Case 1:19-cv-11586-FDS Document 168-6 Filed 03/31/21 Page 1 of 7
`Case 1:19-cv-11586-FDS Document 168-6 Filed 03/31/21 Page 1 of 7
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` EXHIBIT F
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`EXHIBIT F
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`Case 1:19-cv-11586-FDS Document 168-6 Filed 03/31/21 Page 2 of 7
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`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Rodrigues, Ruben J.
`Karim Oussayef; Peterman, Chad
`BOST - F - Philips - Fitbit; Philips - Fitbit; Fitbit Philips DC Service
`RE: Philips v. Fitbit (D. Mass) - Contentions
`Friday, March 12, 2021 10:08:47 AM
`RE Philips v. Fitbit (D. Mass) - Contentions.msg
`RE Philips v. Fitbit - Meet and Confer.msg
`Philips v. Fitbit (D. Mass) - Fitbit"s Amended Contentions.msg
`RE Philips v. Fitbit (D. Mass) - Amendment of Contentions.msg
`RE Draft Fitbit_s First Amended L.R. 16.6(d)(4) disclosures.msg
`RE Philips v. Fitbit - Meet and Confer.msg
`RE Philips v. Fitbit (D. Mass) - Amendment of Contentions.msg
`RE Philips v. Fitbit (D. Mass) - Amendment of Contentions.msg
`
`Hi Karem,
`
`The discussion on amending contentions began quite a while ago and concerns amendments that
`both Fitbit and Philips intend to make to their respective contentions. I’ve attached the various back
`and forth so that you can familiarize yourself with the history. On December 14, 2021, and after
`having raise the issue at an earlier deposition, I reached out with regards to the proposed
`amendments to Philips’s contentions and John Custer followed up with charts specifically detailing
`the amendments on December 18th. Fitbit then disclosed its intention to amend its contentions on
`December 18th as well via an e-mail from Mr. Okano. The parties proceeded to engage in back-and-
`forth discussions to see whether we could narrow the scope of what we might need to brief before
`the Court. We came close to an across-the-board agreement that neither side would object on the
`basis of diligence/timeliness to the other side’s proposed amendments but for exceptions that my
`most recent correspondence attempted to do away with (e.g. wiht respect to the Charge 4 and the
`Gaukel prior art reference). Fitbit has maintained that it objects to Philips’s proposed amendments
`because it asserts that the ’377 Patent expired before these products were released. As reflected in
`the correspondence, we disagree with that assertion, and also don’t believe it is a proper basis for
`not denying the amendment since it merely reflects a dispute that the parties have.
`
`Let me know if you’d like to discuss once you’ve had a chance to digest the prior history on this
`issue.
`
`Regards,
`
`-Ruben
`
`From: Karim Oussayef <KOussayef@desmaraisllp.com>
`Sent: Thursday, March 11, 2021 1:17 PM
`To: Rodrigues, Ruben J. <RRodrigues@foley.com>; Peterman, Chad
`<chadpeterman@paulhastings.com>
`Cc: BOST - F - Philips - Fitbit <BOSTFPhilipsFitbit@foley.com>; Philips - Fitbit <Philips-
`Fitbit@paulhastings.com>; Fitbit Philips DC Service <FitbitPhilipsDCService@desmaraisllp.com>
`Subject: RE: Philips v. Fitbit (D. Mass) - Contentions
`
`** EXTERNAL EMAIL MESSAGE **
`
`
`

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`Case 1:19-cv-11586-FDS Document 168-6 Filed 03/31/21 Page 3 of 7
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`Hi Ruben,
`
`We are days away from the close of fact discovery. Could you please confirm what amendments you
`would like to make to Philips’s infringement contentions?
`
`And do you have any specific proposals for what limits you would propose for narrowing
`contentions? Happy to discuss.
`
`Thanks,
`Karim
`
`Karim Z. Oussayef
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`T: (212) 351-3427 | F: (212) 351-3401
`
`From: RRodrigues@foley.com <RRodrigues@foley.com>
`Sent: Wednesday, March 10, 2021 4:37 PM
`To: Peterman, Chad <chadpeterman@paulhastings.com>
`Cc: BOSTFPhilipsFitbit@foley.com; Philips - Fitbit <Philips-Fitbit@paulhastings.com>; Fitbit Philips DC
`Service <FitbitPhilipsDCService@desmaraisllp.com>
`Subject: [Ext] RE: Philips v. Fitbit (D. Mass) - Contentions
`
`**EXTERNAL EMAIL** This email originated from outside the company. Do not click on any link unless you
`recognize the sender and have confidence the content is safe.
`
`
`Hi Chad,
`
` I
`
` wanted to follow-up on the below, which I don’t think we ever received a response on. We’d like
`to move ahead with a motion to amend Philips’s infringement contentions, but, want to make sure
`we’re on the same page with respect to the scope of the motion (and to the extent possible, would
`like to narrow the scope of the dispute). Let me know if we can reach agreement on #1 below. As
`for #2, perhaps we can agree to some bounds for narrowing each sides’ contentions after claim
`construction, but prior to the service of expert reports.
`
`Let me know if you’d like to discuss.
`
`Regards,
`
`-Ruben
`
`From: Rodrigues, Ruben J.
`Sent: Tuesday, February 2, 2021 4:31 PM
`
`

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`Case 1:19-cv-11586-FDS Document 168-6 Filed 03/31/21 Page 4 of 7
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`To: Peterman, Chad <chadpeterman@paulhastings.com>
`Cc: BOST - F - Philips - Fitbit <BOSTFPhilipsFitbit@foley.com>; Philips - Fitbit <Philips-
`Fitbit@paulhastings.com>
`Subject: RE: Philips v. Fitbit (D. Mass) - Contentions
`
`Hi Chad,
`
`Thanks, for providing a counterproposal. Here our current thoughts, let us know if we might have an
`agreement on some or all of this:
`
`1.) We won’t agree to not to include the Charge 4 product in the amendment, which was released
`just after Philips finalized its original contentions. The Charge 4 products infringes for the same
`reasons as all the other accused products and there is no prejudice to Fitbit in adding it to the
`contentions. That said, if we can reach agreement that Fitbit would not object on the basis of
`diligence with respect to Charge 4, we would not object to the proposed amendments concerning
`Gaukel.
`
`2.) We are open to narrowing the asserted claims as part of an overall agreement to limit prior art.
`We think, however, that this limiting exercise should occur prior to the service of expert reports. If
`we agree to an overall extension of the schedule as proposed in my earlier e-mail, perhaps sit makes
`sense to include some deadlines for narrowing prior art and asserted claims prior to the service of
`expert reports? Is this something we should discuss?
`
`Regards,
`
`-Ruben
`
`
`From: Peterman, Chad <chadpeterman@paulhastings.com>
`Sent: Friday, January 15, 2021 1:15 PM
`To: Rodrigues, Ruben J. <RRodrigues@foley.com>
`Cc: BOST - F - Philips - Fitbit <BOSTFPhilipsFitbit@foley.com>; Philips - Fitbit <Philips-
`Fitbit@paulhastings.com>
`Subject: RE: Philips v. Fitbit (D. Mass) - Contentions
`
`** EXTERNAL EMAIL MESSAGE **
`Ruben –
`
`Thanks for your email. We offer the following in response:
`
`
`1) We would agree that neither party shall object to any amendment on the basis of
`timeliness/diligence, except for Philips’ attempt to add the Charge 4 product. The Charge 4
`launched in April 2020 and Philips has not provided any justifiable reason for delay. If Philips
`agrees to the foregoing, we would also agree to withdraw the proposed amendment with
`respect to Gaukel.
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`

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`Case 1:19-cv-11586-FDS Document 168-6 Filed 03/31/21 Page 5 of 7
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`
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`2) We do not agree to your proposal for limiting the prior art. At a minimum, it is premature.
`Notably, there are pending motions and claim constructions that may impact the scope of
`the case and the parties’ positions. These motions must be resolved before we could
`consider potential narrowing. Further, we could not possibly consider narrowing prior art
`positions without Philips narrowing the number of asserted claims in each patent.
`
`
`Please let us know your positions in response.
`
`Regards,
`Chad
`
`
`From: RRodrigues@foley.com <RRodrigues@foley.com>
`Sent: Monday, January 11, 2021 10:47 AM
`To: Peterman, Chad <chadpeterman@paulhastings.com>
`Cc: BOSTFPhilipsFitbit@foley.com; Philips - Fitbit <Philips-Fitbit@paulhastings.com>
`Subject: [EXT] Philips v. Fitbit (D. Mass) - Contentions
`
`Hi Chad,
`
`In order to move the ball forward with respect to both Philips’s and Fitbit’s proposed amendments
`to the contentions, Philips proposes that both parties agree that neither party shall object to any
`amendment on the basis of timeliness/diligence. After all, the materials Fibtit seeks to add to the
`invalidity contentions at this stage are all publicly available materials that it could have been
`identified earlier.
`
`If agreement can be reached on that front, and assuming Fitbit agrees to additionally withdraw the
`proposed amendment with respect to Gaukel, a reference Fitbit had when it served its original
`contentions, Philips would further agree not to oppose the proposed amendments with respect to
`the Icon Health and Fitness charts.
`
`That would leave the issue of Fitbit’s proposed amendment with regards to the Teller, Maeda,
`Henderson, and “SmartClothing” references. Assuming agreement on the above, Philips would only
`oppose Fitbit’s proposed amendments with respect to these references on the grounds that Fitbit
`has already served an unreasonable number of invalidity contentions, and now would be a good
`time to simplify the case and not further complicate the case. Specifically, with respect to the
`patents still at issue in this matter, and including the proposed amendment, Fitbit will have identified
`more than 109 total prior art references and will have served 53 claim charts. Fitbit can’t genuinely
`intend to pursue all these prior art references in this case, nor would it be reasonable to do so.
`Accordingly, we could agree to Fitbit’s proposed amendment if Fitbit would agree to limit its
`contentions at this stage to five (5) prior art references against each patent still at issue (for a total of
`fifteen). Let us know if this might be agreeable.
`
`We understand that even if we are able to agree with respect to the above, this would mean that
`
`

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`Case 1:19-cv-11586-FDS Document 168-6 Filed 03/31/21 Page 6 of 7
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`Fitbit would continue to oppose Philips’s amendment to its infringement contentions on the basis of
`Fitbit’s theory that the ‘377 Patent is expired. As we’ve explained, we believe Fitbit’s position to be
`without merit in view of the fact that no provisional application was converted to a non-provisional
`in under 37 C.F.R. 1.53, and the cited cases relied on by Fitbit are inapposite. We intend to file a
`motion to amend Philips’s contentions as previously shared with Fitbit and believe our meet and
`confer requirements have been met. Please advise if you disagree or if Fitbit has changed its
`position.
`
`Regards,
`
`-Ruben
`
`Ruben J. Rodrigues
`Foley & Lardner LLP
`111 Huntington Ave, Suite 2600
`Boston, MA 02199
`
`rrodrigues@foley.com
`617-502-3228 (office)
`617-763-5089 (mobile)
`
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`Case 1:19-cv-11586-FDS Document 168-6 Filed 03/31/21 Page 7 of 7
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