reviewed Valencell’s wrist sensor’s reference design and “expressed great interest in the application of Valencell’s patented technology, including its wrist sensor modules.” But after the conference, Scal did not respond to follow-up inquiries, according to Valencell.
Later that year, Valencell noticed that Fitbit began listing various Valencell patent applications in the information disclosure statements that Fitbit filed with the U.S. Patent and Trademark Office, the company says in the complaint. Valencell says its further attempts at a partnership with Fitbit were met with no response. Valencell now claims that Fitbit devices launched last year, which offer the ability to calculate the wearer’s pulse, use heart sensors that infringe on the company’s technology.
A Fitbit spokesperson offered only a prepared statement: “As the pioneer and leader in the connected health and fitness market, Fitbit has independently developed and delivered innovative product offerings to empower its customers to lead healthier, more active lives. 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.”
Valencell’s lawsuits come a little more than a month after the company announced that the 12 patents it received in 2015 brought the company’s patent portfolio to 29. Four of the patents it received last year are ones the company says were infringed by both Apple and Fitbit. Valencell says it has another 60 patents pending.
According to both complaints, Valencell is seeking compensation no less than a “reasonable royalty,” plus interest and court costs, for Apple’s and Fitbit’s use of Valencell technology. Valencell does not specify any dollar figures for its royalties.
Valencell launched its technology in 2007. Best Buy Capital, the venture arm of electronics retailer Best Buy (NYSE: [[ticker:BBY]]), led a $5.5 million Series B round investment in Valencell in 2011. The company last raised money in 2014, when new investor WSJ Joshua Fund joined in a $7 million Series C round. Other investors in the company include TDF Ventures and True Ventures.
So far, Valencell’s technology is only available in consumer electronics devices for health and fitness. But LeBoeuf has said that the company aims to eventually expand into medical applications, such as monitoring patients in clinical trials. The company says PerformTek’s accuracy has been evaluated and validated through clinical studies at Duke University. Those studies were done in a way that could support an eventual application to the FDA for marketing clearance as a medical device, according to LeBoeuf. The company is also pursuing application of the technology in wearable devices worn by first responders and military personnel.
Valencell returns to CES this week, where the company is expected to showcase various biometric wearable devices that use Valencell technologies. Among those technologies is BioPack, Valencell’s recently launched biometric sensor system, which the company says electronics companies can more quickly incorporate into their wrist and arm products, as well as other wearable form factors. Valencell says it has patents on BioPack, too.
