Blackbird Tech LLC v. Fitbit, Inc.

Case Overview and Background

This patent infringement lawsuit pits Blackbird Tech LLC, a prolific non-practicing entity (NPE), against Fitbit, Inc., a leading manufacturer of wearable fitness trackers. Blackbird Tech, also known as Blackbird Technologies, operates a business model of acquiring patents and monetizing them through litigation, employing its own in-house litigators. The firm was founded by former patent litigators from prominent law firms. Fitbit, the defendant, is a major player in the consumer electronics and fitness industry, known for its line of activity trackers and smartwatches that monitor metrics like steps taken, heart rate, and sleep quality. At the time of the suit, Fitbit was a publicly traded company, and it was later acquired by Google in 2021. The lawsuit alleged that Fitbit's wearable fitness trackers infringed on a patent owned by Blackbird.

The case centers on U.S. Patent No. 6,434,212, which describes a device and method for calculating distance traveled by a person on foot. The technology involves a pedometer that counts a user's steps and uses a data processor to calculate distance by multiplying the step count by a stride length that varies based on the rate at which the steps are taken. Blackbird asserted this patent against Fitbit's line of popular fitness trackers, which provide users with data on their physical activity. The case was filed in the U.S. District Court for the District of Delaware, a venue historically favored for patent litigation due to its experienced judiciary and well-established procedures for handling complex patent cases. At the time of filing, prior to the Supreme Court's 2017 decision in TC Heartland, venue rules were more permissive, but Delaware has remained a key forum as many companies, including Fitbit, are incorporated there.

The litigation is notable as an example of the broader trend of NPEs targeting successful operating companies in the technology sector. Blackbird, in particular, has been involved in over 100 lawsuits since its founding in 2014 and has faced scrutiny for its business model, which some critics liken to a "patent troll" seeking nuisance-value settlements. This case is also significant due to its direct link to parallel proceedings at the Patent Trial and Appeal Board (PTAB). Fitbit successfully petitioned for an inter partes review (IPR) of the '212 patent. The PTAB ultimately found one of the asserted claims (claim 6) unpatentable as obvious, a decision later affirmed by the Court of Appeals for the Federal Circuit. The stay in the district court case was a direct result of these PTAB proceedings, a common strategy for defendants to challenge patent validity and halt costly district court litigation.

Key Legal Developments and Outcome

The patent infringement litigation between Blackbird Tech LLC and Fitbit, Inc. was defined by the strategic use of an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB), which ultimately led to a stay and eventual dismissal of the district court case. The key events unfolded chronologically as follows:

Filing and Initial Pleadings (2016)

• 2016-08-04: Blackbird Tech LLC filed a complaint for patent infringement against Fitbit, Inc. in the U.S. District Court for the District of Delaware, alleging that various Fitbit fitness trackers infringed U.S. Patent No. 6,434,212.
• 2016-10-11: Fitbit filed its Answer to the complaint, denying infringement and asserting counterclaims for declaratory judgment of non-infringement and invalidity of the '212 patent.

Stay Pending Inter Partes Review (2017-2018)

• 2017-08-30: Fitbit, exercising a common defensive strategy, filed a petition for inter partes review with the PTAB, challenging the validity of claims 2, 5, and 6 of the '212 patent. This proceeding was docketed as IPR2017-02012.
• 2018-02-28: In light of the pending IPR petition, the parties filed a joint motion to stay the district court litigation pending the PTAB's decision on whether to institute the review.
• 2018-03-01: The district court granted the joint motion, officially staying the case. This action effectively paused all district court proceedings, including discovery and claim construction, pending the outcome of the PTAB's validity review.

Parallel PTAB Proceedings and Federal Circuit Appeal (2019-2020)

• 2019-03-11: The PTAB issued its Final Written Decision in IPR2017-02012. The Board found that Fitbit had demonstrated by a preponderance of the evidence that claim 6 of the '212 patent was unpatentable as obvious. However, the PTAB concluded that Fitbit had failed to prove that claims 2 and 5 were unpatentable.
• Post-Decision Appeal: Blackbird appealed the PTAB's finding of unpatentability for claim 6 to the U.S. Court of Appeals for the Federal Circuit. Fitbit did not appeal the decision on claims 2 and 5.
• 2020-08-06: The Federal Circuit issued a decision affirming the PTAB's finding, cementing the invalidity of claim 6 of the '212 patent.

Settlement and Final Disposition (2021)

• 2021-02-19: Following the conclusion of the PTAB and Federal Circuit proceedings, the parties filed a joint Stipulation of Dismissal with Prejudice in the district court case. This indicates the parties reached a settlement resolving the remaining dispute over claims 2 and 5.
• 2021-02-19: The court entered an order based on the stipulation, dismissing the case and terminating it. The "with prejudice" provision means that Blackbird cannot refile the same infringement claims against Fitbit in the future.

The case outcome highlights a frequent dynamic in modern patent litigation: a district court case being effectively sidelined and ultimately resolved based on the results of a parallel PTAB review. The stay pending the IPR proved to be a successful strategy for Fitbit, as it narrowed the case by invalidating one of the asserted claims and likely provided the leverage needed to achieve a final settlement and dismissal of the entire litigation.

Plaintiff's Counsel of Record

Blackbird Tech LLC, which operates with its own in-house litigators, was represented by the following counsel in the case Blackbird Tech LLC v. Fitbit, Inc., No. 1:16-cv-00683 (D. Del.).

• Wendy Verlander (Lead Counsel)

  • Firm: Blackbird Technologies (Boston, MA)
  • Note: Verlander is the President and CEO of Blackbird Technologies and previously served as its General Counsel; prior to co-founding the firm, she was a principal at the prominent litigation firm WilmerHale.

• Christopher Freeman (Lead Counsel)

  • Firm: Blackbird Technologies (Boston, MA)
  • Note: Freeman is a co-founder and Managing Director at Blackbird Technologies; he was previously an attorney at Williams & Connolly and served as a law clerk on the U.S. Court of Appeals for the Federal Circuit.

• Stamatios Stamoulis (Local Counsel)

  • Firm: Stamoulis & Weinblatt LLC (Wilmington, DE)
  • Note: Stamoulis is a veteran Delaware-based patent litigator who frequently serves as local counsel for out-of-state firms and plaintiffs in the District of Delaware.

• Richard C. Weinblatt (Local Counsel)

  • Firm: Stamoulis & Weinblatt LLC (Wilmington, DE)
  • Note: Weinblatt is a partner at the firm and regularly represents parties in patent litigation before the District of Delaware.

According to court filings, Verlander and Freeman of Blackbird Technologies appeared as lead counsel, with Stamoulis and Weinblatt serving as the required local counsel in Delaware. This arrangement aligns with Blackbird's business model of using its own in-house litigators to prosecute cases it files.

Counsel for Defendant Fitbit, Inc.

Fitbit, Inc. retained counsel from the intellectual property specialty firm Fish & Richardson P.C. to defend it in this litigation. The legal team included attorneys from the firm's Delaware and California offices, reflecting a common strategy of combining local counsel familiar with the District of Delaware's specific rules with subject-matter experts from other jurisdictions.

Based on court filings, the following attorneys appeared on behalf of Fitbit:

• Name: Joseph J. Farnan, Jr.

• Role: Lead Counsel / Local Counsel

• Firm: Farnan LLP (Wilmington, DE)

• Note: Mr. Farnan is a former U.S. District Judge for the District of Delaware and a highly sought-after litigator for Delaware patent cases.

• Name: Brian E. Farnan

• Role: Local Counsel

• Firm: Farnan LLP (Wilmington, DE)

• Note: He frequently serves as Delaware counsel in complex patent litigation, often alongside his father, Joseph J. Farnan, Jr.

• Name: Michael J. Kane

• Role: Counsel

• Firm: Fish & Richardson P.C. (Wilmington, DE)

• Note: Mr. Kane's practice focuses on patent litigation in the District of Delaware.

• Name: Frank E. Scherkenbach

• Role: Lead Counsel

• Firm: Fish & Richardson P.C. (Boston, MA)

• Note: Mr. Scherkenbach is a veteran patent litigator who has led numerous high-stakes cases for major technology companies.

• Name: Craig E. Countryman

• Role: Counsel

• Firm: Fish & Richardson P.C. (San Diego, CA)

• Note: Mr. Countryman specializes in post-grant proceedings before the PTAB and related district court litigation, and he was instrumental in the successful IPR against the patent-in-suit.

• Name: Neil A. Warren

• Role: Counsel

• Firm: Fish & Richardson P.C. (Redwood City, CA)

• Note: Mr. Warren has experience in patent litigation and counseling for technology companies.

• Name: David M. Hoffman

• Role: Counsel

• Firm: Fish & Richardson P.C. (Boston, MA)

• Note: Mr. Hoffman's practice centers on patent litigation, particularly within the technology sector.