Valencell, a small, emerging firm focusing on wireless technology used in wearable devices, has filed suits against two giants in the wearable tech space – Apple and Fitbit – charging the companies with infringing on its patents.
The company licenses its technology known as Performtek rather than develop its own devices. It has secured 29 patents and has more than 60 others pending.
“On information and belief, Apple solicited technical information and know-how from Valencell on the false premise that it wished to license Valencell’s PerformTek Technology,” Valencell says in the suit, which was reproduced and published at website Patently Apple.
“Apple did not have an intention of licensing Valencell’s PerformTek Technology. Instead, Apple’s interaction with Valencell was fueled by a business decision that the benefits of infringing upon Valencell’s patented technology outweigh the risk of being caught and ultimately forced to pay damages.”
Sony and LG are among Valencell’s more than 20 licensing customers.
“Since 2006, Valencell recognized that it would take a focused, multidisciplinary team to develop and validate accurate biometric sensor technology that would ultimately fuel compelling use cases in the wearables market. Rather than manufacture its own wearables, Valencell has repeatedly chosen to partner with existing consumer electronics companies and manufacturers while continuing to focus our R&D on creating the future in biometric wearables,” Steven LeBoeuf, president of Valencell, said in the announcement of the suit.
“As more and more wearable products powered by Valencell’s award-winning PerformTek® sensor technology are now available in the marketplace, and the market has begun to value the importance of highly accurate biometric wearables, we’ve seen some companies choose to use our patented inventions without pursuing a patent license. We will defend our intellectual property to ensure our current and future licensees get the full value of licensing our inventions, as we continue to innovate around our foundational dream of seamless, personalized mobile health and fitness.”
In a statement, Fitbit said it would fight the suit.
“Since its inception, Fitbit has more than 200 issued patents and patent applications in this area. Fitbit plans to vigorously defend itself against these allegations,” a Fitbit spokesperson told ZDnet.
Apple declined comment.
In its suit, Valencell says Apple approached the company about a possible partnership in 2013, accessed Valencell technical white papers “by providing fictitious information,” and met with LeBoeuf personally to discuss possible incorporation of Valencell tech in some Apple products..Apple also received Valencell products, the suit says.
Valencell filed the suits Monday in the U.S. District Court for the Eastern District of North Carolina.
The company says Fitbit infringed its intellectual property in the Fitbit Surge, and Fitbit Charge HR biometric wearables.
The specific patents Valencell says that were infringed are:
•8,923,941 – Methods and apparatus for generating data output containing physiological and motion-related information
•8,886,269 – Wearable light-guiding bands for physiological monitoring
•8,929,965 – Light-guiding devices and monitoring devices incorporating same
•8,989,830 – Wearable light-guiding devices for physiological monitoring