Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 1 of 21
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`
`PHILIPS NORTH AMERICA LLC,
`
`
`
`v.
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`FITBIT LLC,
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`
`
`
`Civil Action No. 1:19-cv-11586-FDS
`
`
`
`
`DEFENDANT FITBIT LLC’S OPPOSITION TO PHILIPS’ MOTION FOR
`RECONSIDERATION (DKT. 403)
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`
`
`

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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 2 of 21
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`
`TABLE OF CONTENTS
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`I. 
`
`II. 
`
`INTRODUCTION ...............................................................................................................1 
`
`RELEVANT LEGAL STANDARDS FOR RECONSIDERATION ..................................1 
`
`III. 
`
`ARGUMENT .......................................................................................................................3 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`The Court Considered the Inventive Concepts Alleged by Philips and Its
`Expert, Dr. Martin ....................................................................................................4 
`
`The Court Properly Found That The First Inventive Concept Alleged by
`Philips And Dr. Martin Is Not Captured In The Claims, And Did Not Rely
`On Whether The Second Alleged Inventive Concept Is Captured In The
`Claims ......................................................................................................................5 
`
`The Court Properly Considered Whether the Ordered Combination Of
`Elements Provide Any Inventive Concept In Light Of The Evidence
`Presented By The Parties And Determined They Do Not .......................................9 
`
`All Of Philips Arguments Were Raised or Could Have Been Raised At
`The Summary Judgment Phase, And Thus Cannot Support
`Reconsideration ......................................................................................................13 
`
`CONCLUSION ..................................................................................................................15 
`
`ii
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`IV. 
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`

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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 3 of 21
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`
`TABLE OF AUTHORITIES
`
`Pages
`
`Cases 
`
`Aatrix Software, Inc. v. Green Shades Software, Inc.,
` 882 F.3d 1121 (Fed. Cir. 2018).......................................................................................... 8
`
`Above the Belt, Inc. v. Mel Bohannan Roofing, Inc.,
` 99 F.R.D. 99 (E.D. Va. 1983) ............................................................................................ 2
`
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016)....................................................................................... 5, 8
`
`Ahmed v. Rosenblatt,
`118 F.3d 886 (1st Cir. 1997) ............................................................................................... 2
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ............................................................................................................ 3
`
`Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,
`967 F.3d 1285 (Fed. Cir. 2020)........................................................................................... 4
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)................................................................................... 3, 5, 8
`
`BSG Tech LLC v. Buyseasons, Inc.,
` 899 F.3d 1281 (Fed. Cir. 2018)...................................................................................... 5, 8
`
`Cavallaro v. UMass Mem’l Health Care, Inc.,
` No. CIV.A. 09-40181-FDS, 2010 WL 9433452 (D. Mass. Dec. 20, 2010). ....................14
`
`Cellspin Soft, Inc. v. Fitbit, Inc.,
`927 F.3d 1306 (Fed. Cir. 2019)........................................................................................... 8
`
`Cochran v. Quest Software, Inc.,
`328 F.3d 1 (1st Cir. 2003) ......................................................................................... 3, 6, 14
`
`Innovation Scis., LLC v. Amazon.com, Inc.,
` 2021 WL 2075677 (E.D. Tex. May 24, 2021) ................................................................. 11
`
`Kenyon v. Cedeno-Rivera,
`47 F.4th 12 (1st Cir. 2022) ............................................................................................ 2, 14
`
`Nat’l Metal Finishing Co., Inc. v. BarclaysAmerican/Commercial, Inc.,
`899 F.2d 119 (1st Cir. 1990) ......................................................................................... 2, 14
`
`iii
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`

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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 4 of 21
`TABLE OF AUTHORITIES (cont’d)
`
`Pages
`
`Palmer v. Champion Mortgage,
`465 F.3d 24 (1st Cir. 2006) ....................................................................................... 1, 2, 14
`
`Ruiz Rivera v. Pfizer Pharms., LLC,
`521 F.3d 76 (1st Cir. 2008) ................................................................................................. 1
`
`Shea v. Porter,
`56 F. Supp. 3d 65 (D. Mass. 2014) ............................................................................ passim
`
`Silk v. Sandoval,
`435 F.2d 1266 (1st Cir. 1971) ............................................................................................. 2
`
`Statutes 
`
`35 U.S.C. § 101 ................................................................................................................. 3, 4, 9, 13
`
`35 U.S.C. § 102 ............................................................................................................................. 13
`
`Rules 
`
`FED. R. CIV. P. 59 ............................................................................................................................ 1
`
`Fed. R. Civ. P. 59(e) ....................................................................................................................... 1
`
`Fed. R. Civ. P. 60 ............................................................................................................................ 1
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`Fed. R. Civ. P. 60(b) ....................................................................................................................... 1
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`Fed. R. Civ. P. 60(b)(1)................................................................................................................... 2
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`Fed. R. Civ. P. 60(b)(6)................................................................................................................. 14
`
`
`
`
`
`iv
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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 5 of 21
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`I.
`
`INTRODUCTION
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`Philips’ Motion for Reconsideration (Dkt. 403; “Motion”) and Memorandum in Support
`
`(Dkt. 404; “Memo”) mischaracterize and misconstrue the Court’s well-reasoned summary
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`judgment Order (Dkt. 401) in an effort to improperly manufacture a basis for reconsideration
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`where none exists. Philips’ Motion glosses over the fact that reconsideration is an extraordinary
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`remedy requiring special circumstances, such as an intervening change in the law or the Court
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`misapprehending a party’s argument, in order to justify such relief. Rather than recounting such
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`special circumstances, Philips does no more than rehash old arguments that it previously made or
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`could have made in opposition to Fitbit’s motion for summary judgment, and claims that this Court
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`made errors of reasoning in rejecting those arguments and granting summary judgment. But
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`Philips’ unfounded disagreement with the Court’s reasoning does not rise to the extraordinary level
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`justifying reconsideration. Philips’ Motion should be denied.
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`II.
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`RELEVANT LEGAL STANDARDS FOR RECONSIDERATION
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`“[G]ranting of a motion for reconsideration is an ‘extraordinary remedy’ that should be
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`used ‘sparingly’” Shea v. Porter, 56 F. Supp. 3d 65, 79 (D. Mass. 2014) (citing Palmer v.
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`Champion Mortgage, 465 F.3d 24, 30 (1st Cir. 2006)).
`
`Although motions for reconsideration are not explicitly set forth in the Federal Rules of
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`Civil Procedure, the First Circuit recognizes that such motions may be considered under Rules
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`59(e) and 60(b). Ruiz Rivera v. Pfizer Pharms., LLC, 521 F.3d 76, 81 (1st Cir. 2008). However,
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`like other motions brought under Rules 59(e) and 60(b), reconsideration is only appropriate in
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`narrow circumstances such as “a manifest error of law, [] newly discovered evidence, …if the
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`court has patently misunderstood a party, …or [the court] has made an error not of reasoning but
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`apprehension.” Id. at 82 (internal citations omitted); cf. FED. R. CIV. P. 59 (New Trial; Altering or
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`Amending a Judgment) and 60 (Relief from a Judgment or Order). As used here, “apprehension”
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`

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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 6 of 21
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`is synonymous with “comprehension,” and does not apply to alleged errors of reasoning. See, e.g.,
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`Above the Belt, Inc. v. Mel Bohannan Roofing, Inc., 99 F.R.D. 99, 101 (E.D. Va. 1983) (“The
`
`motion to reconsider would be appropriate where, for example, the Court has patently
`
`misunderstood a party, or has made a decision outside the adversarial issues presented to the Court
`
`by the parties, or has made an error not of reasoning but of apprehension.”).
`
`“[I]n [the First] circuit, wrongly deciding a point of law is not a “mistake” as we have
`
`defined that term under Rule 60(b)(1).” Ahmed v. Rosenblatt, 118 F.3d 886, 891 (1st Cir. 1997)
`
`(citing Silk v. Sandoval, 435 F.2d 1266, 1267-88 (1st Cir. 1971)).
`
`If the court merely wrongly decides a point of law, that is not
`‘inadvertence, surprise, or excusable neglect.’ Moreover, these
`words, in the context of [FRCP 60], seem addressed to some special
`situations justifying extraordinary relief. Plaintiff’s motion is
`based on the broad ground that the court made an erroneous ruling,
`not that the mistake was attributable to special circumstances. We
`would apply the same equitable conception to ‘mistake’ as seems
`implicit in the three accompanying grounds, under the principle of
`noscitur a sociis.
`
`Silk, 435 F.2d at 1267-8 (denying motion for reconsideration).
`
`Given the requirement of special circumstances, it is unsurprising that merely rehashing
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`old arguments that could or should have been made before a court’s decision on the merits is not
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`a sound basis for reconsideration. “As a general rule, ‘a motion for reconsideration is…normally
`
`not a promising vehicle for revisiting a party’s case and rearguing theories previously advanced
`
`and rejected.’” Kenyon v. Cedeno-Rivera, 47 F.4th 12, 28-29 (1st Cir. 2022) (citing Palmer, 465
`
`F.3d at 30); see also Shea, 56 F. Supp. 3d at 79 (in a motion for reconsideration, it is inappropriate
`
`for a movant to “repeat old arguments previously considered and rejected”) (citing Nat’l Metal
`
`Finishing Co., Inc. v. BarclaysAmerican/Commercial, Inc., 899 F.2d 119, 123 (1st Cir. 1990)).
`
`Nor can a motion for reconsideration “advance a new argument that could (and should) have been
`
`2
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`

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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 7 of 21
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`presented prior to the district court’s original ruling.” Shea, 56 F. Supp. 3d at 79 (citing Cochran
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`v. Quest Software, Inc., 328 F.3d 1, 11 (1st Cir. 2003)).
`
`III. ARGUMENT
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`Motions for reconsideration are exceptional remedies that are not routinely granted. Philips
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`fails to demonstrate any of the special circumstances that may give rise to reconsideration.
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`Philips alleges two grounds for reconsideration—(1) an alleged manifest error of law in
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`misapplying Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) in considering whether the
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`inventive concepts claimed by Philips are encompassed by the claims and (2) an alleged “clear
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`error” in determining that the ordered combination of elements in the claims do not provide an
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`inventive concept. (Dkt. 404 at 1.)1
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`Even if Philips is correct that the Court erred in either of these regards, they amount to, at
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`most, errors of reasoning that do not support reconsideration. Therefore, Philips’ arguments
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`should be ignored. However, even if Philips allegations of flawed reasoning by this Court are
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`considered, they are incorrect. The Court appropriately considered and applied controlling Federal
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`Circuit law in light of the inventive concepts alleged by Philips and the arguments and evidence
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`presented by the parties, and correctly determined that the ordered combination of elements in the
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`claims is not inventive. In particular, as further explained below and despite Philips’ claims to the
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`contrary:
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`●
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`the Court considered the inventive concepts alleged by Philips and its expert, Dr.
`Martin;
`
`
`1 The well-known Alice inquiry regarding § 101 patent eligibility proceeds in two steps—(1)
`whether the asserted claims are drawn to an abstract idea and (2) whether the asserted claims
`include an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
`Philips’ request for reconsideration only addresses the Court’s analysis of the step two inventive
`concept inquiry. (See generally Dkt. 404.)
`
`3
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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 8 of 21
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`●
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`●
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`the Court properly found that the first inventive concept alleged by Philips and Dr.
`Martin is not captured in the claims, and did not rely on whether the second alleged
`inventive concept is captured in the claims;
`
`the Court properly considered whether the ordered combination of elements
`provide any inventive concept in light of the evidence and arguments presented by
`the parties, and correctly determined that they do not; and
`
`● all of Philips arguments were raised or could have been raised at or before the
`summary judgment phase, and thus cannot support reconsideration.
`
`Thus, for all these reasons, as further explained below, Philips’ Motion should be denied.
`
`A.
`
`The Court Considered the Inventive Concepts Alleged by Philips and Its
`Expert, Dr. Martin
`
`On March 2, 2022, Fitbit moved for summary judgment of invalidity under 35 U.S.C. §
`
`101. (Dkt. 333; “Fitbit’s MSJ.”) With respect to the Alice step two inventive concept inquiry,
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`Fitbit addressed the two inventive concepts put forth by Philips and its technical expert, Dr. Martin,
`
`which Fitbit articulated as:
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`(1) performing computations utilizing a back-end server to remove
`location based restraints and
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`(2) downloading an application to monitor exercise.
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`(Dkt. 334 at 8 (citations omitted); see generally id. at 8-18). Fitbit’s articulation was entirely
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`consistent with Dr. Martin’s own articulation of the alleged inventive concepts. (See Dkt. 338-2
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`at 166 (Heading VIII.B: “Utilizing a Back-End Server for Application Operation Allowed for
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`Interactive Processing of Exercise-Related Data Without Location Based Restraints.”), 167
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`(Heading VIII.C: “Downloading an Application to a [Web-Enabled Wireless Device—i.e.,
`
`“WWD”] from the Back-End Server Improved Functionality of the WWD.”).)
`
`Given that these were the inventive concepts argued by Philips and Dr. Martin, the Court
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`followed controlling Federal Circuit precedent by asking two separate questions:
`
`(1) Are those alleged inventive concepts actually found in the claims? See, e.g., Am. Axle
`& Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285, 1293 (Fed. Cir. 2020) (unclaimed
`
`4
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`

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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 9 of 21
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`advantages over prior art are irrelevant to patent eligibility under Alice); Berkheimer v.
`HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (improvements in the specification can
`“create a factual dispute regarding whether the invention describes well-understood,
`routine, and conventional activities,” only when “they are captured in the claims”).
`
`(2) Are those concepts actually inventive? See, e.g., BSG Tech LLC v. Buyseasons, Inc.,
`899 F.3d 1281, 1290-1 (Fed. Cir. 2018) (“If a claim’s only ‘inventive concept’ is the
`application of an abstract idea using conventional and well-understood techniques, the
`claim has not been transformed into a patent-eligible application of an abstract idea.”)
`(citing Berkheimer, 881 F.3d at 1370 (holding claims lacked an inventive concept
`because they “amount to no more than performing the abstract idea…with conventional
`computer components”); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253,
`1262 (Fed. Cir. 2016) (holding a claim lacked an inventive concept because it “simply
`recites the use of generic features…as well as routine functions…to implement the
`underlying idea”)). (See generally Dkt. 401.)
`
`The Court correctly answered “No” to both questions.
`
`B.
`
`The Court Properly Found That The First Inventive Concept Alleged by
`Philips And Dr. Martin Is Not Captured In The Claims, And Did Not Rely
`On Whether The Second Alleged Inventive Concept Is Captured In The
`Claims
`
`First, Philips argues that the inventive concepts it identified are found in the claims, and
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`the Court erred in holding otherwise. This argument is unavailing of a motion for reconsideration
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`for two independent reasons—(1) it alleges an error of reasoning and was or could have been raised
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`prior to the Court’s summary judgment Order and (2) it is factually incorrect with respect to the
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`first inventive concept and did not affect the Court’s decision regarding whether the claimed
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`concepts are actually inventive.
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`Like the Court’s Order, Fitbit’s summary judgment briefing extensively detailed how the
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`alleged inventive concepts are not found in the claims. (Compare Dkt. 334 at 10-15 with Dkt. 401
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`at 18-20.) Philips’ opposition addressed those arguments. (See Dkt. 361 at 9 (response to SMF ¶
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`15), 15-18.) In an effort to avoid the high bar for justifying reconsideration, Philips now
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`disingenuously claims that “Philips had no opportunity to rebut such an interpretation of
`
`Berkheimer as Fitbit never cited to Berkheimer for the proposition that claims must recite the
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`5
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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 10 of 21
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`‘reasons why’ they are inventive.” (Dkt. 404 at 6, n. 7.) Irrespective of whether Fitbit cited
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`Berkheimer, Fitbit undisputedly argued that the alleged inventive concepts are not captured in the
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`claims and Philips responded. (See Dkt. 334 at 10-15; Dkt. 361 at 9 (response to SMF ¶ 15), 15-
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`18.)
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`Specifically, with regard to the first claimed inventive concept, Fitbit argued that the claims
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`do not eliminate location based restraints because they each encompass embodiments where the
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`user is tethered by a wired connection to immobile, stationary exercise machines such a treadmill.
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`(Dkt. 334 at 11-14.) At the summary judgment phase, Philips incorrectly argued that not all of the
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`asserted claims encompass such embodiments. (Dkt. 361 at 9 (response to SMF ¶ 15); see also,
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`Dkt. 374 at 9 (rebutting Philips’ incorrect response to SMF ¶ 15).)
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`Philips now argues that the claims eliminate location based restraints because the user is
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`not tethered to the back end server. (Dkt. 404 at 4, n.4.) But this new argument is too little too
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`late for a reconsideration motion; it could and should have been raised in Philips’ briefing on
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`Fitbit’s motion for summary judgment. See Shea, 5 F. Supp. 3d at 79 (a motion for reconsideration
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`cannot “advance a new argument that could (and should) have been presented prior to the district
`
`court’s original ruling.”) (citing Cochran, 328 F.3d at 11). The argument is also a red-herring.
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`Location based restraints are not eliminated if the user is constrained to a location by a wired
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`connection to an immobile piece of exercise equipment such as a treadmill, regardless of whether
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`the user is also tethered to a back-end server. Indeed, the applicant distinguished prior art during
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`prosecution by pointing to the alleged ability to take the claimed system “on a bike ride”:
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`Applicant has noted advantages of the use of a web-enabled wireless
`phone at paragraphs [0015]-[0022], including specific advantages
`with respect to exercise-related information.
` As a simple
`illustration, a person could not do with Brown’s device that which
`is intended by the claimed invention: for example, a cyclist could
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`6
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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 11 of 21
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`not take Brown’s device on a bike ride to monitor heart rate and
`miles traveled.
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`(Dkt. 365-4 at 12 of 28.) Philips cannot credibly assert that a user can take a treadmill connected
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`by a wire to their mobile phone “on a bike ride.”2
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`Further, with respect to the first claimed inventive concept, Fitbit argued and the Court
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`correctly found that the claims do not provide an enhanced user interface or increased computing
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`capacity or processing power—as Philips and Dr. Martin claimed. (See Dkt. 334 at 10-11; Dkt.
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`401 at 19.) Similar, with respect to the second alleged inventive concept, Fitbit argued that the
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`claims do not improve data capture, sharing, and analysis functions without the need for complex
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`connections or expensive additional components—as Philips and Dr. Martin claimed. (See Dkt.
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`334 at 16-17.) If Philips contended that these features were not part of the alleged inventive
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`concepts, as it now appears to argue (see Dkt. 404 at 5-6), then Philips had every opportunity to
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`say so before the Court’s summary judgment ruling in opposing Fitbit’s MSJ. Moreover, the Court
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`did not address or rely on this argument regarding the second claimed inventive concept as a basis
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`for granting summary judgment. (See generally Dkt. 401.)
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`Thus, reconsideration is inappropriate based on Philips’ argument that the Court
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`misconstrued the alleged inventive concepts and misapplied Berkheimer. However, even
`
`assuming that Philips is correct that the alleged inventive concepts are entirely within the scope of
`
`the claims, and assuming that Philips is permitted to make this argument despite the fact that it
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`could and should have done so in response to Fitbit’s motion for summary judgment, and assuming
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`that the Court misapplied Berkheimer, and assuming that Philips is correct that this alleged error
`
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`2 A user of the asserted claims is also tethered to their home Wi-Fi router and cannot take the
`claimed system “on a bike ride” based on Philips’ argument that home Wi-Fi is a “wireless
`connection” as that term is used in the asserted claims. (See, e.g., Dkt. 334 at 14.)
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`7
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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 12 of 21
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`of reasoning can properly support a motion for reconsideration, reconsideration is still
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`inappropriate.
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`In particular, whether or not the alleged inventive concepts are captured by the claims, they
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`still must actually be “inventive” in order to pass muster at Alice step two. Here, the Court
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`independently, correctly found that the claims are not inventive, because they merely use known,
`
`generic computer components combined in a conventional manner to perform known, generic
`
`techniques. (Dkt. 401 at 20-24). Such a conventional arrangement and use of conventional
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`components, even when fully captured by the asserted claims, cannot give rise to an inventive
`
`concept. See, e.g., Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir. 2019) (“An
`
`inventive concept reflects something more than the application of an abstract idea using ‘well-
`
`understood, routine, and conventional activities previously known to the industry.’”) (quoting
`
`Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018)); BSG
`
`Tech, 899 F.3d at 1290-1 (“Claim limitations that recite conventional, routine and well understood
`
`applications in the art are insufficient to supply an inventive concept. …If a claim’s only
`
`‘inventive concept’ is the application of an abstract idea using conventional and well-understood
`
`techniques, the claim has not been transformed into a patent-eligible application of an abstract
`
`idea.”) (citing Berkheimer, 881 F.3d at 1370 (holding claims lacked an inventive concept because
`
`they “amount to no more than performing the abstract idea…with conventional computer
`
`components”); Affinity Labs, 838 F.3d at 1262 (holding a claim lacked an inventive concept
`
`because it “simply recites the use of generic features…as well as routine functions…to implement
`
`the underlying idea”)).
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`Thus, even if the Court did misapply Berkheimer in finding that the alleged inventive
`
`concepts are not captured in the claims—and it did not—that would be irrelevant here, because the
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`8
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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 13 of 21
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`Court independently found that the claims do not provide an inventive concept, as required under
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`Alice for subject matter eligibility. As described below, that independent ground on which the
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`Court ruled that the asserted claims are not patent eligible under § 101 should not be disturbed
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`based on Philips’ mischaracterizations and rehashed arguments disagreeing with the ruling.
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`C.
`
`The Court Properly Considered Whether the Ordered Combination Of
`Elements Provide Any Inventive Concept In Light Of The Evidence
`Presented By The Parties And Determined They Do Not
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`Incredibly, despite the Court’s extensive discussion of whether the ordered combination of
`
`elements in the asserted claims provides an inventive concept, Philips brazenly claims that “the
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`Court proceeded to look at each limitation of Claim 1 individually, in isolation, rather than as an
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`ordered combination….” (Dkt. 404 at 13 (citing Dkt. 401 at 20-24).) Philips similarly, falsely
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`claims that “Fitbit failed to present any evidence of conventionality with regard to the ordered
`
`combination of elements.” (Dkt. 404 at 13; see also, e.g., Dkt. 334 at 8-11, 15-18 (Fitbit’s
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`memorandum in support of its summary judgment motion, discussing the conventional nature of
`
`the ordered combination of elements)); Dkt. 374 at 2-5 (Fitbit’s reply in support of its summary
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`judgment motion, discussing the conventional nature of the ordered combination of elements).)
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`This argument fails to support reconsideration for the same two independent reasons—(1) it alleges
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`an error of reasoning and was or could have been raised prior to the Court’s summary judgment
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`Order and (2) it is factually incorrect.
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`First, Philips could have made, and in fact did make, these exact same arguments regarding
`
`whether the ordered combination of elements provides an inventive concept in opposition to
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`Fitbit’s MSJ. (See, e.g., Dkt. 361 at 10-11 (arguing that “Fitbit erroneously ignores whether the
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`ordered combination of elements of
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`the asserted claims are well-understood and
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`conventional….”).) Indeed, Philips admits as much in its request for reconsideration. (See e.g.,
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`Dkt. 404 at 19 (“Thus, as explained in Philips’s original briefing, as part of the Alice/Mayo Step 2
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`9
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`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 14 of 21
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`analysis, courts must “consider the elements of each claim both individually and as an ordered
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`combination.”) (citing Dkt. 361 at 10); see also, id. at 14, 17, 18, n.15, n.16.) These recycled
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`arguments cannot support a request for reconsideration. See, e.g., Shea, 56 F. Supp. 3d at 79.
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`Second, and more fundamentally, these arguments are simply false, and cannot support
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`reconsideration for that reason as well. In particular, in describing the legal standards for the
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`inventive concept inquiry, the Court noted that inquiry “requires the court to ‘consider the elements
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`of each claim both individually and as an ordered combination.’” (Dkt. 401 at 11 (citation
`
`omitted; emphasis added).) Then, in comparing representative claim 1 to the analyzed claims in
`
`the Electric Power case, the Court spent three pages discussing whether the ordered combination
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`of elements is inventive. (Dkt. 401 at 14-17 (“…Claim 1 merely call[s] for performance of the
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`claimed information collection, analysis, and display functions on a set of generic computer
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`components and display devices.”) (quotations and citation omitted).) Finally, the Court spent a
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`further four pages analyzing whether the ordered combination of elements is inventive in the
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`context of Philips’ citation to Bascom. (Dkt. 401 at 20-24.) There, the Court repeatedly
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`acknowledged that its analysis pertained to the ordered combination of elements:
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`Even when considering the claims in an ordered combination, they
`fail to identify a specific application[ ] or improvement[ ] to
`technology. Claim 1 merely recites the abstract idea of collecting,
`analyzing, and displaying exercise-related information on a set of
`generic computer components. It does not require an arguably
`inventive distribution of functionality within a network, thus
`distinguishing the claims at issue from those in Bascom.
`
`(Dkt. 401 at 22 (quotations and citations omitted; emphasis added).)
`
`Again, the Court is mindful that conventional, generic components
`can sometimes supply an inventive concept when they are
`combined in a nonconventional manner. However, that is not the
`case here. Fitbit has demonstrated that the combination of
`components, as set forth in Claim 1, does not disclose any inventive
`concept.
`
`10
`
`

`

`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 15 of 21
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`
`
`(Dkt. 401 at 23-24 (quotations and citations omitted; emphasis added).)
`
`
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`Therefore, Philips is factually incorrect in its rehashed claim that “the Court proceeded to
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`look at each limitation of Claim 1 individually, in isolation, rather than as an ordered
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`combination….” (Dkt. 404 at 13 (citing Dkt. 401 at 20-24).) Consequently, reconsideration on
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`this basis is also inappropriate.
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`Relatedly, Philips argues that testimony from Dr. Quy (the named inventor) and Dr. Martin
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`creates a triable issue of fact precluding summary judgment. But these arguments suffer from the
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`same two independent fatal flaws as Philips’ other arguments—(1) they allege an error of
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`reasoning and were or could have been raised prior to the Court’s summary judgment order and
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`(2) they are factually incorrect.
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`With respect to Dr. Quy’s testimony, Philips claims that “Fitbit’s sole purported extrinsic
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`evidence of ‘conventionality’, and the only extrinsic evidence relied on in the Opinion, consists of
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`deposition testimony of Dr. Quy, the inventor of the ’377 patent, regarding whether he ‘invented’
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`any of the individual elements of the asserted claims.” (Dkt. 404 at 14 (citing Dkt. 334 at 5-6).)
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`First, the Court properly considered Dr. Quy’s admissions regarding what he did not invent.
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`“The Court may properly consider inventors’ admissions on what they did not invent in evaluating
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`whether elements of the asserted claims involved nothing more than that which is well-understood,
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`routine, conventional activity.” Innovation Scis., LLC v. Amazon.com, Inc., 2021 WL 2075677, at
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`*7 (E.D. Tex. May 24, 2021) (quoting Mayo, 566 U.S. at 73, 79, 82). This is exactly how the
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`Court evaluated Dr. Quy’s testimony. (Dkt. 401 at 21-23.)
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`Second, Philips is factually incorrect that Fitbit presented no other evidence of
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`conventionality. (See, e.g., Dkt. 334 at 8-11, 15-18 (Fitbit’s memorandum in support of its
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`summary judgment motion, discussing the conventional nature of the ordered combination of
`
`11
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`

`

`Case 1:19-cv-11586-FDS Document 406 Filed 11/04/22 Page 16 of 21
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`
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`elements); Dkt. 374 at 2-5 (Fitbit’s reply in support of its summary judgment motion, discussing
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`the conventional nature of the ordered combination of elements).)
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`Philips then claims, with respect to the ordered combination of elements, that:
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`Dr. Quy described use of a backend server and the mobility (i.e.
`removing location based-restraints) as key aspects of his invention:
`
`“[O]ne of the key aspects of my patent was, going
`back to the device of the ’70s, was mobility.
`Allowing patients to be or some things to be out in
`the field, out of the hospital, out of the home,
`wandering around in the everyday world. So that
`was -- that has always been the key component.”
`
`Dkt. 338-13, Roger Quy 9/1/2020 Deposition Transcript at 46:23-
`47:4
`
`So a key part of my invention back in the late 90s or
`mid 90s was figuring out what could be done within
`the constraints of what was then a nascent web-
`enabled wireless phone. And the solution to that was
`to push a lot of the processing on the backend server.
`
`Dkt 366-1, Roger Quy 9/2/2020 Deposition Transcript at 147:2-8
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`(Dkt. 404 at 17-18.) But Fitbit’s memorandum in support of its MSJ also addressed these points,
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`explaining that, based on these same quotes used by Philips, “Dr. Quy admitted that the mobility
`
`as