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`Case 1:19-cv-11586-IT Document 101 Filed 09/02/20 Page 1 of 6
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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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`v.
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`FITBIT, INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-IT
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`FITBIT STATEMENT IN ADVANCE OF STATUS CONFERENCE
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`Fitbit respectfully submit this Statement in advance of the September 9, 2020 Scheduling
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`Conference set by the Court’s March 25, 2020 order. (D.I. 54.) Fitbit provides this report
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`pursuant to this Court’s scheduling order (D.I. 54) and Local Rule 16.6 (c)(3)(D) which requires
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`a joint statement a week before the status conference set for September 9, 2020. Fitbit and
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`Philips have meet and conferred regarding the claim construction issues, Fitbit’s Renewed
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`Motion to Dismiss under Section 101, and the impact of the Garmin claim construction ruling on
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`this case. When the deadline for submission of a joint report was imminent and Philips did not
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`initiate preparation of a Joint Statement (as Plaintiff’s typically do), Fitbit provided this
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`document to Philips today, as a framework for Philips’ input. When Fitbit pressed Philips for its
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`insert to meet the filing deadline, Philips responded that it did not think such a joint report was
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`necessary and in any event could not provide input today. Thus this report is submitted on behalf
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`of Fitbit alone. Of course, if your Honor desires a joint submission after the deadline set forth in
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`the Local Rules, Fitbit will work with Philips to provide one.
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`Case 1:19-cv-11586-IT Document 101 Filed 09/02/20 Page 2 of 6
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`A. Pending Motions/Issues:
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`There are three open motions/issues before the Court: (1) Fitbit’s Renewed Motion to
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`Dismiss under Section 101 (D.I. 33); (2) claim construction (D.I. 72–73, 76–78); and (3) Fitbit’s
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`Motion for Partial Summary Judgment of Invalidity of the ’007 patent under 35 U.S.C. § 112
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`(currently stayed, but will be mooted by a claim construction order determining the “means for
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`computing” is indefinite) (D.I. 43).
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`With respect to claim construction, Fitbit filed a Motion to Submit Supplemental
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`Authority (D.I. 98) to provide the Court with the claim construction order (“Order”) entered in a
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`related case on August 28, 2020—Philips North Am. LLC v. Garmin Int’l, Inc., No. 2:19-CV-
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`06301-AB (C.D. Cal.), that construes a number of overlapping terms from the same patents and
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`claims at issue in this case.
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`Judge Birotte’s Markman order in Philips’ litigation against Garmin in the Central
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`District of California addresses the following claim terms that are also disputed by the parties in
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`this case:
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`’007 patent
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`Term:
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`“means for computing”
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`“means for suspending and
`resuming operation of said
`means for computing when a
`speed of the athlete falls below
`a predetermined threshold”
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`
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`Judge Birotte’s
`construction in Philips’
`C.D. Cal. suit:
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`Fitbit proposed
`construction
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`Indefinite under 35 U.S.C.
`§ 112
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`Indefinite under 35 U.S.C.
`§ 112
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`Moot, based on
`determination that “means
`for computing” is indefinite
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`Indefinite under 35 U.S.C.
`§ 112
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`- 2 -
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`Case 1:19-cv-11586-IT Document 101 Filed 09/02/20 Page 3 of 6
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`’233 patent
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`Term:
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`“first personal device”
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`“wireless communication”
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`“governing information
`transmitted between the first
`personal device and the second
`device”
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`Judge Birotte’s
`construction Philips’ C.D.
`Cal. case:
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`Fitbit’s proposed
`construction
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`first personal medical
`device
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`first personal medical
`device
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` No Construction necessary
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`No Construction necessary
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`“rejects plaintiff’s [Philips’]
`position and declines to
`construe the term ‘wireless
`communication’ at this
`time”
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`“declines to construe the
`term ‘governing information
`transmitted between the first
`personal device and the
`second personal device’”
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`In addressing these outstanding motions/issues, Fitbit proposes that the Court:
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`(1) Issue its claim construction opinion first, given that briefing, claim construction
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`discovery, and a hearing on currently disputed terms has occurred;
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`(2) After issuing its claim construction opinion, resolve Fitbit’s Rule 12 motion, applying
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`the Court’s constructions of any disputed terms. Fitbit also proposes that the Court confirm that
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`resolution of Fitbit’s motion does not change even under any constructions proposed by Philips
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`that were not adopted as the Court’s constructions for this case.
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`Fitbit believes that favorable resolution of its Rule 12 motion is proper at this stage, as
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`explained in its papers and during the hearing on its motion. Fitbit also believes that its proposal
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`could increase the likelihood of resolution of the parties’ disputes by the Federal Circuit with
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`respect to claim construction.
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`- 3 -
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`Case 1:19-cv-11586-IT Document 101 Filed 09/02/20 Page 4 of 6
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`B. Changes to Schedule:
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`Fitbit propose no changes to the existing schedule. Given the impact that Court’s ruling on
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`the claim construction and Motion to Dismiss may have on the case, Fitbit proposes that the
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`Court schedule a follow-up status conference 14 days after the issuance of the claim construction
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`order or Motion to Dismiss, whichever comes first.
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`C. Mediation:
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`The Parties will have engaged in two mediation sessions on September 2 and 3, 2020, in an
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`effort to seek resolution of the ITC complaint that Philips filed against Fitbit, and expect to
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`discuss potential resolution of this matter as well during the course of the mediation.
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`D. Anticipated Motions:
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`At the moment, Fitbit does not currently anticipate filing any additional motions. Following
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`resolution of Fitbit’s Rule 12 motion, Fitbit may file a motion to stay this litigation with respect
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`to at least the ’233 and/or ’377 patents, if they have not been found invalid as patent-ineligible
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`and the Patent Trial and Appeal Board institutes petitions for inter partes review filed by Fitbit
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`on all asserted claims of those patents. Fitbit expects institution decisions on its petitions, which
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`were filed on April 8, 2020 (’233 patent) and April 15, 2020 (’377 patent), by late October/early
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`November 2020.
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`Case 1:19-cv-11586-IT Document 101 Filed 09/02/20 Page 5 of 6
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`Dated: September 2, 2020
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`FITBIT, INC.
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`By Its Attorneys,
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`/s/ Yar R. Chaikovsky
`Yar R. Chaikovsky
`yarchaikovsky@paulhastings.com
`Dave Beckwith
`davidbeckwith@paulhastings.com
`David Okano
`davidokano@paulhastings.com
`Radhesh Devendran
`radheshdevendran@paulhastings.com
`Berkeley Fife
`berkeleyfife@paulhastings.com
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`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone: 1(650) 320-1800
`Facsimile:
`1(650) 320-1900
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`Jennifer B. Furey (BBO # 634174)
`Andrew T. O’Connor (BBO # 664811)
`GOULSTON & STORRS PC
`400 Atlantic Avenue
`Boston, MA 02110
`Telephone: (617) 482-1776
`Facsimile: (617) 574-4112
`E-mail: jfurey@goulstonstorrs.com
`aoconnor@goulstonstorrs.com
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`Case 1:19-cv-11586-IT Document 101 Filed 09/02/20 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I certify that a true copy of the above document was served on the attorney of
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`record for each party via the Court’s CM/ECF system, which will send notification of this filing
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`(NEF) to all registered participants, and paper copies will be sent to those indicated as
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`nonregistered participants.
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`Dated: September 2, 2020
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`By: /s/ Yar R. Chaikovsky
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`Yar R. Chaikovsky (Pro Hac Vice)
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`6
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