Case 1:19-cv-11586-FDS Document 174-5 Filed 04/14/21 Page 1 of 3
`Case 1:19-cv-11586—FDS Document 174-5 Filed 04/14/21 Page 1 of 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 5
`
`EXHIBIT 5
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 174-5 Filed 04/14/21 Page 2 of 3
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Karim Oussayef
`RRodrigues@foley.com; Okano, David; Peterman, Chad
`BOSTFPhilipsFitbit@foley.com; Philips - Fitbit; Fitbit Philips DC Service
`RE: [EXTERNAL] Re: Philips v. Fitbit - Scope of Review and Dr. Buy"s contact information.
`Friday, March 26, 2021 3:17:07 PM
`
`Hi Ruben,
`
`Thanks for speaking with us. Here’s a summary of our meet and confer. Please let me know if you believe
`there are any inaccuracies.
`
`Interrogatories (15, 18, and 24)
`· Interrogatory 15 (Written Description and Enablement): Philips agreed that it would supplement its
`response by Monday, 3/29, pursuant to the parties’ prior agreement.
`· Interrogatory 18 (Third-Party Communications): Philips agreed that it would supplement its response by
`Monday, 3/29, to identify the third-parties with which it communicated and the previously produced
`documents reflecting those communications. Philips further confirmed that all third-party
`communications had either been produced or were reflected in Philips’s privilege log.
`· Interrogatory 24 (Validity Contentions): The parties discussed the possibility of narrowing the issues.
`Philips indicated it would follow up with a proposal similar to the agreement it reached with Garmin,
`which Fitbit would consider. Philips also confirmed that, independent of the Markman ruling or an
`agreement to narrow claims, it had no intention of dropping any additional patents or claims from the
`case.
`
`
`Requests for Production (13, 31, 52-53)
`Health Watch Post-Market Surveillance Reports
`Financial Projections and Sales for the Health Watch
`2015 Customer Usability Study for the Health Watch
`Health Watch Development Plan
`Health Watch Device Description
`2016 Consumer Electronics Show Documents
`MIO Alpha Validation Documents
`
`
`Philips agreed to further investigate whether such documents existed, were archived, and were accessible,
`and to follow up with Fitbit after its investigation. Philips also confirmed that it was not relying on any
`secondary considerations of non-obviousness or that any of its own products practice the asserted claims.
`
`Philips’s Privilege Log
`See the email I circulated earlier this afternoon, below. Note that we discussed entries 7, 61, and 226 (my
`early email said entries 7, 66, and 226).
`
`Garmin Declaration
`Philips maintains that it may object to the declaration as hearsay. The parties are at an impasse as to any
`stipulation of admissibility.
`
`Philips’s Motion to Amend Its Infringement Contentions to Include Additional Products
`Fitbit confirmed that it would oppose any Philips motion to add new products to its infringement contentions.
`Fitbit may raise the issue of the ’377 patent’s expiration date in its opposition to any motion.
`
`Supplemental Sales Information
`
`

`

`Case 1:19-cv-11586-FDS Document 174-5 Filed 04/14/21 Page 3 of 3
`
`Philips requested that Fitbit supplement its sales data to reflect the sales of: (1) the previously accused
`products through January 2021; and (2) the newly accused products (provided the Court allows Philips to
`amend its contentions) through January 2021. Fitbit indicated that it would consider Philips’s requests and
`respond accordingly.
`
`Best,
`Karim
`
`Karim Z. Oussayef
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`T: (212) 351-3427 | F: (212) 351-3401
`
`From: Karim Oussayef
`Sent: Friday, March 26, 2021 1:23 PM
`To: 'RRodrigues@foley.com' <RRodrigues@foley.com>; Okano, David <davidokano@paulhastings.com>;
`Peterman, Chad <chadpeterman@paulhastings.com>
`Cc: BOSTFPhilipsFitbit@foley.com; Philips - Fitbit <Philips-Fitbit@paulhastings.com>; Fitbit Philips DC Service
`<FitbitPhilipsDCService@desmaraisllp.com>
`Subject: RE: [EXTERNAL] Re: Philips v. Fitbit - Scope of Review and Dr. Buy's contact information.
`
`Hi Ruben,
`
`Here are the two cases I had in mind.
`
`As we discussed, please confirm that Philips agrees to supplement its privilege log to include more detailed
`and/or corrected information for documents that it still contends are privileged and to produce documents
`that it no longer contends are privileged. Since that would likely take past Wednesday to complete, we would
`ask for a stipulation to extend the time to file discovery motions on this issue as part of this agreement.
`
`As examples of the types of entries that raise concerns, we discussed entries 7, 66, and 226, which appear to
`relate to nonprivileged licensing strategy. Other entries that we would highlight include 46-49, 62-65, 128,
`177, 262, 266, and 269.
`
`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: Friday, March 26, 2021 12:00 PM
`To: Karim Oussayef <KOussayef@desmaraisllp.com>; Okano, David <davidokano@paulhastings.com>;
`Peterman, Chad <chadpeterman@paulhastings.com>
`Cc: BOSTFPhilipsFitbit@foley.com; Philips - Fitbit <Philips-Fitbit@paulhastings.com>; Fitbit Philips DC Service
`<FitbitPhilipsDCService@desmaraisllp.com>
`
`