Phillips’ patent for GPS enabled fitness tracker loses its way

Garmin has succeeded in largely revoking Phillips’ UK patent in relation to a GPS enabled athletic performance-monitoring device. The decision significantly reduces Garmin’s potential liability for infringing the patent and may help clear the way for others.

In October 2017, Garmin brought a claim in the High Court of England and Wales to invalidate Phillips’ patent for a GPS-based performance monitor. Phillips brought a counter-claim, alleging that 73 of Garmin’s products sold in the UK infringed the claims of the patent. The High Court handed down its decision at the end of January.

Over the past decade, wearable performance monitoring devices, including those that utilise GPS (either directly or via a smartphone) have become a commonplace sight, expanding rapidly from a fairly niche market of professional and amateur athletes. Phillips’ patent was granted, however, back in 1998. It claimed a device featuring a GPS receiver for acquiring position data of an athlete, and means for converting that data into athletic feedback data and presenting it to the athlete. It also claimed various types of product that developed on this key concept – such as a device also having an integrated audio entertainment system and a system for uploading data from the device to a website to allow for the comparison of the performance of different athletes.

Phillips originally argued that its invention was transformative in the field of technology. Undeterred, Garmin was able to point to a number of articles that pre-dated the patent and raised the possibility of using GPS in conjunction with devices for monitoring physical activity. In particular, Garmin referred to an article by Schutz and Chambaz entitled “Could a satellite-based navigation system (GPS) be used to assess the physical activity of individuals on earth?”, which was published in 1997. From this basis, Garmin argued that the inventions claimed in the patent were not new or would have been obvious to people working in the field of wearable technology in 1998.

The Judge largely agreed with Garmin. Although he considered that the “concept may be said to have given rise to a new industry”, he held that most of the claims of the patent related to ideas that were either not new or were obvious at the time the application was filed for the patent. The only claim of the patent that survived was for a GPS enabled device that features an integrated audio entertainment system for listening to music, where the volume of the music is reduced when data concerning performance is presented audibly to the athlete.

This is a feature found in a number of modern fitness trackers, which may still have infringed the patent (unless their manufacturers obtained a licence from Phillips). However, only a small number of the 73 Garmin products concerned were thought to fall within the surviving claim, so Garmin will have substantially reduced its potential liability to Phillips for infringement of the patent.

The judgment also potentially reduces the risk for other manufacturers’ in the field. Phillips’ UK patent expired in 2018, but it could still bring claims for infringement in relation to products sold in the UK prior to that date. Its ability to do so has now been significantly restricted.

The case has established that the core concept of a device featuring a GPS receiver to monitor physical performance is now in the public domain in the UK. However, future innovations in the technology will be capable of protection and, given the value of the market, it would be no surprise if more patent litigation followed.

For more information please contact David Fyfield on +44 (0)20 7203 5200 or at david.fyfield@crsblaw.com.