As Steven LeBoeuf, president and co-founder of Valencell, wrapped up a 2014 tech conference pitch describing how his startup’s biometric sensor technology works in wearable devices, he was asked to comment about Apple’s then widely expected but still yet-to-launch smart watch.
“Absolutely not,” LeBoeuf told the audience at the CED Tech Venture conference in Raleigh, NC, two years ago.
Valencell has a lot to say about Apple (NASDAQ: [[ticker:AAPL]]) now. Raleigh-based Valencell claims in a lawsuit that Apple initially sought to partner with Valencell, then went on to use the company’s technology without licensing it. Valencell filed a patent infringement lawsuit against the Cupertino, CA-based company in the U.S. District Court for the Eastern District of North Carolina on Monday.
In a separate suit filed Monday, Valencell claims that San Francisco-based Fitbit (NYSE: [[ticker:FIT]]) also infringed the company’s patents.
An Apple spokeswoman declined to comment on the pending litigation. Fitbit issued a statement saying it stands behind its technology. LeBoeuf, in Las Vegas for the CES conference, was not immediately available for comment.
Valencell has developed sensor technology that captures vital signs, such as heart rate and respiration. In previous interviews, LeBoeuf explained to me that the company’s technology was inspired by large, bulky, hospital-based devices that monitor vital signs. LeBoeuf, who led the optoelectronic biosensor program at GE Global Research before co-founding Valencell in 2006, said his company’s innovation was its method of packing powerful biometric sensing technology into a size and shape small enough for a wearable device. The sensor technology, which Valencell calls PerformTek, fits inside an earbud.
Consumers can’t go into an electronics store and buy Valencell-branded earbuds. Valencell licenses its technology to electronics companies that incorporate the company’s biometric sensor technology into their own products. Disclosed partners include Jabra, iRiver, LG Electronics, and Atlas Wearables.
Valencell initially hoped that Apple would become one of those partners. According to the complaint, Valencell claims its discussions with Apple date to early 2013, when the Apple Watch was still in development. The company claims Apple reached out to explore a possible partnership, expressing interest in Valencell’s wrist-based heart sensor technology. Valencell says Apple met with several company employees, including LeBoeuf, throughout 2014 to discuss the company’s technology.
But Valencell claims in the suit that Apple tried to gain technical information from the company under the guise of pursuing a technology license. The company says Apple is using Valencell technology without licensing it and paying royalties.
“Apple did not have an intention of licensing Valencell’s PerformTek Technology,” Valencell says in the complaint. “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.”
Valencell’s contact with Fitbit dates to 2009, when LeBoeuf reached out to Fitbit co-founder and CEO James Park, according to the company’s civil suit. LeBoeuf sought a partnership that could bring his company’s heart rate monitor to Fitbit devices. While that outreach did not lead to a deal, the two companies, by chance, had booths close to each other at the 2014 CES show. Valencell says in the complaint that Fitbit Chief Revenue Officer Woody Scal
