Apple settles with Valencell in wearable biometric patent infringement suit

Apple and biometric sensor maker Valencell have settled a patent infringement and breach of contract suit related to light-guided sensors and methods for acquiring physiological information used in the Apple Watch, Yahoo Finance reports.

The two companies began a relationship when Apple contacted Valencell with interest in its heart sensor technology in February 2013, according to the complaint. Seven people involved in designing or implementing the first version of the Apple Watch submitted fictitious names to obtain white papers related to Valencell’s biometric technology. Valencell also gave Apple a prototype of its proprietary watch featuring a heart-rate sensor on the rear of the watch, after Apple expressed interest in licensing the sensor technology. Then the Apple Watch was released with a similar heart-rate monitor, but no licensing agreement.

“Apple solicited technical information and know-how from Valencell on the false premise that it wished to license Valencell’s PerformTek Technology,” according to the filing. “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 sued in January 2016. The suit was based on four patents, but the U.S. Patent Trial and Appeal Board invalidated 13 of the 16 claims in one of them in June, finding they had been implied by prior art.

Valencell President and Co-founder Dr. Steven LeBoeuf says that the companies reached a settlement in September of last year, though a separate related lawsuit filed against Fitbit remains active. LeBoeuf says that most patent claims against Apple involve either large companies or patent trolls.

“We had to think about did we want to do this?” LeBoeuf told Yahoo Finance. “Most small companies decide to let themselves be trampled on because it makes a lot of sense.”

The terms of the settlement are confidential.

Valencell raised $10.5 million in a funding round last year, and plans to develop biometric modules for audio wearables for a range of applications.

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