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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`Plaintiff,
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`Defendant.
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`v.
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`FITBIT, INC.,
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`Civil Action No. 1:19-cv-11586-IT
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`JURY TRIAL DEMANDED
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`PLAINTIFF PHILIPS NORTH AMERICA LLC’S UNOPPOSED MOTION FOR LEAVE
`TO FILE SECOND AMENDED COMPLAINT TO WITHDRAW COUNT IV OF THE
`PATENT INFRINGEMENT
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`Plaintiff Philips North American LLC (“Philips”) respectfully moves the Court under Fed.
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`R. Civ. P 15(a)(2) and 16(b)(4) for leave to amend its First Amended Complaint to withdraw all
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`allegations of infringement of U.S. Patent No. 6,976,958 (“the ’958 patent”). Attached as Exhibit
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`A is a copy of Philips’s Proposed Second Amended Complaint. The only change between Philips’s
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`First Amended Complaint and Philips’s Proposed Second Amended Complaint is that all
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`references to the ’958 Patent have been removed. On August 10, 2020 Philips filed a disclaimer
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`of all the asserted claims of the ’958 patent with the U.S. Patent and Trademark Office. (See
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`Exhibit B.) As a result of this disclaimer, those claims can therefore no longer be asserted against
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`Fitbit or any other parties. Accordingly, Philips good cause exists to allow the requested
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`amendment.
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`Philips has conferred with counsel for Fitbit, Inc. (“Fitbit”) and Fitbit has indicated that
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`while it does not oppose the requested amendment, Fitbit reserves all rights to seek an award of
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`attorney fees and costs incurred in responding to Philips’s claims based on the ’958 patent. Fitbit
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`4830-0643-3480.3
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`Case 1:19-cv-11586-IT Document 100 Filed 09/02/20 Page 2 of 4
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`states that it may also rely on the circumstances surrounding Philips’s assertion, and subsequent
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`dismissal of the ’958 patent, as evidence that this case is exceptional under 35 U.S.C § 285. Philips
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`disagrees that the assertion of the ’958 Patent has any bearing on any request by Fitbit for
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`Attorneys’ Fees and Costs, or to any request under 35 U.S.C. 285, however, will address the same
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`if an when Fitbit brings those issues to the Court.
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`Philips respectfully requests that the Court grant this Motion.
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`4830-0643-3480.3
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`2
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`Case 1:19-cv-11586-IT Document 100 Filed 09/02/20 Page 3 of 4
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`Dated: September 2, 2020
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`Respectfully Submitted,
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` /s/Ruben J. Rodrigues
`Lucas I. Silva (BBO 673,935)
`Ruben J. Rodrigues (BBO 676,573)
`John Custer (BBO 705,258)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Suite 2500
`Boston, MA 02199-7610
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`lsilva@foley.com
`rrodrigues@foley.com
`jcuster@foley.com
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`
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`Eley O. Thompson (pro hac vice)
`FOLEY & LARDNER LLP
`321 N. Clark Street
`Suite 2800
`Chicago, IL 60654-5313
`Phone: (312) 832-4359
`Fax: (312) 832-4700
`ethompson@foley.com
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`Counsel for Plaintiff
` Philips North America LLC
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`4830-0643-3480.3
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`3
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`Case 1:19-cv-11586-IT Document 100 Filed 09/02/20 Page 4 of 4
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`LOCAL RULE 7.1 CERTIFICATION
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`Pursuant to Local Rule 7.1(a)(2), the undersigned conferred with counsel for
`Fitbit, Inc. and Fitbit, Inc. does not oppose this motion.
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`By: /s/Ruben J. Rodrigues
` Ruben J. Rodrigues
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above
`document was served on September 2, 2020 on counsel for Defendant via electronic mail.
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`4830-0643-3480.3
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`By: /s/Ruben J. Rodrigues
` Ruben J. Rodrigues
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`4
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