytime throughout the presentation today. Simply click on the question mark icon located on the floating tool bar on the bottom right side of your screen. Type
your question in the box that appears and click send.
► Questions will be answered in the order they are received.
Q&A:
February 05, 2016
73
SEGMENT 1:
John M. Augustyn
Shareholder
SEGMENT 2:
David N. Makous
Attorney
SEGMENT 3:
Christopher Agrawal
Partner

February 05, 2016
74
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