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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’S MOTION FOR LEAVE TO SUBMIT SUPPLEMENTAL AUTHORITY ON
`FITBIT’S RULE 12(b)(6) MOTION TO DISMISS UNDER 35 U.S.C. § 101
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`On December 10, 2019, Defendant Fitbit, Inc. (“Fitbit”) filed a renewed Rule 12(b)(6)
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`motion to dismiss Plaintiff Philips North Am. LLC’s (“Philips”) First Amended Complaint Under
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`35 U.S.C. § 101. (Dkt. 33, 34).1 This Court held a hearing on Fitbit’s motion on August 20, 2020.
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`On December 29, 2020, the Federal Circuit issued Simio LLC v. Flexsim Software Prods.
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`Inc., No. 2020-1171, -- F.3d --, 2020 WL 7703014 (Fed. Cir. 2020). (attached as Ex. A). In Simio,
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`the Federal Circuit affirmed two district court rulings: (1) a grant of a Rule 12(b)(6) motion to
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`dismiss under 35 U.S.C. § 101, and (2) a denial of a motion for leave to amend the complaint to
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`add new factual allegations to support patent-eligibility of the claims. Fitbit now moves for leave
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`to submit this precedential opinion as supplemental authority to its Rule 12(b)(6) motion. Good
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`cause exists for at least the following reasons:
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`In its de novo review of the District Court’s grant of the Rule 12(b)(6) motion—while
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`accepting “all well-pled allegations as true” and viewing those allegations “in the light
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`most favorable to the nonmoving party”—the Federal Circuit nevertheless focused its
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`1 Because Philips’ disclaimer of the asserted claims of U.S. Patent No. 6,976,958, Fitbit’s pending
`Rule 12(b)(6) motion (Dkt. 33, 34) is directed to the second amended complaint (Dkt. 112).
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`Case 1:19-cv-11586-IT Document 130 Filed 01/15/21 Page 2 of 5
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`patent eligibility analysis at Alice step one on “what the patent asserts to be the focus of
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`the claimed advance over the prior art,” not the allegations in the complaint. Simio, 2020
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`WL 7703014, at *3–4 (emphasis added).
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` For Alice step two, the Federal Circuit rejected the argument that a proposed amended
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`complaint’s “new allegations were sufficient to preclude dismissal for ineligibility,”
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`affirming the District Court’s “futility-based denial” of a motion for leave to amend. Id., at
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`*8. The amended complaint spanned more than 100 paragraphs focused on a single patent,
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`including an “illustrative” allegation that the Federal Circuit reproduced in its entirety:
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`[T]he claimed executable process improves the functioning and operations
`of the computer, itself, as the creation and modification of a simulation
`objects, and the addition of new behaviors to object instances, can be done
`more efficiently and without the need for software programming. In
`addition, the claimed system requires less programming in operation and
`results in faster processing speed. . . .
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`Id. at *8–9 (excerpted). First, the Federal Circuit reiterated that conclusory allegations must
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`be “disregard[ed].” Id. at *9. Then, in instructing why “illustrative” allegations like the
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`above can be disregarded and do not prevent resolution of the § 101 inquiry as a matter of
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`law, the Federal Circuit explained: “[a] statement that a [claimed] feature ‘improves the
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`functioning and operations of the computer’ is, by itself, conclusory.” Id. Further,
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`allegations relating to “improved speed or efficiency inherent with applying the abstract
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`idea on a computer” are insufficient as a matter of law. Id. (citing Customedia Techs., LLC
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`v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020).
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`Case 1:19-cv-11586-IT Document 130 Filed 01/15/21 Page 3 of 5
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`Dated: January 15, 2021
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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
`Chad Peterman
`chadpeterman@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 130 Filed 01/15/21 Page 4 of 5
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`LOCAL RULE 7.1 CERTIFICATION
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`I, Chad Peterman, counsel for Defendant Fitbit, Inc., hereby certify that Fitbit has
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`conferred with counsel for Philips North America, LLC to resolve the issues presented in this
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`motion, but after a good faith attempt to reach agreement, the parties did not do so.
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`Dated: January 15, 2021
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`By: /s/ Chad Peterman
`Chad Peterman
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`Case 1:19-cv-11586-IT Document 130 Filed 01/15/21 Page 5 of 5
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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 record for
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`each party via the Court’s CM/ECF system, which will send notification of this filing (NEF) to
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`all registered participants, and paper copies will be sent to those indicated as nonregistered
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`participants.
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`Dated: January 15, 2021
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`By: /s/ Yar Chaikovsky
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`Yar Chaikovsky
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