Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 1 of 18
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`Plaintiff,
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`Civil Action No. 1:19-cv-11586-FDS
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`v.
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`FITBIT, INC.,
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`Defendant.
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`DEFENDANT’S OPPOSITION TO PLAINTIFF’S
`MOTION FOR LEAVE TO AMEND L.R. 16.6(d)(1) INFRINGEMENT CONTENTIONS
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`Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 2 of 18
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`TABLE OF CONTENTS
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`INTRODUCTION ...........................................................................................................................1
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`LEGAL STANDARD ......................................................................................................................2
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`ARGUMENT ...................................................................................................................................3
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`I.
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`THERE IS NO GOOD CAUSE FOR PHILIPS’S AMENDMENTS. ................................3
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`1.
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`2.
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`Philips Cannot Justify Its Extended Delay...............................................................3
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`Philips’s New And Undisclosed Proposed Amendments Prejudice Fitbit. .............8
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`II.
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`PHILIPS’S PROPOSED AMENDMENTS WOULD BE FUTILE. ...................................9
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`CONCLUSION ..............................................................................................................................13
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`Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 3 of 18
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Abiomed, Inc. v. Maquet Cardiovascular LLC,
`Civil Action No. 16-10914-FDS, 2020 WL 3868803 (D. Mass. July 9, 2020) .................. 5
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`Acer, Inc. v. Tech. Properties Ltd.,
`No. 5:08-CV-00877 JF/HRL, 2010 WL 3618687 (N.D. Cal. Sept. 10, 2010) ................... 3
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`Allvoice Developments US, LLC v. Microsoft Corp.,
`612 F. App’x 1009 (Fed. Cir. 2015) ................................................................................... 8
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`Inline Plastics Corp. v. Lacerta Group, Inc.,
`No. 4:18-11631-TSH (D. Mass. Feb. 23, 2021) ................................................................. 2
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`Intellectual Ventures, LLC v. NetApp, Inc.,
`No. 16-10868-PBS (D. Mass. Aug. 15, 2019) .................................................................... 3
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`Medtronic CoreValve, LLC v. Edwards Lifesciences Corp.,
`741 F.3d 1359 (Fed. Cir. 2014)............................................................................. 11, 12, 13
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`Nat. Alts. Int'l, Inc. v. Iancu,
`904 F.3d 1375 (Fed. Cir. 2018)......................................................................................... 12
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`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006)............................................................................... 2, 3, 7, 8
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`Potter Voice Techs., LLC v. Apple Inc.,
`No. C 13-1710 CW, 2015 WL 13404106 (N.D. Cal. Mar. 20, 2015) ................................ 8
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`Synopsys, Inc. v. Atoptech, Inc.,
`No. 13CV02965MMCDMR, 2016 WL 4945489 (N.D. Cal. Sept. 16, 2016) .................... 5
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`35 U.S.C. § 119(e) ........................................................................................................................ 11
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`STATUTES
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`RULES
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`Local Rule 16.6 ....................................................................................................................... 5, 6, 8
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`Local Rule 16.6(d)(1)(A) ................................................................................................................ 2
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`Local Rule 16.6(d)(5).................................................................................................................. 4, 6
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`Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 4 of 18
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`REGULATIONS
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`37 C.F.R. § 1.53 ...................................................................................................................... 10, 11
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`37 C.F.R. § 1.78(a)(4) ................................................................................................................... 12
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`Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 5 of 18
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`INTRODUCTION
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`Plaintiff Philips North America LLC (“Philips”) asks the Court to ignore its lack of
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`diligence and expand the case to include additional accused products after the close of fact
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`discovery. Specifically, Philips seeks to amend its infringement contentions after the close of fact
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`discovery to accuse four additional products released by Defendant Fitbit, Inc. (“Fitbit”) in April
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`and September 2020 of infringing U.S. Patent No. 8,277,377 (the “’377 Patent”). See D.I. 168
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`(“Motion”) at 1. Philips does not provide any credible justification for its significant delay and
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`does not establish good cause for expanding the scope of the accused Fitbit products at this late
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`stage. Philips’s Motion should be denied for three reasons.
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`First, Philips’s failure to diligently pursue its infringement claims alone warrants denial of
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`its Motion. Philips waited to request leave to add its infringement contentions for the Charge 4
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`product until almost one year after its release and waited to request leave to add its infringement
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`contentions for the Versa 3, Inspire 2, and Sense products until approximately six months after
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`their release. Philips cannot justify that extended delay and fails to carry its burden to show that
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`it acted diligently. The Court should deny the Motion on that basis alone.
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`Second, Philips fails to apprise the Court and Fitbit of its proposed amendments to its
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`contentions and thus cannot demonstrate that the amendments will not prejudice Fitbit. In
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`particular, Philips’s Motion does not attach any claim charts for the Versa 3, Inspire 2, and Sense
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`products that Philips now seeks to accuse of infringement. And the sole claim chart that Philips
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`did submit with its Motion for the Charge 4 product differs in material respects from the chart
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`Philips previously provided to Fitbit. Adding four new products and infringement claims that were
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`not explored during discovery, and have still not been fully disclosed, would significantly
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`prejudice Fitbit. Philips’s incomplete and unspecified amendments should not be allowed.
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`Third, Philips’s proposed amendment would be futile because the ’377 Patent expired
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`before the release dates of the new products. The ’377 Patent claims priority to an earlier
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`application that is a conversion of a provisional application filed in 1999. Because the earlier
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`application was identified as a conversion, the term of the ’377 Patent is calculated from the
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`provisional date in 1999 and expired on January 18, 2020. Philips’s Motion argues that the
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`identification of the earlier application as a conversion was an error. But the burden of providing
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`an accurate priority claim is on the patent owner. As a consequence, the ’377 Patent expired
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`months before any of the four newly-accused Fitbit products were released. Thus, the new
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`products could not have infringed the expired ’377 Patent.
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`LEGAL STANDARD
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`Local Rule 16.6 required Philips to disclose its infringement claims and theories, with
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`charts identifying “each accused product” and providing “an element-by-element description of
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`where and how each element of each asserted claim is found in each accused product.” Local Rule
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`16.6(d)(1)(A). The Rules further provide that, in recognition of the duty to supplement discovery
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`responses, Philips’s infringement contentions “may be amended and supplemented only by leave
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`of court upon a timely showing of good cause.”1 Local Rule 16.6(d)(5); see also Inline Plastics
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`Corp. v. Lacerta Group, Inc., No. 4:18-11631-TSH, slip op. at 3 (D. Mass. Feb. 23, 2021).
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`Whether good cause exists at this late stage depends upon Philips’s diligence and the prejudice to
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`Fitbit. See O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir.
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`2006). “The burden is on the movant to establish diligence rather than on the opposing party to
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`establish a lack of diligence.” Id. Where the moving party fails to establish its own diligence,
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`there is no good cause regardless of whether the proposed amendment causes prejudice. Id. at
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`1 All emphases are added unless otherwise noted.
`2
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`1368 (“Having concluded that the district court could properly conclude that [the plaintiff] did not
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`act diligently in moving to amend its infringement contentions, we see no need to consider the
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`question of prejudice to [the defendant].”).
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`ARGUMENT
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`I.
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`THERE IS NO GOOD CAUSE FOR PHILIPS’S AMENDMENTS.
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`1.
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`Philips Cannot Justify Its Extended Delay.
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`Philips provides no credible reason for waiting a year before filing its request to add the
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`Charge 4 to its infringement claims and waiting six months before filing its request to add the
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`Versa 3, Inspire 2, and Sense. (See Ex. N at 5; Ex. O at 7.2) In that time, Philips twice came within
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`days of previously-scheduled deadlines for the close of fact discovery without amending its
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`contentions. See D.I. 127, 152 (extending fact discovery). Only now—after the thrice-extended
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`close of fact discovery—does Philips finally seek leave to amend its contentions. Contrary to
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`Philips’s insistence that it expeditiously sought leave to amend, Philips’s conduct is the antithesis
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`of diligence and should not be entertained. Indeed, courts have found a lack of diligence even
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`where there is far less delay. See, e.g., Intellectual Ventures, LLC v. NetApp, Inc., No. 16-10868-
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`PBS, slip op. at 2 (D. Mass. Aug. 15, 2019) (denying leave to amend contentions where, as here,
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`relevant information was discovered months earlier, fact discovery was closed under amended
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`deadlines, and opening expert disclosures were looming); Acer, Inc. v. Tech. Properties Ltd., No.
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`5:08-CV-00877 JF/HRL, 2010 WL 3618687, at *5 (N.D. Cal. Sept. 10, 2010) (finding lack of
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`diligence where patentee delayed for three months after it began source code review and three
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`weeks after that review was completed).
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`2 Citations to Exhibits A-Q refer to the lettered exhibits filed with Philips’s Motion. Citations to
`Exhibits 1-9 refer to the numbered exhibits filed with this Opposition.
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`For the Charge 4 product, Philips’s failure to timely amend its contentions within the
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`discovery period is particularly inexcusable given that its proposed contentions cite exclusively to
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`public information that was available nearly a year ago.3 Philips’s contentions in the Charge 4
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`claim chart filed with the Motion consist entirely of screenshots of mobile phone user interfaces
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`and references to publicly available documents. (See Ex. I.) Those contentions could have been
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`compiled within days of the Charge 4’s release in April 2020 and could easily have been included
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`in Philips’s First Supplemental Contentions, served one month later on May 15, 2020. (See Ex.
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`1.) Philips at least tacitly acknowledges that it could have—and should have—sought leave to add
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`the Charge 4 to its contentions at that time. Motion at 1 (“No new contentions with respect to any
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`new products were added at this time, nor would it have been appropriate to add them without
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`leave of court.”). Philips’s choice to instead wait almost a full year before seeking leave to add
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`the Charge 4 to this case after fact discovery is inexcusable.
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`For the Versa 3, Inspire 2, and Sense products, neither the Court nor Fitbit can fully assess
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`the information Philips will rely on to support its contentions because Philips inexplicably did not
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`submit any charts for those products with the Motion. Philips delayed for six months after the
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`Versa 3, Inspire 2, and Sense were released before seeking to add them to its case and still has not
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`disclosed exactly how Philips intends to amend its contentions for these three products. The
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`cursory charts Philips provided in December 2020, (see Exs. 2-4), demonstrate that the significant
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`delay cannot be explained by Philips’s general assertion that it needed to “inspect and confirm
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`whether or not Fitbit’s new product infringed,” as those charts rely on screenshots and information
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`that was publicly available months ago. Motion at 4; see also Synopsys, Inc. v. Atoptech, Inc., No.
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`3 Philips’s conduct stands in stark contrast to the exemplary circumstances provided in Local Rule
`16.6(d)(5), which acknowledges that the “discovery of nonpublic information about the asserted
`infringement” may support a finding of good cause in the absence of prejudice.
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`13CV02965MMCDMR, 2016 WL 4945489, at *4 (N.D. Cal. Sept. 16, 2016) (finding a lack of
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`diligence where the patentee’s conclusory and vague statements regarding a need for inspection
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`failed to explain its delay).
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`Philips’s heavy reliance on this Court’s decision in Abiomed is misplaced. See Abiomed,
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`Inc. v. Maquet Cardiovascular LLC, Civil Action No. 16-10914-FDS, 2020 WL 3868803 (D.
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`Mass. July 9, 2020). The facts of that case were starkly different. First, the Court found in
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`Abiomed that, “while perhaps Maquet could have supplemented its contentions earlier,” it was
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`reasonable in seeking to amend its contentions to add a single new product “three months after
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`learning of a new product and less than one month after the Court’s ruling on its previous
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`supplemental contentions.” Id. at *4. In contrast, here Philips seeks to add the Charge 4 one year
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`after its release and the other products more than six months after their release and cannot point
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`to any Court ruling in the interim that could justify the delay. Second, the Court found in Abiomed
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`that Maquet acted reasonably in light of scheduling considerations that are not at issue here. The
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`applicable scheduling order in Abiomed set a deadline for final amendments to contentions for a
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`date “to be decided.” Id. at *3. When that date was eventually decided, Maquet had just one week
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`to serve amended infringement contentions. Maquet immediately sought leave to amend, within
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`the formal deadline to do so. Id. Here, by contrast, no deadline allowing late amendments was
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`ever set, and Philips had no reason to believe that it was entitled to amend its contentions until
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`after the close of fact discovery. Amendments to the contentions were always subject to the
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`requirements of Local Rule 16.6, namely that contentions could only be amended “by leave of
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`court upon a timely showing of good cause”—a requirement that Philips has not met.4 Local Rule
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`4 The version of Local Rule 16.6, which was amended in June of 2018, that applied in Abiomed
`differed in important respects from the present version that governs this case. In particular, the
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`Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 10 of 18
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`16.6(d)(5). Third, unlike in Abiomed, fact discovery in this case was extended three times, once
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`on an emergency motion. See D.I. 116, 127, 152. Philips came within days of those deadlines
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`without seeking leave to amend its contentions. As such, Philips had no reasonable reliance
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`interest in seeking to amend its contentions after the thrice-extended, and now past, close of fact
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`discovery.
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`Philips’s additional reasons for its failure to timely amend its contentions are meritless post
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`hoc excuses. For example, Philips asserts that it failed to include the Charge 4 in its First
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`Supplemental Contentions—served weeks after the Charge 4 was released—because it “believed
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`that the most efficient approach to amending the contentions would be to seek a single amendment
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`that would cover all the new products released during the course of discovery.” Motion at 4. But
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`even if efficiency could justify Philips’s delay, Philips had no way of knowing in April 2020 (when
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`discovery was set to close in October 2020) whether additional Fitbit products would be released,
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`much less knowing that the products would allegedly infringe. Indeed, the Versa 3, Inspire 2, and
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`Sense were not announced until late August 2020, more than three months after Philips’s First
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`Supplemental Contentions and four months after the Charge 4 was released. (Ex. O at 1.) Philips’s
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`suggestion that it delayed adding the Charge 4 to its case because it thought Fitbit might release
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`new products that might infringe strains credulity and is hardly the conduct of a diligent plaintiff.
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`Moreover, Philips failed to seek leave to amend its contentions for another six months after the
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`release of the later products. Thus, even if Philips were justified in waiting for those products to
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`be released, Philips still waited an additional half a year to amend its contentions and failed to
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`diligently prosecute its case.
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`prior Rule provided a more permissive standard that only required good cause to amend for
`amendments made within thirty days or later of the Markman hearing.
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`Philips also mischaracterizes the parties’ communications regarding Philips’s proposed
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`amendments. Philips asserts that Fitbit’s opposition is “inconsistent and unreasonable” because
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`Fitbit supposedly “agreed not to oppose” Philips’s proposed amendments. See Motion at 5. No
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`such agreement was ever reached. The correspondence instead demonstrates that Fitbit proposed
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`potential compromises, and Philips rejected them. (See Ex. G at 4-5.) Philips first contacted Fitbit
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`about a potential agreement for mutual amendments to infringement and invalidity contentions on
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`January 11, 2021—nine months after the release of the Charge 4 and almost four months after
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`the release of the other newly-accused products.5 (Id. at 5-6.) Four days later, Fitbit responded
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`that it would not agree to Philips’s proposed amendment to add the Charge 4 and provided a
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`counterproposal as to the other three products. (Id. at 5.) More than two weeks later, Philips
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`rejected that proposal. (Id. at 4.) Thus, contrary to Philips’s assertion, Fitbit never agreed to forego
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`its opposition to the late addition of new products. Indeed, Philips understood Fitbit’s opposition
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`and sought to again discuss the issue more than a month later, on March 10, after another extension
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`of fact discovery. (Id. at 3.) And if any doubt could have remained at the time of the parties’
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`March 26 discovery conference, Fitbit reiterated that it opposed Philips’s amendments. (Ex. 5 at
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`1.) Philips cannot justify its delay on the basis of an agreement that did not exist. See O2 Micro,
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`467 F.3d at 1367 (affirming finding of unexcused delay where there was no tentative agreement
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`or misleading conduct regarding proposed amended contentions).
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`It is Philips’s burden to show that it acted with diligence. Id. at 1366. Philips fails to carry
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`that burden, and its proposed amendments should be denied. See id. at 1368; Allvoice
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`5 Philips first informed Fitbit of its intent to add the four products to its contentions on December
`14, 2020, and stated that it would file for leave to amend within the week. (See Ex. A at 2.) Philips,
`of course, did not amend its contentions at that time. Nor did Philips promptly seek to amend its
`contentions after Fitbit’s December 28 email explicitly stating that it would oppose introduction
`of the products. (See Ex. 6 at 1.)
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`Developments US, LLC v. Microsoft Corp., 612 F. App’x 1009, 1015 (Fed. Cir. 2015) (“If the
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`moving party is not able to meet that burden [to demonstrate diligence], it is unnecessary to
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`examine the potential prejudice of the amendment to the non-moving party.”).6
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`2.
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`Philips’s New And Undisclosed Amendments Prejudice Fitbit.
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`In addition to Philips’s request to amend its contentions being untimely, it is substantially
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`incomplete. Inexplicably, and contrary to Local Rule 16.6—which requires Philips to disclose
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`infringement claim charts for each accused product—Philips’s Motion does not include any claim
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`charts for three of the four newly-accused products. Thus, Philips fails to inform the Court and
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`Fitbit of the substance of its proposed amendments for any of the Versa 3, Inspire 2, or Sense
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`devices. Philips cannot claim that its amendments will not prejudice Fitbit when Philips has not
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`even provided those amendments for scrutiny.
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`The only claim chart that Philips did include with its Motion, purporting to chart
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`infringement for the Charge 4 product, differs in material respects from the chart Philips previously
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`provided to Fitbit in December 2020. Specifically, the chart Philips attached to its Motion
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`conspicuously omits references to “Active Zone Minutes,” a new feature that was introduced with
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`the Charge 4 and that was included in Philips’s December 2020 chart. (Compare Ex. 7 at 21-25
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`with Ex. I at 21-23.; see also Ex. N at 1 (announcing the launch of Active Zone Minutes as a new
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`feature).) Of course, neither the Court nor Fitbit can tell whether Philips intends to assert a new
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`infringement theory against that feature for the three remaining products for which Philips has not
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`submitted any charts. The charts that Philips provided to Fitbit in December 2020 for those
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`products, however, all asserted new infringement theories accusing the Active Zone Minutes
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`6 The case Philips cites for the proposition that the Court should exercise its discretion to allow
`Philips’s amendment even if the Court finds a lack of diligence (see Motion at 3) is inapposite.
`That case dealt with an unopposed request to amend contentions. Potter Voice Techs., LLC v.
`Apple Inc., No. C 13-1710 CW, 2015 WL 13404106, at *1 (N.D. Cal. Mar. 20, 2015).
`8
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`feature. (See Ex. 2 at 20-27; Ex. 3 at 20-27; Ex. 4 at 20-27.) And Philips’s counsel has at least
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`hinted that, while there may be overlap in its infringement theories for the new and old products,
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`Philips does intend to assert new infringement theories against the new features of the new
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`products. (See Ex. A (“These products infringe for many of the same reasons already set forth
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`in the contentions for related products, but appear to have also introduced new features as
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`well.”).) Philips’s accusation of those new features prejudices Fitbit because it introduces new
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`infringement theories that were not disclosed or investigated in discovery.
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`Even if Philips truly does intend to amend its contentions without accusing any new
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`features, the addition of four new products at this late stage unduly prejudices Fitbit. Fact
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`discovery was extended three times already in this case and is now closed. Because these products
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`were not timely added to Philips’s infringement contentions, Fitbit and Philips neither took nor
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`produced discovery relating to these products during fact discovery. To require Fitbit to go
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`forward without the relevant discovery or to yet again reopen discovery would prejudice Fitbit and
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`disrupt the orderly progress of this litigation. Especially in light of Philips’s lack of diligence, the
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`Court should not require Fitbit to go without or to engage in additional discovery at this late stage.
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`II.
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`PHILIPS’S PROPOSED AMENDMENTS WOULD BE FUTILE.
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`Even if the Court were to find good cause for Philips’s amendments, Philips’s Motion
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`should still be denied because the ’377 Patent expired on January 18, 2020, months before any of
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`the newly-accused products were released. The patent expired in January 2020 because of
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`decisions the patentee made when filing U.S. Patent No. 6,602,191 (the “’191 Patent”), to which
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`the ’377 Patent claims priority. Philips disagrees with the ’377 Patent’s expiration date by accusing
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`Fitbit of relying on an “incorrect premise” that the ’191 Patent “was a ‘conversion’” when
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`calculating the expiration date of the ’377 Patent. Motion at 6. Far from incorrect, that premise is
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`exactly what the patents have said to the public for years. See Ex. 8 at 1:18-22 (’377 Patent stating
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`that the ’191 Patent “is a conversion of U.S. Provisional Application Ser. No. 60/172,486, filed
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`Dec. 17, 1999”); Ex. 9 at 1:9-10 (’191 Patent stating that it “is a conversion of U.S. Provisional
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`Patent Application Ser. No. 60/172,486 filed Dec. 17, 1999”). Philips’s explanation for those
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`statements in the patents is essentially that they were mistakes, and Philips does not want to be
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`stuck with the consequences of the mistakes. Mistake or not, the burden was on the patentee to
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`clearly and accurately give the public notice of the priority claims. Based on the priority claims
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`written into the patents, the ’377 Patent expired in January 2020, and Philips thus cannot assert
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`infringement claims for any of the four products it seeks to add to its contentions.
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`The key question in determining the expiration date of the ’377 Patent is which of the
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`patent’s priority applications should be used as the starting date for the ’377 Patent’s twenty-year
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`term. The earliest application in the ’377 Patent’s priority chain is Provisional Application No.
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`60/172,486 (the “’486 Application”), filed December 17, 1999. The next application in the chain
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`is the ’191 Patent, filed December 15, 2000. Because the ’191 Patent was identified as a
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`conversion of the ’486 Application (see Ex. 9 at 1:9-10), the filing date of the ’486 Application—
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`and not the filing date of the ’191 Patent—is the start of the ’377 Patent’s term. See 37 C.F.R. §
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`1.53 (“Conversion of a provisional application to a nonprovisional application under this paragraph
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`will result in the term of any patent to issue from the application being measured from at least the
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`filing date of the provisional application for which conversion is requested.”). Thus, the ’377
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`Patent’s term expired on January 18, 2020—twenty years after the ’486 Application’s filing date
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`(December 17, 1999) plus the thirty-two days of term extension granted on the face of the ’377
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`Patent. (See Ex. 8 at Cover (noting patent term extension of 32 days).)
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`The public is entitled to rely on the unequivocal statements in the ’377 Patent and the ’191
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`Patent priority claims—including the statement that the ’191 Patent was a conversion—in
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`determining the expiration date of the ’377 Patent. The burden is on the patentee to accurately
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`state its priority claims. Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741 F.3d 1359,
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`1367 (Fed. Cir. 2014) (“The patentee is the person best suited to understand the genealogy and
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`relationship of her applications; a requirement for her to clearly disclose this information should
`
`present no hardship.”) The patentee clearly stated in the ’191 Patent that it was a conversion and
`
`thus should bear the consequences of that conversion, including the expiration date of the ’377
`
`Patent. While Philips may wish its term were longer, there can be no claim of surprise because
`
`the regulations explicitly warn patentees of that consequence. See 37 C.F.R. § 1.53
`
`(“[A]pplicants should consider avoiding this adverse patent term impact by filing a nonprovisional
`
`application claiming the benefit of the provisional application under 35 U.S.C. § 119(e), rather
`
`than converting the provisional application into a nonprovisional application pursuant to this
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`paragraph.”).
`
`Tellingly, neither Philips nor the prior owners of the ’191 Patent and ’377 Patent attempted
`
`to change the priority claim statements written into the patents years ago. The applicant never
`
`amended the specification of the ’191 Patent application to update its characterization as a
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`conversion. The applicant continued to characterize the ’191 Patent as a conversion when filing
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`the ’377 Patent application nearly eight years later. And there was never any attempt to change
`
`the priority statement in either patent. Thus, the patents have given the public notice that the ’191
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`Patent was a conversion—and that the ’377 Patent would expire in January 2020—for over twenty
`
`years.
`
`Philips attempts to sidestep the conversion issue by stating that the patentee never filed a
`
`separate request, aside from the priority statements in the patent specifications, for conversion.
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`Motion at 6-7. But Philips cites no support for the proposition that the absence of any such separate
`
`
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`Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 16 of 18
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`
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`request changes the priority claim made in the ’191 Patent specification. Nor does Philips cite any
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`authority showing that the priority claim in the specification did not suffice for the required
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`conversion request. In fact, Philips included its statement that the ’191 Patent was a conversion in
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`the very first sentence of the patent, where the rules at the time required accurate priority
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`information to be provided. See 37 C.F.R. § 1.78(a)(4) (July 2000). Philips’s only real response
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`to the public notice provided in its patents is that the public should forensically sift through the file
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`histories of its patents in an attempt to discern the priority chain on their own. Motion at 6. But
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`the law makes clear that the public does not bear such a burden in view of the requirement that
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`patentees clearly state their priority claims. Medtronic, 741 F.3d at 1367 (“Allocating the
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`responsibility of disclosure through specific references to the patentee eliminates the inefficiencies
`
`associated with having the public expend efforts to unearth information when such information is
`
`readily available to the patentee.”); see also Nat. Alts. Int'l, Inc. v. Iancu, 904 F.3d 1375, 1380
`
`(Fed. Cir. 2018) (“Furthermore, examiners and adjudicators cannot be expected to scrutinize the
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`prosecution history of an application and each parent application to determine whether the
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`application would have met § 120’s requirements at any point during its pendency.”).
`
`The additional excuses Philips offers—including that the priority claims were sloppy
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`draftsmanship and an imprecise “colloquial reference” (Motion at 7)—all but admit that the ’191
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`Patent was identified as a conversion, even if mistakenly so. Philips cannot undo that mistake
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`now, over twenty years later, to capture another year of patent term and four more Fitbit products
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`with its infringement case. The ’377 Patent and the ’191 Patent both include express and
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`unmistakable priority claims stating that the ’191 Patent was a conversion and thus that the public
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`may safely practice the claims of the ’377 Patent after its expiration on January 18, 2020. Philips
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`must bear the consequences of those statements. See Medtronic, 741 F.3d at 1367. Accordingly,
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`Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 17 of 18
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`
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`the ’377 Patent expired before any of the four newly-accused products were released, and Phillips
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`cannot accuse them of infringement.
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`CONCLUSION
`
`For the foregoing reasons, Fitbit respectfully requests that the Court deny Philips’s Motion.
`
`
`
`
`
`Dated: April 14, 2021
`
`By:
`
`
`
`
`
` /s/ Karim Oussayef
`Karim Z. Oussayef (pro hac vice)
`koussayef@desmaraisllp.com
`Leslie M. Spencer (pro hac vice)
`lspencer@desmaraisllp.com
`Brian D. Matty (pro hac vice)
`bmatty@desmaraisllp.com
`
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`
`Ameet A. Modi (pro hac vice)
`amodi@desmaraisllp.com
`Emily H. Chen (pro hac vice)
`echen@desmaraisllp.com
`
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
`
`Gregory F. Corbett (BBO # 646394)
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02110
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`E-mail: gcorbett@wolfgreenfield.com
`
`Attorneys for Fitbit, Inc.
`
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`Case 1:19-cv-11586-FDS Document 173 Filed 04/14/21 Page 18 of 18
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`CERTIFICATE OF SERVICE
`
`I hereby c