IN THE UNITED STATES DISCTRICT COURT EASTERN DISTRICT OF VIRGINIA

(ALEXANDRIA DIVISION)

Erik B. Cherdak

149 Thurgood Street Gaithersburg, Maryland 20878

Ph. 202.330.1994

CaseNo. 1MQ-CV-1^
COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff,

JURY TRIAL DEMANDED Fitbit, Inc. 150 Spear Street San Francisco, California 94105

Defendant.

COMPLAINT

Plaintiff Erik B. Cherdak (hereinafter "Plaintiff" or "Cherdak"), Pro Se, and in

and for his Complaint against the above-named Defendant, states as follows:
PARTIES

1.

Plaintiff is an individual residing in Gaithersburg, Maryland at the address listed

above. At all times relevant herein, Plaintiff has been and is the named inventor and

owner ofU.S. Patent Nos. 5,343,445 and 5,452269 (the "patents-in-suit").

2.

On information and belief, Defendant Fitbit, Inc. ("Fitbit") is a privately held

company having a principal place of business as specified in the caption of this

Complaint. Fitbit regularly sells infringing products and solicits business in this judicial
district of Virginia, USA, such as through its vast sales and distribution network that

includes such well-know retailers as the AT&T Store (e.g., such as the AT&T Store

located at 3165 Duke Street, Alexandria, Virginia). Fitbit also owns and operates a

website accessible at www.fitbit.com. 24 hours per day, 7 days per week, and 365 days

per year by citizens of this judicial district. As such, Fitbit's infringing products as
specified herein are regularly advertised and marketed, offered for sale and sold to citizens in this judicial district.
JURISDICTION AND VENUE

3.

This is an action for Patent Infringement of U.S. Patent Nos. 5,343,445 and

5,452^69 to Cherdak under the Laws of the United States of America and, in particular,

under Title 35 of the United States Code (Patents - 35 USC 1, et seq.). Accordingly,
Jurisdiction and Venue are properly based in accordance with Sections 1338(a), 1391(b)
and (c), and/or 1400(b) of Title 28 of the United States Code.

4.

Defendant, has in the past engaged in the design, importation, distribution, sale,

and offering for sale of products including, but not limited to, those which incorporate
technologies and the use of methods covered by the patents-in-suit. At all times relevant

herein, Defendant has engaged in the infringement of and/or induced the infringement of

and/or committed contributory infringement of the patents-in-suit patent throughout the United States, including, but not limited to, in this judicial district of Virginia, USA.
FACTS

5.

On July 6, 1993, Plaintiff filed a patent application entitled "Athletic Shoe with

Timing Device" which resulted in the issuance of the U.S. Patent 5343,445 on August
30, 1994. On August 29, 1994, Plaintiff filed a Continuation-type application also
entitled "Athletic Shoe with Timing Device" which resulted in the issuance of the U.S.

Patent No. 5,452,269 on September 19,1995. The patents-in-suit have successfully gone
through the USPTO's expert review on three (3) occasions: First, in the early 1990's
during initial examination proceedings; second, during ex parte reexamination
proceedings in the 2007-2008 time-frame; and third, during ex parte reexamination

proceedings in 2012. It is beyond dispute that the patents-in-suit are valid ipso facto.

Said first reexamination proceedings resulted, inter alia, in the confirmation of many
claims without amendment. Said second reexamination proceedings resulted in the

confirmation of all claims of both the patents-in-suit without any amendment and the

addition of claims.

Copies of the patents-in-suit along with their respective

reexamination certificates are attached hereto at Exhibits 1-6.

6.

Fitbit has in the past imported, distributed, sold and offered for sale, and continues

to import, distribute, market, sell and offer for sale, infringing products under the Fitbit,
Fitbit Ultra, Fitbit Zip, Fitbit One and other trademarks/trade identifiers.

7.

The patents-in-suit are marked in connection with products that utilize

substantially similar technology and processes as those found in the Defendant's

products. Such patent marking may be found, for example, at www.pearsports.com in

relation to its activity tracking devices and foot pod products.
COUNT I - PATENT INFRINGEMENT

Paragraphs 1through 7are hereby incorporated by reference as though completely set

forth herein.

8.

Given the validity and enforceability of the patents-in-suit against past, present,

and future infringing acts and other activities prohibited under the U.S. Patent Act (35

USC 1, et seq.), Plaintiff, inter alia, possesses the right to pursue claims against Fitbit
for its past, present, and future design, use, manufacture, importation, sale, offer for sale,

and distribution of infringing products under 35 USC 271(a) (direct infringement), (b)

(induced infringement), and (c) (contributory infringement). Fitbit has infringed,

contributed to the infringement of, and/or induced the infringement of the patents-in-suit
in violation of 35 USC 271(a), (b), and/or (c) by its design, use, manufacture,
importation, distribution, sale, and offer for sale of products currently sold under the
under the Fitbit, Fitbit ULTRA, Fitbit ZIP, Fitbit ONE and other trademarks/trade
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identifiers.

Defendant refers to the Fitbit ULTRA, Fitbit ONE, and the Fitbit ZIP as

"activity trackers."

9.

The patents-in-suit are publically marked on materials used in connection with

selling other products that operate in substantially similar ways to that of Defendant Fitbit's infringing products. For example, the patents-in-suit are marked on website

materials used in connection with selling products sold by Pear Sports, LLC at

www.pearsports.com which includes the following patent marking: "Products may be

covered by one or more of the following patents until their expiration: USP 5343,445
and USP 5,452,269. Products sold under license."

10.

Fitbit's activity trackers are advertised by Fitbit as each device including a motion

sensor that "measures the intensity and duration of your physical activities, calories

burned, steps taken, distance traveled..." Exhibit 7. The intensity of a step relates to the
pressure (force over area) imparted to a shoe during that step, for example, to make a

shoe move when worn by a person during an activity being evaluated (e.g., during steps
taken such as during running step (a series ofjumps), a walking step, a jump, etc.). The
duration of a step directly correlates to the time that a shoe is off the ground and in the air

such as during a step orjump taken by a person wearing one of the Defendant's activity
monitors. This Court held in collateral litigation that 'The 445 patent senses when a
shoe leaves and returns to the ground." See Case No. l:ll-cv-01311-LO-JFA at ECF

112, p. 6. This Court also held that "Cherdak's 445 patent senses pressure imparted to a
shoe at different intervals." Id. Trusted technology evaluators have summed the inner workings of the Fitbit device as follows: "The linchpin of FitBit is its three-dimensional

accelerometer system...In plain language, that just means it tracks motion, as well as

the intensity of that motion." See Exhibit 8 at p. 2 (emphasis supplied).

11.

Plaintiff's pre-filing investigation1 reveals at least the following information

related to Defendant's infringement of the patents in suit as presented herein in claimchart form:

Claim 10 of U.S. Patent No. 5343,445 CI

Fitbit Products - Exemplary Infringement

Fitbit ULTRA, ZIP and ONE Products

Collectively, the "Fitbit Products'

10. A method for measuring and indicating hang time off the ground and in the air during a jump by a person wearing an athletic shoe, said method comprising the steps of:

The Fitbit Products operate to measure and indicate hang time off the ground and in the air during a jump by a person
wearing an athletic shoe. All of the Fitbit

products may be attached to apparel worn

by a user including, but not limited to, an article of clothing, a shoe, a woman's bra,

a pocket, etc. through use of a clip

supplied by Fitbit with each of the Fitbit
Products.

(a) measuring in the shoe elapsed time This method step as written literally reads between the shoe leaving the ground and on the Fitbit Products. When a Fitbit returning to the ground; Product is attached to a shoe using the clip supplied by Fitbit, for example, the device

measures time between the shoe leaving the ground and returning to the ground during a step or jump. Elapsed time is measured between the shoe leaving the (b) from the elapsed time measured in step
(a), determining in said shoe whether said

ground and returning to the ground. This method step as written literally reads
on the Fitbit Products. In order to

person has jumped off the ground or taken a walkingor running step; and

determine a step count, for example, the Fitbit Products and the algorithms programmed therein discern among
movement types and characteristics.

Movement of a person and his or her shoe is directly related to pressure (force over area) imparted to that person's shoe during a step or jump (i.e., the intensity of

the person's motions - See Exhibit 8 at p.

2).

(c) upon determining in step (b) that the This claimed method step literally reads person has jumped off the ground, providing on the Fitbit Products. Upon determining

The infringement charts presented in this Complaint are preliminary and have been
prepared based only on publicly available information. Due discovery in this case will
reveal information directly from the Defendant or elsewhere that further details the

structural and operational features of the Fitbit Products. Plaintiff reserves the right to change the charts found herein based on information that will be made available during discovery. The charts found herein satisfy all pleading requirements under the FRCP.

an indication at said shoe, perceptible to said in step (b) that the person has jumped off person, of the elapsed time measured in step the ground (e.g., during a running
(a).

sequence, etc.), the Fitbit Products, when

one of same is mounted on a person's shoe, for example, will provide an

indication at (in, on or near) the shoe of

the elapsed time measured in step (a).

The infringing Fitbit Products also can

utilize radio frequency technologies to

communicate sensed and processed data. Visual indications are provided at (in, on, near) the shoe (e.g., via LED or LCD arrangements) and/or remotely such as via a corresponding remotely located web
site.

<fTHIS SPACE LEFT BLANK INTENTIONALLY>

Claim 12 of U.S. Patent No. 5,452,269 CI

Fitbit Products - Exemplary Infringement

Fitbit ULTRA, ZIP and ONE Products Collectively, the "Fitbit Products"

12. The method of measuring hang time off The Fitbit Products operate to measure the ground and in the air of an individual, said and indicate hang time off the ground and method comprising the steps of: in the air during a jump by a person wearing an athletic shoe. All of the Fitbit products may be attached to apparel worn by a user including, but not limited to, an article of clothing, a shoe, a woman's bra, a pocket, etc. through use of an integrated

or device-attachable clip supplied by

Fitbit with each of the Fitbit Products.

(a) providing in an athletic shoe a selectively This claimed actuable timing device; on the Fitbit and packaged Products are

method step literally reads Products and their integral

clip assemblies. The Fitbit selectively actuable with

switching assemblies to operate timing

and other circuitry and displays within
those products. The ULTRA, for

example, includes a momentary contact

switch. The ZIP, for example, operates by

sensing finger taps directly to the device to scroll through various pieces of information (steps, distance, calories burned). Such pieces of information all relate to sensing steps (when a shoe leaves and later returns to the ground and how long it takes to do the same). The

ULTRA is advertised as including timing circuitry. Tapping (i.e., applying

pressures or forces over areas) of the surface of the ZIP demonstrate that it is

responding to pressure (force over area)

imparted to the device itself and/or to or

by the person and his body parts (b) actuating said timing device to measure This claimed method step literally reads elapsed time in response to said athletic shoe on the Fitbit Products. Timing leaving the ground and elevating into the air; circuitry/processes within the Fitbit

Products are actuated to measure elapsed

time in response to an athletic shoe leaving the ground and elevating into the

air such as occurs during an activity under

review (e.g., steps taken, etc.).

(c) deactuating said timing device in response This claimed method step literally reads to said athletic shoe returning to the ground; on the Fitbit Products. Timing and circuitry/processes within the Fitbit
Products deactuate a time measurement

period between a shoe leaving the ground and the shoe returning to the ground as sensed in steps (b) and (c), respectively.
(d) providing an indication at said athletic This claimed method step literally reads shoe representing the time interval between on the Fitbit Products. The Fitbit actuation of said timing device in step (b) and Products provide an indication (e.g., of deactuation of said timing device in step (c). one or more steps, etc.) at (in, on or near)

the athletic shoe especially when one of the Fitbit Products is clipped to a person's article of clothing such as his/her pant's pocket, a shoe and worn during an activity like a stepping or jumping sequence. The
indication between is a visible indication and and deactuation of

represents and relates to the time interval

actuation

timing device circuitry. The visible indication includes presentation of numeric displays, graphic images (smiley
faces, etc.) and other non-literal elements

(e.g., growing and shrinking flowers to

graphically depict a particular progress

level overtime).

<THIS SPACE LEFT BLANK INTENTIONALLY>

Claim 10 of U.S. Patent No. 5343,445 CI

Fitbit Products - Exemplary Infringement

Fitbit ULTRA, ZIP and ONE Products Collectively, the "Fitbit Products"

10. A method for measuring and indicating hang time off the ground and in the air during a jump by a person wearing an athletic shoe, said method comprising the steps of:

The Fitbit Products operate to measure and indicate hang time off the ground and

in the air during a jump by a person

wearing an athletic shoe. All of the Fitbit

products may be attached to apparel worn by a user including, but not limited to, an article of clothing, a shoe, a woman's bra,

a pocket, etc. through use of a clip

supplied by Fitbit with each of the Fitbit
Products.

(a) measuring in the shoe elapsed time When a Fitbit Product is attached to a between the shoe leaving the ground and shoe using the clip supplied by Fitbit, the returning to the ground; device measures time between the shoe

leaving the ground and returning to the ground during a step or jump. Elapsed
time is measured between the shoe

leaving the ground and returning to the

ground.

(b) from the elapsed time measured in step

(a), determining in said shoe whether said person has jumped off the ground or taken a walking or running step; and

In order to determine a step count, for

example, the Fitbit Products discern movement types. Movement of a person

and his or her shoe is directly related to pressure (force over area) imparted to that

person has jumped off the ground, providing on the Fitbit Products. Upon determining an indication at said shoe, perceptible to said in step (b) the person has jumped off the person, of the elapsed time measured in step ground (e.g., during a running sequence,
(a).

person's shoe during a step or jump (c) upon determining in step (b) that the This claimed method step literally reads

etc.), the Fitbit Products mounted on a

person's shoe, for example, will provide

an indication at (in, on or near) the shoe of

the elapsed time measured in step (a).

The infringing devices utilize radio frequency to transmit data for remote display/analysis. Visual indications also are provided at (in, on, near) the shoe and
remotely such as via a web site. Visual

indications are provided by the Fitbit

products through use of integrated LED/LCD arrangements (numerical

displays, graphic arrangements to depict

success level, step counts, etc.).
J

Claims 25 and 27 of

Fitbit Products - Exemplary Infringement

Fitbit ULTRA, ZIP and ONE Products Collectively, the "Fitbit Products"

U.S. Patent No. 5,343,445 C2

25. A method for indicating time off the ground and in the air during an activity including a jump, a walking step, a running step, or a skating lift by a person wearing an athletic shoe suitable to said activity, said method comprising the steps of:

The preamble of claim 25 literally reads on the Fitbit Products. The Fitbit Products operate to indicate time off the ground and in the air during an activity by a person wearing an athletic shoe. All of the Fitbit Products may be attached to apparel worn by a user including, but not limited to, an article of clothing, within the laces of a shoe, to a woman's bra, to in

pocket, etc. through use of a clip supplied by

Fitbit with each of the Fitbit Products. Fitbit encourages people to attach the Fitbit Products to an article of clothing.

(a) sensing, within said shoe, pressure This claimed method step literally reads on the
imparted to said shoe when said shoe
Fitbit Products. When a Fitbit Product is

leaves the ground during said activity;

attached to a shoe using the clip supplied by

Fitbit, an accelerometer in the Fitbit Products

senses pressure (force over area) imparted to

the shoe to make it move such as when the

shoe leaves the ground during an activity like a walking step. The presence of an
accelerometer (e.g., a micro-electro mechanical-system accelerometer or "MEMS accelerometer") is advertised by Fitbit. The

sensor within the Fitbit Products sense activity intensity See Exhibit 8 at p. 2 ("The linchpin
of FitBit is its three-dimensional accelerometer

system...In plain language, that just means it

tracks motion, as well as the intensity of that

motion.").

(b) sensing, within said shoe, pressure This claimed method step literally reads on the
imparted to said shoe when said shoe returns to the ground at the end of said activity; and
Fitbit Products. When a Fitbit Product is

attached to a shoe's laces using the clip

supplied by Fitbit, an accelerometer in the

Fitbit Products senses pressure (force over

area) imparted to the shoe to make the shoe
move such as when the shoe returns to the

ground during an activity like a walking step. The presence of an accelerometer (e.g., a
micro-electro-mechanical-system
accelerometer or "MEMS accelerometer") is advertised by Fitbit. Fitbit also advertises that

its ZIP product responds to direct taps such as finger taps to the surfaces of the ZIP device (or

to its case) to scroll through data computed in

the ZIP device. Such taps demonstrate that the
accelerometer sensor in the Fitbit products is
10

directly responding to pressure (force over area) imparted to the device and to the body (i.e., to an article of clothing, a shoe, etc.) to which they are attached through use of a clip
member. The sensor in the Fitbit Products

demonstrates the operational characteristic of

sensing when a step is taken so that steps can

be counted and tracked over time even if

clipped to a person's shirt, his shoe, or

elsewhere on the person (c) activating, within said shoe, a This claimed method step literally reads on the messaging device in relation to the time Fitbit Products. The Fitbit Products include interval between said shoe leaving and on-board visual display arrangements

returning to the ground as sensed in steps (a) and (b), respectively, said messaging device providing an indication related to said time interval in a manner perceptible to said person.

comprised of either Leeds or LCD messaging devices. When clipped to a shoe, for example, each Fitbit Product and, more particularly, the on-board messaging devices thereof provide
indications related to the interval sensed

between the time the shoe leaves the ground and later returns to the ground such as during a walking step. Some of the messaging device
arrangements present numerical displays of a step count, (e.g., from 1 to many) and others

display graphic images (e.g., growing flowers)

to illustrate progress toward a goal 27. The method according to claim 25, This claim literally reads on the Fitbit Products wherein said messaging device activated and, more particularly, on the website views during said activating step (c) is located presented to registered users of such products. remotely from said shoe. A website view on a display screen is remotely
located from a shoe on which a Fitbit Product

may be attached via a clip. This claim demonstrates that the activating step of Claim

25 may be carried out to activate a remotely

located messaging device and that the messaging device need not be disposed in or on the shoe. Of course, Claim 25, from which Claim 27 depends, covers both situations in which the activation step may occur at the shoe

while the actual manifestation of a message

may occur there and/or remotely elsewhere.

12.

The above-listed claim charts are exemplary and have been prepared based on

publicly available information. Discovery will likely reveal additional materials that

inform the infringement inquiry now before the Court. Discovery in this case likely also

11

will reveal additional instances of infringement such as may be related to additional

products and claims of the patents-in-suit.

13.

On information and belief, Defendants have infringed the patents-in-suit in

violation of 35 USC 271(b) by actively inducing distributors, customers, and/or other

retailers to infringe that patent.

14.

On information and belief, Defendants have made and continue to make (and/or

have had made on their behalf) infringing products (e.g., the aforementioned Fitbit

Products and possibly others) and have and continue to market the same throughout the
U.S. and, in particular, in thisjudicial district of Virginia, USA.

15.

On information and belief, Defendant Fitbit markets and sells its infringing

products through numerous channels including retail sales channels such through wellknown stores like and/orsimilarto the AT&T Store, BEST BUY,and others.

16.

Because of Defendant's infringing activities in the marketplace, Plaintiff and his

patents have been and continue to be injured. Thus, the U.S. Patent Act mandates that

Plaintiff be granted remedies including, but not limited to, equitable relief to inhibit
prospective infringement and damages for past infringement in an amount of no less than
a reasonable royalty.

17.

Because ofthe subjectively willful nature ofDefendants' infringing activities and

Defendant's reckless indifference to the rights of the Plaintiff in violation of35 USC
271 (a), (b) and (c), Plaintiff is entitled to enhanced damages of no less than trebled

damages as permitted by the U.S. Patent Act (35 USC 1, et. seq.), along with attorneys
fees and costs of suit.

12

PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for judgment and relief against Defendants Fitbit,
Inc. as follows:

A.

For a judgment that the patents-in-suit are infringed by Defendant (including, but

not limited to, its subsidiaries, predecessors-in-interest and business units however and

wherever formed, etc.) in that Defendant has in the past and continues to act in

unauthorized ways to bring to market and encourage the infringing use of products within
the Fitbit product family;

B.

That a permanent injunction be issued against continued infringement of the

patents-in-suit by Defendant and its parents, subsidiaries, officers, directors, employees,

affiliates, representatives and agents, and all those acting in concert with or through
Defendant, directly or indirectly, including, but not limited to, distributors, customers,
and other retailers;

C.

That an accounting be had for damages caused to Plaintiff Cherdak by

Defendant's acts in violation of the U.S. Patent Act (35 USC 1, et seq.) together with
pre-judgment and post-judgment interest;

D.

That damages be assessed at no less than a reasonable royalty in regard to the acts

of infringement by Defendant Fitbit as complained of herein;

E.

That any damages awarded in accordance with any prayer for relief be enhanced

and, in particular, trebled in accordance with the U.S. Patent Act (35 USC 1, et seq.) for
Defendant's acts which are found to be willful acts of patent infringement; and
F. Such other and further relief as this Court shall deem justand proper.

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DEMAND FOR TRIAL BY JURY

The Plaintiff hereby demands a TRIAL BY JURY on all issues so trialable.

Respectfully submitted,

Erik B. Cherdak, Plaintiff Pro Se

149 Thurgood Street Gaithersburg, Maryland 20878

November

i^.

(202)330-1994
2012

email: [email protected]

Exhibits:

Exhibit 1

U.S. Patent No. 5,343,445

Exhibit 2 Exhibit 3 Exhibit 4 Exhibit 5 Exhibit 6 Exhibit 7

Exhibit 8

Reexamination Certificate for U.S. Patent No. 5,343,445 (CI) Reexamination Certificate for U.S. Patent No. 5,343,445 (C2)
U.S. Patent No. 5,452,269

Reexamination Certificatefor U.S. Patent No. 5,452,269 (CI) Reexamination Certificate for U.S. Patent No. 5,452,269(C2)

Internet Website Printout from www.fitbit.com (Help on How Fitbit Works) as published by Fitbit,Inc. and printed on November 26,2012.
Internet Article entitled "How FitBit Works," www.howstuffworks.com

published by Discovery Communications, printed from the Internet on

November 26,2012.
Exhibit 9

Printout from www.fitbit.com depicting The Fitbit ULTRA and ZIP

infringing products.

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