Case 1:19-cv-11586-IT Document 129 Filed 01/04/21 Page 1 of 5
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`PHILIPS NORTH AMERICA LLC,
`
`Plaintiff,
`
`Defendant.
`
`v.
`
`FITBIT, INC.,
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 1:19-cv-11586-IT
`
`JURY TRIAL DEMANDED
`
`RESPONSE TO FITBIT’S MOTION FOR LEAVE TO SUBMIT SUPPLEMENTAL
`AUTHORITY RELATING TO CLAIM CONSTRUCTION (DKT. 128)
`
`Because of the reversible error in the California claim construction as to the ‘007 patent,
`
`Philips North America, LLC (“Philips”) asked the California Court to convert its interlocutory
`
`order to a final judgment under Rule 54 thereby permitting the Federal Circuit to review and correct
`
`the error. The Federal Circuit has cautioned time and again against modifying the functional
`
`language in a means-plus-function elements, especially to narrow broad functional statements,
`
`because such modifications improperly force the claim to be broader than the statutory scope of
`
`the claim which narrows it to supporting structure; finding it reversible error. (See discussion in
`
`Philips’ brief at 3-5, C.D. Cal. Dkt. 110, attached as Exhibit 1.)1 This Court earlier received the
`
`California claim construction order noting that “the court understands Defendant to have
`
`proffered the interlocutory opinion for any persuasive value it may have and not for any
`
`preclusive effect.” (See Dkt. 105, emphasis added.) The claim construction order has not changed
`
`
`1 This court should also have Philips’ brief on the Rule 54(b) motion as it explains the reasons for seeking to convert
`the interlocutory order into a final judgment for immediate appeal.
`
`
`
`

`

`Case 1:19-cv-11586-IT Document 129 Filed 01/04/21 Page 2 of 5
`
`
`
`since then—it is still interlocutory. That the California court declined to convert the claim
`
`construction to a final judgement merely highlights that it can be reviewed as an interlocutory
`
`order, and that this court need not follow the same error in claim construction found in the
`
`California court’s order.
`
`The California court’s Rule 54 analysis focused on whether there was just reason for
`
`delaying entry of final judgment as to the ’007 Patent in view of the similarity of the products at
`
`issue—concluding there was reason to delay. Judge Birotte’s characterization of the claim
`
`construction order in California as “a final judgment that can be certified for a Rule 54(b) appeal”
`
`does not change the fact that the Court elected not to enter final judgment at this stage leaving the
`
`order interlocutory and maintaining jurisdiction with the district court including for any further
`
`interlocutory review. To the extent Fitbit intends to suggest that the California court’s
`
`determinations as to the ’007 Patent have preclusive effect in this case, Fitbit invites error. The
`
`Federal Circuit applies the law of the regional circuit in determining when issue preclusion applies.
`
`See Soverain Software LLC v. Victoria’s Secret Direct Brand Management, LLC, 778 F.3d 1311
`
`(Fed. Cir. 2015). In the First Circuit, issue preclusion only applies where “(1) the issue sought to
`
`be precluded in the later action is the same as that involved in the earlier action; (2) the issue was
`
`actually litigated; (3) the issue was determined by a valid and binding final judgment; and (4)
`
`the determination of the issue was essential to the judgment.” See Rodriguez-Garcia v. Miranda-
`
`Marin, 610 F.3d 756, 770 (1st Cir. 2010) (quoting Ramalto Bros. Printing, Inc. v. El Dia, Inc., 490
`
`F.3d 86, 90 (1st Cir. 2007)).
`
`The California Claim Construction order is not a “binding final judgment” with respect to
`
`the ’007 Patent. When assessing the “finality” of a decision for the purposes of applying issue
`
`preclusion, the First Circuit has applied the same standard as applied for the purposes of
`
`2
`
`

`

`Case 1:19-cv-11586-IT Document 129 Filed 01/04/21 Page 3 of 5
`
`
`
`appealability and claim preclusion purposes—namely—whether the judgment or order resolves all
`
`claims is appealable. See Lopez & Medina Corp. v. March USA, Inc., No. 05-1595, 2009 WL
`
`8633205, *7 (1st Cir. Sept. 22, 2009) (citing AVX Corp. v. Cabot Corp., 424 F.3d 28 (1st Cir.
`
`2005)). By the virtue of the Rule 54(b) decision, the invalidity determination in the Central District
`
`of California is definitively not final and does not preclude this court from making its own decision
`
`avoiding the reversible error of the California court.
`
`To the extent Fitbit’s submission implies that the California court somehow reaffirmed its
`
`claim construction ruling on some new grounds, this is also incorrect. Indeed, Philips presented
`
`compelling arguments in its briefing on the motion as to why the claim construction order should
`
`be overturned on appeal (Ex.1, pp. 3-5), and the Court did not address these at all in its ruling.
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` \
`
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-IT Document 129 Filed 01/04/21 Page 4 of 5
`
`
`
`Dated: January 4, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
` /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
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`Counsel for Plaintiff
` Philips North America LLC
`
`4
`
`

`

`Case 1:19-cv-11586-IT Document 129 Filed 01/04/21 Page 5 of 5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the above document was
`
`served on January 4, 2021 on counsel for Defendant via electronic mail.
`
`
`
`
`
`
`
`
`
`By: /s/ Eley O Thompson
` Eley O. Thompson
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`