Case 1:19-cv-11586-IT Document 103 Filed 09/02/20 Page 1 of 7
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`FITBIT, INC.
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`v.
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`Plaintiff,
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`Defendant.
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`C.A. No. 1:19-cv-11586
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`JURY TRIAL DEMANDED
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`PHILIPS’S STATEMENT IN ADVANCE OF STATUS CONFERENCE
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`Philips respectfully submits this Statement in advance of the September 9, 2020
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`Scheduling Conference and apologizes for the delay in submitting this statement to the evening
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`of the day it was due. Philips inadvertently failed to docket the deadline per L.R. 16.6(c)(3) and
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`Dkt. 54, and did not appreciate that the deadline for filing a joint statement was today when
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`counsel for Fitbit provided a draft of a Joint Statement that they desired to file at 2:18PM, while
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`all of Philips’s attorneys in this matter were tied up incase depositions, a mediation between the
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`parties and other matters. Counsel for Philips explained to Counsel for Fitbit that it did not
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`believe there to be a deadline for filing a Joint Statement. Rather than explain its understanding
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`of the deadline to Philips, Fitbit filed its unilateral statement. Philips would propose that the
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`parties withdraw their competing statements, and provide the Court with a Joint Statement by
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`6:00PM on Friday Sept. 4th, so that the parties can have time to meaningfully confer on the
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`statement and provide a more complete and useful submission to the Court. In the mean time,
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`Philips provides the following as it’s statement in advance of the Status Conference:
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`Case 1:19-cv-11586-IT Document 103 Filed 09/02/20 Page 2 of 7
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`A. Pending Motions:
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`There are no pending motions beyond those identified in Fitbit’s statement. However,
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`Philips notes that earlier this evening it filed a response to Fitbit’s Motion for Leave to Submit
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`Supplemental Authority with Regard to Claim Construciton (Dkt. 102), which identified the lack
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`of any preclusive effect of an interlocutory claim construction order in another case.
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`With regards to Fitbit’s proposal that the Court address claim construction prior to a
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`decision on Fitbit’s Motion to Dismiss, Philips states as follows:
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`After the hearing on Fitbit’s Rule 12(b)(6) motion, the Court entered an order, Dkt. 92,
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`directing that the parties “file a joint proposal of how to proceed if agreed or notifying the court
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`they cannot reach an agreement.” (emphasis added). The Court explained during the hearing
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`that: “If there's a disagreement about it, just leave it to me. I don't -- I don't need you to argue it.
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`But if there's a joint proposal, let me know.” 8-20-2020 Hearing Transcript at 59, emphasis
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`added. Thus, Philips believes that the parties should not further be disputing how the court
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`should proceed on that issue.
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`However, since Fitbit has made a unilateral filing articulating its position, Philips
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`believes that the court should address Fitbit’s motion to dismiss in the posture that it was filed,
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`which is as a Rule 12(b)(6) motion where pleadings in the complaint are taken as true and all
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`inferences are drawn in favor of Philips. See CardioNet, LLC v. InfoBionic Inc., 955 F.3d 1358,
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`1370 (Fed. Cir. 2020)(“nothing in the record supports the district court’s fact finding (and
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`InfoBionic’s assertion) that doctors long used the claimed diagnostic processes”); Aatrix
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`Software v. Green Shades, 882 F.3d 1121, 1128 (Fed. Cir. 2016)(“Whether the claim elements or
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`the claimed combination are well-understood, routine, conventional is a question of fact”);
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`Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51 (Fed. Cir.
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`Case 1:19-cv-11586-IT Document 103 Filed 09/02/20 Page 3 of 7
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`2016)(“construed in favor of the nonmovant — BASCOM — the claims are ‘more than a
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`drafting effort designed to monopolize the [abstract idea].’ Instead, the claims may be read to
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`‘improve[ ] an existing technological process.’). Philips believes there is benefit in having an
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`unambiguous record as to what was and was not decided at the Rule 12(b)(6) stage to avoid
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`reversible error, and points out that if the motion were denied, Fitbit would be free to raise the
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`issue (with the benefit of a more developed record) at the summary judgment stage in the
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`unlikely event that Fitbit can demonstrate the absence of genuine issues of material fact.
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`B. Discovery Issues
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`a. Fitbit’s Failure to Produce Technical Documents
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`After the Scheduling Conference held on March 25, 2020, the Court Ordered that Fitbit
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`make its intial disclosure production of technical documents under L.R. 16.6(d)(4) by April 14,
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`2020 (See Dkt. 53 and 54). However, Fitbit chose not to produce any technical documetns
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`demonstrating the functionality of the accused products. Since Fitbit began making other
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`productions over the summer, Philips understood that production of technical documents, while
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`inexcusably delayed, would eventually be provided, and was planning to rely on a production of
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`technical documents before engaging in a detailed review of source code. After all, it is rare that
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`a defendant in a patent litigation would completely refuse to produce technical documents on the
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`accused products. Fitbit has agreed to make its source code available, and that review is
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`commencing without first having the benefit of other technical documents, but that provides no
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`basis for Fitbit’s continued refusal to produce other technical documents concerning
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`infringement of the accused products. On August 24th, Philips demanded the production of
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`technical documents and requested a meet and confer if Fitbit refused. Fitbit has not responded
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`with regards to Philips’s request to meet and confer, and while Fitbit has made a number of
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`Case 1:19-cv-11586-IT Document 103 Filed 09/02/20 Page 4 of 7
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`supplemental document productions, none of these contained technical documents of the sort
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`contemplated by L.R. 16.6(d)(4). At the present stage, Fitbit continues to choose not to produce
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`technical documents pertaining to infringement of the patents by its products.
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`b. Fitbit’s Apparent Misrepresentations with Regard to Knowledge of the ’377
`Patent and Potential Need for Additional Discovery
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`In response to Philips’s Interrogatory No. 2, which inquired as to Fitbit’s first knowledge
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`of the asserted patents, Fitbit responded by stating that it would produce documents under Rule
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`33(d), but did not identify any specific documents. This past week, in preparation for, and
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`during, the deposition of Dr. Roger Quy, who is an inventor on the ’377 Patent, Philips learned
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`that Fitbit reviewed Mr. Quy’s patent portfolio (which included the ’377 Patent) in the 2013-
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`2015 time period. Yet, Fitbit has not produced the contemporaneous materials documenting this
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`knowledge and its evaluation of the patents and its infringement, nor has Fitbit supplemented its
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`interrogatory response. As discussed further below, an extension of fact discovery may be
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`warranted so that Philips can properly determine the extent of Fitbit’s knowledge of the ’377
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`Patent and when it actually first became aware of it.
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`C. Changes to Schedule:
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`Philips suggests that a modest extension to the fact discovery period of perhaps 45 days is
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`warranted in view of Fitbit’s refusal to produce technical documents, the recently uncovered
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`facts that Fitbit was aware of the ’377 patent much earlier than it let on, as well as complications
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`associated with reviewing the source code materials that Fitbit has agreed to make available via
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`remote means.1 This additional time would allow Philips to properly review and assess Fitbit’s
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`1 The laptop provided for review needed certain software updates, and then there were issues with the availability of
`passwords as well with regards coordinating the schedule of Philips’s expert. Philips has appreciated that Fitbit has
`worked to address these issues as they arise, but they are issues that reflect the complications associated with a
`secure remote source code review.
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`technical documents prior to expert discovery, for Philips to investigate (and for Fitbit to
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`produce) information related to Fitbit’s early knowledge of the ’377 Patent, and generally
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`complete discovery in a timely fasion. Additionally, while Fitbit has served notices of deposition
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`on six Fitbit witnesses, as well as a notice under 30(b)(6), Fitbit has yet to provide any dates for
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`any depositions. It seems impractical that the case can proceed without some form of extension
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`to fact discovery.
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`D. Mediation:
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`The Parties engaged in a mediation session on September 2, 2020 but not resolution of this
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`dispute was reached.
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`E. Anticipated Motions:
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`To the extent the discovery issues identified above are not resolved prior to, or at, the status
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`conference, Philips intends to file a formal motion to compel the discovery that Fitbit has refused
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`to produce.
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`Case 1:19-cv-11586-IT Document 103 Filed 09/02/20 Page 6 of 7
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`Dated: September 2, 2020
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`Respectfully Submitted,
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` /s/ Eley O. Thompson
`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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`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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`Case 1:19-cv-11586-IT Document 103 Filed 09/02/20 Page 7 of 7
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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
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`served on September 2, 2020 on counsel for Defendant via electronic mail.
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`By: /s/Ruben J. Rodrigues
` Ruben J. Rodrigues
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