Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 1 of 39
`
`
`
`
`
`
`
`PHILIPS NORTH AMERICA LLC,
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`Case No. 1:19-CV-11586-FDS
`
`
`
`
`JURY TRIAL DEMANDED
`
`Plaintiff,
`
`
`Defendant.
`
`v.
`
`
`FITBIT, INC.,
`
`
`
`
`
`
`
`
`
`
`DEFENDANT FITBIT, INC.’S ANSWER AND COUNTERCLAIMS TO PLAINTIFF
`PHILIPS NORTH AMERICA LLC’S SECOND AMENDED COMPLAINT
`
`Defendant Fitbit, Inc. (“Fitbit”),1 through its undersigned counsel, submits this Answer and
`
`Counterclaims to Plaintiff Philips North America LLC’s (“Philips”) Second Amended Complaint
`
`for Patent Infringement (“Complaint”), alleging infringement of U.S. Patent Nos. 6,013,007 (“the
`
`’007 Patent”), 7,088,233 (“the ’233 Patent”), and 8,277,377 (“the ’377 Patent”), collectively, “the
`
`Patents-in-Suit”, as follows:
`
`ANSWER
`
`
`
`Fitbit responds to the allegations contained in the numbered paragraphs of Philips’s
`
`Complaint below. Fitbit denies all allegations and characterizations in the Complaint unless
`
`expressly admitted in the following paragraphs.
`
`
`1 Effective July 31, 2021, Fitbit converted from Fitbit, Inc. to Fitbit LLC. The parties are meeting
`and conferring regarding a notice and stipulation of conversion regarding Fitbit’s current corporate
`name.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 2 of 39
`
`NATURE OF THE ACTION2
`
`1.
`
`Fitbit admits that this is an action alleging patent infringement. Fitbit denies that it has
`
`infringed or infringes the Patents-in-Suit and denies that Philips is entitled to compensation.
`
`2.
`
`Fitbit currently has insufficient knowledge or information to admit or deny that Philips
`
`North America LLC is a subsidiary of Koninklijke Philips N.V. or that Koninklijke Philips N.V.
`
`was originally founded in 1891 and on that basis denies the allegations. The remaining allegations
`
`in Paragraph 2 of the Complaint contain nonfactual characterizations that require no response. To
`
`the extent any factual allegations remain in Paragraph 2 of the Complaint, Fitbit currently has
`
`insufficient knowledge or information to admit or deny them and on that basis denies them.
`
`3.
`
`Paragraph 3 of the Complaint contains nonfactual characterizations that require no
`
`response. To the extent any factual allegations remain in Paragraph 3 of the Complaint, Fitbit
`
`currently has insufficient knowledge or information to admit or deny the remaining allegations and
`
`on that basis denies them.
`
`4.
`
`Paragraph 4 of the Complaint contains nonfactual characterizations that require no
`
`response. To the extent any factual allegations remain in Paragraph 4 of the Complaint, Fitbit
`
`currently has insufficient knowledge or information to admit or deny the remaining allegations and
`
`on that basis denies them.
`
`5.
`
`Fitbit currently has insufficient knowledge or information to admit or deny the allegations
`
`in Paragraph 5 of the Complaint and on that basis denies them.
`
`6.
`
`Paragraph 6 of the Complaint contains nonfactual characterizations that require no
`
`response. To the extent any factual allegations remain in Paragraph 6 of the Complaint, Fitbit
`
`
`2 For clarity and ease of reference, Fitbit repeats herein the section headers recited in Philips’s
`Complaint. To the extent any section header is construed as a factual allegation, Fitbit denies any
`and all such allegations.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 3 of 39
`
`currently has insufficient knowledge or information to admit or deny the remaining allegations and
`
`on that basis denies them.
`
`7.
`
`Fitbit currently has insufficient knowledge or information to admit or deny the allegations
`
`in Paragraph 7 of the Complaint and on that basis denies them.
`
`8.
`
`Fitbit currently has insufficient knowledge or information to admit or deny the allegations
`
`in Paragraph 8 of the Complaint and on that basis denies them.
`
`9.
`
`Fitbit admits that Philips purports to assert the Patents-in-Suit in this action, but notes that
`
`the Court recently found that all asserted claims of the ’007 Patent are invalid. The remainder of
`
`Paragraph 9 of the Complaint contains nonfactual characterizations that require no response. To
`
`the extent any factual allegations remain in Paragraph 9 of the Complaint, Fitbit currently has
`
`insufficient knowledge or information to admit or deny the remaining allegations and on that basis
`
`denies them.
`
`10.
`
`Fitbit admits that it was founded in 2007 and that Paragraph 10 of the Complaint accurately
`
`transcribes text found at https://www.fitbit.com/about. Fitbit denies that “Fitbit did not develop
`
`its own technology and released its first product without filing a single patent application. Instead,
`
`Fitbit and its founders leveraged the patented technology of Philips from the company’s
`
`beginnings.” Fitbit admits that, since its founding, it has generated billions of dollars in revenue.
`
`To the extent any factual allegations remain in Paragraph 10 of the Complaint, Fitbit denies them.
`
`11.
`
`Fitbit admits that it has not licensed the Patents-in-Suit. Fitbit denies that it has willfully
`
`infringed or is willfully infringing the Patents-in-Suit. The remaining allegations in Paragraph 11
`
`of the Complaint contain legal conclusions or nonfactual characterizations that require no
`
`response. To the extent any factual allegations remain in Paragraph 11 of the Complaint, Fitbit
`
`denies them.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 4 of 39
`
`PARTIES
`
`12.
`
`Fitbit currently has insufficient knowledge or information to admit or deny the allegations
`
`in Paragraph 12 of the Complaint regarding Philips’s corporate organization or principal place of
`
`business and on that basis denies them. The remaining allegations in Paragraph 12 of the
`
`Complaint contain nonfactual characterizations that require no response. To the extent any factual
`
`allegations remain in Paragraph 12 of the Complaint Fitbit, denies them.
`
`13.
`
`Fitbit admits that at the time Philips filed the operative Complaint, it was a corporation
`
`organized under the laws of Delaware. Effective July 31, 2021, Fitbit converted from a corporation
`
`to a limited liability company, Fitbit LLC, organized under the laws of Delaware. Fitbit denies
`
`that it maintains an office at One Marina Park Drive, Suite 701, Boston, MA 02210. Fitbit admits
`
`that it develops, manufactures, markets, sells, and uses Fitbit devices. Fitbit admits that it has not
`
`licensed the Patents-in-Suit. Fitbit denies that its products “incorporate Philips’s patented
`
`technology” and denies that it “chose a path of willful infringement.” The remaining allegations
`
`in Paragraph 13 of the Complaint contain legal conclusions that require no response. To the extent
`
`any factual allegations remain in Paragraph 13 of the Complaint, Fitbit denies them.
`
`JURISDICTION AND VENUE
`
`14.
`
`Fitbit admits that Philips’s claims purport to arise under Title 35 of the United States Code.
`
`For purposes of this case only, Fitbit does not dispute this Court’s general and specific personal
`
`jurisdiction over Fitbit. Fitbit denies that it sells or has sold “infringing products and services.”
`
`The remaining allegations in Paragraph 14 of the Complaint contain nonfactual characterizations
`
`and legal conclusions that require no response. To the extent any factual allegations remain in
`
`Paragraph 14 of the Complaint, Fitbit denies them.
`
`15.
`
`For purposes of this case only, Fitbit does not dispute this Court’s personal jurisdiction
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 5 of 39
`
`over Fitbit. Fitbit denies that it “has committed acts of direct and joint infringement in this Judicial
`
`District.” The remaining allegations in Paragraph 15 of the Complaint contain nonfactual
`
`characterizations and legal conclusions that require no response. To the extent any factual
`
`allegations remain in Paragraph 15 of the Complaint, Fitbit denies them.
`
`16.
`
`For purposes of this case only, Fitbit does not dispute this Court’s personal jurisdiction
`
`over Fitbit. The remaining allegations in Paragraph 16 of the Complaint contain nonfactual
`
`characterizations and legal conclusions that require no response. To the extent any factual
`
`allegations remain in Paragraph 16 of the Complaint, Fitbit denies them.
`
`17.
`
`Fitbit denies that it “has knowingly induced and continues to induce and/or contribute to
`
`infringement within this Judicial District.” Fitbit denies that it “provides instructions, user
`
`manuals, advertising, and/or marketing materials which facilitate, direct, or encourage such
`
`infringing use with knowledge thereof.” Fitbit denies that it “jointly infringes with its customers
`
`and subscribers in this Judicial District.” Fitbit denies that any of its products are “covered by the
`
`Patents-in-Suit.” The remaining allegations in Paragraph 17 of the Complaint contain nonfactual
`
`characterizations and legal conclusions that require no response. To the extent any factual
`
`allegations remain in Paragraph 17 of the Complaint, Fitbit denies them.
`
`18.
`
`For purposes of this case only, Fitbit does not dispute this Court’s personal jurisdiction
`
`over Fitbit.
`
`19.
`
`For purposes of this case only, Fitbit does not dispute the propriety of venue in this District.
`
`Fitbit denies that it has “engaged and continues to engage in infringing acts in this Judicial
`
`District.” The remaining allegations in Paragraph 19 of the Complaint contain nonfactual
`
`characterizations and legal conclusions that require no response. To the extent any factual
`
`allegations remain in Paragraph 19 of the Complaint, Fitbit denies them.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 6 of 39
`
`20.
`
`Fitbit denies that it maintains an office at One Marina Park Drive, Suite 701, Boston, MA
`
`02210. The remaining allegations of Paragraph 20 of the Complaint contain nonfactual
`
`characterizations and legal conclusions that require no response. To the extent any factual
`
`allegations remain in Paragraph 20 of the Complaint, Fitbit denies them.
`
`21.
`
`Fitbit admits that it has sold and shipped Fitbit products to residents of Boston and
`
`Massachusetts. Fitbit denies that Fitbit’s products are “sold by Fitbit at retail locations in this
`
`Judicial District, including BestBuy and Target.” The remaining allegations of Paragraph 21 of
`
`the Complaint contain nonfactual characterizations that require no response. To the extent any
`
`factual allegations remain in Paragraph 21 of the Complaint, Fitbit denies them.
`
`22.
`
`Fitbits admits that it has sold and offered for sale Fitbit devices in the Commonwealth of
`
`Massachusetts and in this Judicial District. The remaining allegations in Paragraph 22 of the
`
`Complaint contain nonfactual characterizations and legal conclusions that require no response. To
`
`the extent any factual allegations remain in Paragraph 22 of the Complaint, Fitbit denies them.
`
`23.
`
`Fitbit denies that it has “committed acts of direct and joint infringement” of the Patents-in-
`
`Suit or that the alleged “Accused Products…infringe one or more claims of the Patents-in-Suit.”
`
`To the extent any factual allegations remain in Paragraph 23 of the Complaint, Fitbit denies them.
`
`FACTUAL BACKGROUND
`
`24.
`
`The allegations in Paragraph 24 of the Complaint contain nonfactual characterizations that
`
`require no response. To the extent any factual allegations remain in Paragraph 24 of the Complaint,
`
`Fitbit has insufficient knowledge or information to admit or deny the remaining allegations and on
`
`that basis denies them.
`
`25.
`
`The allegations in Paragraph 25 of the Complaint contain nonfactual characterizations that
`
`require no response. To the extent any factual allegations remain in Paragraph 25 of the Complaint,
`
`Fitbit has insufficient knowledge or information to admit or deny the remaining allegations and on
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 7 of 39
`
`that basis denies them.
`
`26.
`
`Fitbit has insufficient knowledge or information to admit or deny the allegations in
`
`Paragraph 26 of the Complaint and on that basis denies them.
`
`27.
`
`Fitbit has insufficient knowledge or information to admit or deny the allegations in
`
`Paragraph 27 of the Complaint and on that basis denies them.
`
`28.
`
`Fitbit has insufficient knowledge or information to admit or deny the allegations in
`
`Paragraph 28 of the Complaint and on that basis denies them.
`
`Fitbit Background and Infringement
`
`29.
`
` Fitbit has insufficient knowledge or information to admit or deny the allegations in
`
`Paragraph 29 of the Complaint and on that basis denies them.
`
`30.
`
` Fitbit has insufficient knowledge or information to admit or deny the allegations in
`
`Paragraph 30 of the Complaint and on that basis denies them.
`
`31.
`
`Fitbit admits that it has not licensed the Patents-in-Suit. Fitbit admits that it has received
`
`communications, including in October 2016, from Philips mentioning the Patents-in-Suit. Fitbit
`
`denies that it infringes or has infringed the Patents-in-Suit and further denies that it has not
`
`responded to Philips’s communications. The remaining allegations in Paragraph 31 of the
`
`Complaint contain nonfactual characterizations and legal conclusions that require no response. To
`
`the extent any factual allegations remain in Paragraph 31 of the Complaint, Fitbit denies them.
`
`Accused Products
`
`Denied.
`
`Fitbit admits that the Fitbit Surge, Fitbit Charge, Fitbit Flex, Fitbit Versa, Fitbit Alta, Fitbit
`
`32.
`
`33.
`
`Inspire, Fitbit Ionic, and Fitbit Blaze are all Fitbit products. Fitbit admits that each of these devices
`
`is or previously was available through Fitbit’s website. Fitbit denies that any of its products are
`
`“infringing.” The remaining allegations in Paragraph 33 of the Complaint contain nonfactual
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 8 of 39
`
`characterizations and legal conclusions that require no response. To the extent any factual
`
`allegations remain in Paragraph 33 of the Complaint, Fitbit denies them.
`
`34.
`
`Fitbit has insufficient knowledge or information to admit or deny the allegations in
`
`Paragraph 34 of the Complaint and on that basis denies them.
`
`35.
`
`Fitbit has insufficient knowledge or information to admit or deny the allegations in
`
`Paragraph 35 of the Complaint and on that basis denies them.
`
`36.
`
`37.
`
`Denied.
`
`Denied—Fitbit understands that the Patents-in-Suit did not “derive from…Philips’s efforts
`
`in this field of technology,” but rather that Philips obtained all of the Patents-in-Suit after they
`
`issued.
`
`38.
`
`Denied.
`
`U.S. Patent No. 6,013,007
`
`39.
`
`Fitbit admits that the ’007 Patent was issued by the U.S. Patent Office to Gary Miller Root
`
`on January 11, 2000 and is entitled “Athlete’s GPS-Based Performance Monitor.” Fitbit admits
`
`that a copy of what appears to be the ’007 patent is attached as Exhibit A to Philips’s Complaint.
`
`Fitbit denies that the ’007 Patent was “duly and legally issued.” To the extent any factual
`
`allegations remain in Paragraph 39 of the Complaint, Fitbit denies them.
`
`40.
`
`Paragraph 40 of the Complaint contains legal conclusions to which no response is required.
`
`To the extent any factual allegations remain in Paragraph 40 of the Complaint, Fitbit currently has
`
`insufficient knowledge or information to admit or deny the remaining allegations and on that basis
`
`denies them.
`
`U.S. Patent No. 7,088,233
`
`41.
`
`Fitbit admits that the ’233 Patent was issued by the U.S. Patent Office to Raymond J.
`
`Menard on August 8, 2006 and is entitled “Personal Medical Device Communication System and
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 9 of 39
`
`Method.” Fitbit admits that a copy of what appears to be the ’233 Patent is attached as Exhibit B
`
`to Philips’s Complaint. Fitbit denies that the ’233 Patent “was duly and legally issued.” To the
`
`extent any factual allegations remain in Paragraph 41 of the Complaint, Fitbit denies them.
`
`42.
`
`Paragraph 42 of the Complaint contains legal conclusions to which no response is required.
`
`To the extent any factual allegations remain in Paragraph 42 of the Complaint, Fitbit currently has
`
`insufficient knowledge or information to admit or deny the remaining allegations and on that basis
`
`denies them.
`
`U.S. Patent No. 8,277,377
`
`43.
`
`Fitbit admits that the ’377 Patent was issued by the U.S. Patent Office to Roger J. Quy on
`
`October 2, 2012 and is entitled “Method and Apparatus for Monitoring Exercise with Wireless
`
`Internet Connectivity.” Fitbit admits that a copy of what appears to be the ’377 Patent is attached
`
`as Exhibit C to Philips’s Complaint. Fitbit denies that the ’377 Patent “was duly and legally
`
`issued.” To the extent any factual allegations remain in Paragraph 43 of the Complaint, Fitbit
`
`denies them.
`
`44.
`
`Paragraph 44 of the Complaint contains legal conclusions to which no response is required.
`
`To the extent any factual allegations remain in Paragraph 44 of the Complaint, Fitbit currently has
`
`insufficient knowledge or information to admit or deny the remaining allegations and on that basis
`
`denies them.
`
`Fitbit’s Knowledge of Infringement
`
`Denied.
`
`Fitbit admits that on or about October 10, 2016 it received a communication addressed to
`
`45.
`
`46.
`
`Mr. James Park listing the numbers of the Patents-in-Suit. The remaining allegations in Paragraph
`
`46 of the Complaint are legal conclusions that require no response. To the extent any factual
`
`allegations remain in Paragraph 46 of the Complaint, Fitbit denies them.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 10 of 39
`
`COUNT 1: INFRINGEMENT OF U.S. PATENT NO. 6,013,007
`
`Fitbit incorporates its answers to the foregoing paragraphs.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Fitbit admits that the application resulting in the ’007 Patent was filed on March 26, 1998
`
`47.
`
`48.
`
`49.
`
`50.
`
`51.
`
`52.
`
`53.
`
`54.
`
`55.
`
`56.
`
`57.
`
`and that the ’007 Patent issued on January 11, 2000. Fitbit denies any remaining allegations in
`
`this paragraph.
`
`58.
`
`Fitbit admits that the ’007 Patent was prosecuted before the U.S. Patent Office and that
`
`certain prior art is cited on the face of the ’007 Patent. Fitbit has insufficient knowledge or
`
`information to admit or deny that the U.S. Patent Office “considered the claims of the ’007 patent
`
`against the background of prior technology to determine if the claims of the ’007 patent identified
`
`a patentable advance over the prior art systems before issuing the patent” or “searched multiple
`
`sets of prior art in classifications 482/1-9, 900-902; 701/213-216; and 342/357” and on that basis
`
`denies them. Fitbit denies any remaining allegations in this paragraph.
`
`59.
`
`60.
`
`Denied.
`
`Denied.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 11 of 39
`
`61.
`
`62.
`
`63.
`
`64.
`
`65.
`
`66.
`
`67.
`
`68.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Fitbit admits that it received a letter from Philips on or around October 10, 2016, which
`
`listed the number of the ’007 Patent. Fitbit denies any remaining allegations in this paragraph.
`
`69.
`
`70.
`
`Denied.
`
`Denied.
`
`COUNT II: INFRINGEMENT OF U.S. PATENT NO. 7,088,233
`
`Fitbit incorporates its answers from the foregoing paragraphs.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Fitbit admits that the ’233 Patent issued on August 8, 2006 and claims priority to a
`
`71.
`
`72.
`
`73.
`
`74.
`
`75.
`
`76.
`
`77.
`
`78.
`
`79.
`
`80.
`
`81.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 12 of 39
`
`provisional application filed on October 23, 2008. Fitbit denies any remaining allegations in this
`
`paragraph.
`
`82.
`
`Fitbit admits that the ’233 Patent was prosecuted before the U.S. Patent Office and that
`
`certain prior art is cited on the face of the ’233 Patent. Fitbit has insufficient knowledge or
`
`information to admit or deny that the U.S. Patent Office “considered the claims of the ’233 patent
`
`against the background of prior technology to determine if the claims of the ’007 patent identified
`
`a patentable advance over the prior art systems before issuing the patent” or “searched multiple
`
`sets of prior art in classifications 340/539.1, 539.11, 539.12, 539.13, 506, 511, 517, 524, 537, 3.1,
`
`825.36, 825.49” and on that basis denies them. Fitbit denies any remaining allegations in this
`
`paragraph.
`
`83.
`
`84.
`
`85.
`
`86.
`
`87.
`
`88.
`
`89.
`
`90.
`
`91.
`
`92.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Fitbit admits that it received a letter from Philips on or around October 10, 2016, which
`
`listed the number of the ’233 Patent. Fitbit denies any remaining allegations in this paragraph.
`
`93.
`
`94.
`
`Denied.
`
`Denied.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 13 of 39
`
`COUNT III: INFRINGEMENT OF U.S. PATENT NO. 8,277,377
`
`Fitbit incorporates its answers from the foregoing paragraphs.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`95.
`
`96.
`
`97.
`
`98.
`
`99.
`
`100. Denied.
`
`101. Denied.
`
`102. Denied.
`
`103. Denied.
`
`104. Denied.
`
`105. Fitbit admits that the ’377 Patent issued on October 2, 2012 and claims priority to a
`
`provisional application filed on December 17, 1999. Fitbit denies any remaining allegations in
`
`this paragraph.
`
`106. Fitbit admits that the ’377 Patent was prosecuted before the U.S. Patent Office and that
`
`certain prior art is cited on the face of the ’377 Patent. Fitbit has insufficient knowledge or
`
`information to admit or deny that the U.S. Patent Office “considered the claims of the ’377 patent
`
`against the background of prior technology to determine if the claims of the ’377 patent identified
`
`a patentable advance over the prior art systems before issuing the patent” or “ conducted searches
`
`at least five times in May 2009, August 2010, March 2011, and August 2011 including patents in
`
`classifications 600/300, 301 and 428/8” and on that basis denies them. Fitbit denies any remaining
`
`allegations in this paragraph
`
`107. Denied.
`
`108. Denied.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 14 of 39
`
`109. Denied.
`
`110. Denied.
`
`111. Denied.
`
`112. Denied.
`
`113. Denied.
`
`114. Denied.
`
`115. Denied.
`
`116. Denied.
`
`117. Fitbit admits that it received a letter from Philips on or around October 10, 2016, which
`
`listed the number of the ’377 Patent. Fitbit denies any remaining allegations in this paragraph.
`
`118. Denied.
`
`119. Denied.
`
`120. Fitbit denies that Fitbit has infringed any Philips patent and denies that Philips is entitled
`
`DAMAGES
`
`to any compensation.
`
`121. Denied.
`
`
`
`Fitbit denies that Philips is entitled to any relief.
`
`PRAYER FOR RELIEF
`
`FITBIT’S AFFIRMATIVE DEFENSES
`
`Fitbit asserts the following affirmative defenses in response to the allegations set forth in
`
`Philips’s Complaint. Fitbit undertakes the burden of proof only as to those defenses deemed
`
`affirmative defenses by law, regardless of how such defenses are denominated herein. Fitbit
`
`reserves the right to assert any additional defenses as they become known during the course of this
`
`action or to the extent they are not otherwise deemed affirmative defenses by law.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 15 of 39
`
`First Affirmative Defense: Non-Infringement
`
`1.
`
`Fitbit does not directly or indirectly infringe and has not directly or indirectly infringed,
`
`either literally or under the doctrine of equivalents, and is not liable for infringement of any valid
`
`and enforceable claim of the Patents-in-Suit.
`
`Second Affirmative Defense: Invalidity
`
`2.
`
`The Patents-in-Suit are invalid for failure to satisfy the conditions of patentability as
`
`specified under 35 U.S.C. §§ 101, 102, 103, 112 and/or any other applicable statutory provisions
`
`of Title 35 of the United States Code.
`
`Third Affirmative Defense: Equitable Doctrines
`
`3.
`
`Philips’s claims are barred in whole or in part under the principles of equity, including
`
`without limitation, unclean hands, patent misuse, waiver, acquiescence, estoppel, disclaimer,
`
`express or implied license, patent exhaustion, and inequitable conduct.
`
`Fourth Affirmative Defense: Prosecution History Estoppel
`
`4.
`
`By reason of the proceedings in the U.S. Patent and Trademark Office during the
`
`prosecution of the applications which resulted in the issuance of the Patents-in-Suit, Philips is
`
`estopped from claiming a construction of one or more claims of the Patents-in-Suit that would
`
`cause any valid claim thereof to cover or include any product manufactured, used, sold, offered
`
`for sale, or imported by Fitbit.
`
`Fifth Affirmative Defense: Ensnarement
`
`5.
`
`Philips’s infringement claims are barred by the doctrine of ensnarement. Philips is
`
`foreclosed from asserting infringement under the doctrine of equivalents to the extent the scope of
`
`such equivalent would ensnare prior art.
`
`Sixth Affirmative Defense: Inequitable Conduct
`
`6.
`
`The ’233 Patent is unenforceable due to inequitable conduct.
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 16 of 39
`
`7.
`
`The ’233 Patent has a sibling patent, U.S. Patent No. 7,138,902 (“the ’902 Patent”). Both
`
`the ’233 Patent and the ’902 Patent are continuations-in-part of U.S. Patent Appl. No. 09/956,474,
`
`which is a continuation of U.S. Patent Appl. No. 09/384,165, which claims priority to U.S.
`
`Provisional Patent Appl. No. 60/135,862 and U.S. Provisional Patent Appl. No. 60/105,493. The
`
`’902 Patent is also a continuation-in-part of an unnumbered patent application that was filed March
`
`28, 2002 and is entitled “Method and System for Wireless Tracking,” which claims priority to U.S.
`
`Provisional Patent Appl. No. 60/279,401. The ’233 Patent also claims priority to U.S. Patent Appl.
`
`No. 10/112,669 filed on March 28, 2002, which claims priority to U.S. Provisional Patent Appl.
`
`No. 60/279,401. The ’233 Patent is also a continuation-in-part of PCT/US01/18734. The ’233
`
`Patent and the ’902 Patent share essentially the same specification, with only minor typographical
`
`differences between the two (e.g., “video exchange” in the ’233 Patent, 11:38, compared to “video
`
`exhange” in the ’902 Patent, 11:52).
`
`8.
`
`The ’233 and ’902 Patents share the same named inventor, Raymond J. Menard. See ’233
`
`Patent at Cover; ’902 Patent at Cover. The application that issued as the ’233 Patent—U.S. Patent
`
`App. No. 10/165,624 (“the ’624 application” or “the ’233 Patent application”)—was initially
`
`assigned to Mr. Menard as the inventor, and was later assigned to Royal Thoughts, LLC on July
`
`26, 2002. PNA-FB0002251 at 2252. The application that issued as the ’902 Patent—U.S. Patent
`
`App. No. 10/490,330 (“the ’330 application” or “the ’902 Patent application”)—was also initially
`
`assigned to Mr. Menard as the inventor, and then later assigned to Royal Thoughts, LLC on April
`
`10, 2009. Fitbit_19-11586_00084759.
`
`9.
`
`The ’233 Patent’s application was filed on June 7, 2002 through Mr. Gerald E. Helget and
`
`Nelson R. Capes of the law firm Briggs and Morgan, P.A. PNA-FB0001299 at 1302. On the same
`
`day, June 7, 2002, Mr. Helget and his law firm also filed a PCT application (PCT/US02/17962)
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 17 of 39
`
`(“PCT application”) in the United States designating a number of countries including the United
`
`States. Fitbit_19-11586_00083422 at 83485-86. Both the ’233 Patent application and the PCT
`
`application claimed priority to the same patent application, U.S. Patent Appl. No. 09/956,474 (“the
`
`parent application”). PNA-FB0001299 at 1300; Fitbit_19-11586_00083422 at 83487.
`
`10.
`
`The PCT application and the ’233 Patent applications were both filed with identical claims.
`
`For example, claim 1 of the ’624 application and claim 1 of the PCT application both read:
`
`1. A bi-directional wireless communication system comprising:
`
`(a) a first personal device, the first personal device further comprising:
`
`(i) a processor;
`
`(ii) a memory;
`
`(iii) a power supply;
`
`(iv) at least one detector input; and
`
`(v) a short-range bi-directional wireless communications module;
`
`(b) a second device communicating with the first device, the second device
`
`having a short-range bi-directional wireless communications module compatible with the
`
`short-range bi-directional wireless communications module of the first device; and
`
`(c) a security mechanism governing information transmitted between the first
`
`personal device and the second device.
`
`11.
`
`12.
`
`All 56 other claims filed with each of these applications are also identical.
`
`Under 35 U.S.C. § 101, an inventor is only entitled to one patent for a particular invention
`
`(“Whoever invents or discovers any new and useful process, machine, manufacture, or
`
`composition of matter or any new and useful improvement thereof, may obtain a patent
`
`therefor….”) (emphasis added). 35 U.S.C. § 101 provides the basis for a particular type of
`
`
`FITBIT, INC.’S ANSWER TO PHILIPS’S SECOND
`AMENDED COMPLAINT
`
`
`
`
`Case No.: 1:19-CV-11586-FDS
`
`

`

`Case 1:19-cv-11586-FDS Document 224 Filed 08/24/21 Page 18 of 39
`
`rejection during prosecution of a patent application referred to as a double patenting rejection.
`
`MPEP 804 (Aug. 2001) (“The doctrine of double patenting seeks to prevent the unjustified
`
`extension of patent exclusivity beyond the term of a patent.”); see also MPEP 804 (Aug. 2005);
`
`MPEP 804 (Aug. 2006). “Before consideration can be given to the issue of double patenting,
`
`there must be some common relationship of inventorship and/or ownership of two or more patents
`
`or applications.” MPEP 804 (Aug. 2001); see also MPEP 804 (Aug. 2005); MPEP 804 (Aug.
`
`2006).
`
`13. Where the same invention exists between two different applications, a statutory basis for a
`
`double patenting rejection exists under 35 U.S.C. § 101, referred to as “statutory double patenting.”
`
`MPEP 804 (Aug. 2001); see also MPEP 804 (Aug. 2005); MPEP 804 (Aug. 2006). That is, such
`
`a situation falls directly under the prohibition set forth in 35 U.S.C. § 101 against filing more than
`
`one patent on a single invention. Id. In such a case, MPEP 804 instructs examiners to issue
`
`provisional statutory double-patenting rejections until the potential statutory double patenting
`
`issue has been addressed. See In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re
`
`Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966); see also MPEP 804 (Aug. 2001) (“The
`
`‘provisional’ double patenting rejection should continue to be made by the examiner in each
`
`application as long as there are conflicting claims in more than one application unless that
`
`‘provisional’ double patenting rejection is the only rejec