Case 1:19-cv-11586-FDS Document 176 Filed 04/21/21 Page 1 of 12
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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-FDS
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`Leave to file granted during status
`conference held April 21, 2021
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`PLAINTIFF’S REPLY BRIEF IN SUPPORT OF ITS MOTION FOR LEAVE TO
`AMEND L.R. 16.6(d)(1) INFRINGEMENT CONTENTIONS
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`I.
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`II.
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`III.
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`IV.
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`V.
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`Case 1:19-cv-11586-FDS Document 176 Filed 04/21/21 Page 2 of 12
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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`GOOD CAUSE EXISTS TO ALLOW THE AMENDMENT ........................................... 2
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`FITBIT CANNOT IDENTIFY ANY GENUINE PREJUDICE FROM THE PROPOSED
`AMENDMENTS ................................................................................................................ 4
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`FITBIT’S “CONVERSION” THEORY IS UNSUPPORTED BY ANY PRECEDENT .. 5
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`CONCLUSION ................................................................................................................... 7
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`Case 1:19-cv-11586-FDS Document 176 Filed 04/21/21 Page 3 of 12
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Acer, Inc. v. Tech. Properties Ltd.,
`5:08-CV-00877, 2010 WL 3618687 (N.D. Cal. Sept. 10, 2010) ...........................................2, 3
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`Intellectual Ventures, LLC v. Lenovo Group, Ltd., et al.,
`No. 16-cv-10860-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)..................................................................................................5
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`Nat. Alternatives Intl., Inc. v. Iancu,
`904 F.3d 1375 (Fed. Cir. 2018)..................................................................................................5
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`Synopsys, Inc. v. Atoptech, Inc.,
`13CV02965MMCDMR, 2016 WL 4945489 (N.D. Cal. Sept. 16, 2016) ..............................2, 3
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`Statutes
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`35 U.S.C. § 120 ................................................................................................................................5
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`Other Authorities
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`37 C.F.R. 153(c)(3) ..........................................................................................................................6
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`4 Chisum on Patents § 11.02............................................................................................................6
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`Case 1:19-cv-11586-FDS Document 176 Filed 04/21/21 Page 4 of 12
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`I. INTRODUCTION
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`Fitbit’s Opposition brief fails to identify any genuine prejudice to Fitbit from allowing the
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`proposed amendment—there is none. Indeed, Fitbit does not dispute that (at least for the Charge
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`4 product) the proposed amendments accuse the very same features previously accused of
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`infringement with respect to other products. It also remains true that it is these very same features
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`that are accused in the proposed amended contentions for the Inspire 2, Sense, and Versa 3, though
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`Philips apologizes to both the Court and Fitbit for inadvertently failing to include copies of the
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`proposed amended contentions for these products with its opening brief. The proposed amended
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`contentions for these additional products are now attached hereto as Exhibits R, S, and T.1 The
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`infringement theories for the Inspire 2 (Ex. R) are the same as previously disclose for the Inspire
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`HR (Ex. U) while the infringement theories for the Sense (Ex. S) and Versa 3 (Ex. T) are the same
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`as for the Versa 2 (Ex. V).
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`Meanwhile, Fitbit’s Opposition brief tacitly acknowledges, as it must, that the ’191 Patent
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`was not actually a conversion of the ’486 Provisional. Instead, Fitbit’s argument is essentially
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`that the ’191 Patent should be treated as a conversion simply because of the colloquial language
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`used in claiming priority to the ’486 Provisional. Yet Fitbit cites not a single case where any Court
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`has ever taken such an extreme approach, and this Court should decline Fitbit’s invitation to be
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`the first. Fitbit’s purports to rely on inapposite cases involving the failure of applicants to actually
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`include a specific reference to an application to which priority is claimed, but that is not an issue
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`here.
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`1 Fitbit points out that Philips’s draft contentions served back in December of 2020, when the parties began negotiating
`amendments to both sides’ contentions, included allegations of infringement against an additional “Active Zone
`Minutes” feature that was previously not accused of infringement—however Philips is not presently seeking to amend
`the contentions to include allegations of infringement against this feature.
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`1
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`Case 1:19-cv-11586-FDS Document 176 Filed 04/21/21 Page 5 of 12
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`II. GOOD CAUSE EXISTS TO ALLOW THE AMENDMENT
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`As set forth in its opening memorandum, Philips was diligent in seeking to amend its
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`infringement contentions. This is particularly so in light of Philips’s desire to avoid piecemeal
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`amendments as Fitbit rolled out new products through 2020 and the fact that Philips is not seeking
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`to add any new infringement theories to the case—only features also previously available in
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`older products are accused of infringement.
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`Fitbit repeatedly hammers the notion that Philips waited “a year” with respect to the Charge
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`4 and “six months” for the other three products. However, this fails to acknowledge that Philips
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`sought to amend its contentions in December of 2020 and that the parties subsequently entered
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`into negotiations, concerning the scope of both sides’ contentions, that Philips presumed were
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`proceeding in good faith. That Fitbit retained new counsel and appears to have abandoned its
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`desire to amend its own contentions should not be used to somehow demonstrate lack of diligence
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`on Philips’s part. Indeed, it is tantamount to arguing that Philips should not have engaged in
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`negotiations in an effort to narrow the dispute and should have instead run to the Court despite
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`Fitbit’s then-willingness to engage in a discussion of potential narrowing.
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`Fitbit’s attempt to compare Philips’s purported “delay” here to situations where amended
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`contentions were not allowed also fails. In neither Acer, Inc. v. Tech. Properties Ltd., 5:08-CV-
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`00877 JF/HRL, 2010 WL 3618687 (N.D. Cal. Sept. 10, 2010), nor Synopsys, Inc. v. Atoptech, Inc.,
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`13CV02965MMCDMR, 2016 WL 4945489 (N.D. Cal. Sept. 16, 2016) did the patent owner seek
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`to amend infringement contentions to include the accused infringer’s new products launched after
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`initial contentions were served. Rather, in Acer, the amended contentions introduced new
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`infringement theories, including adding existing products and asserting new patent claims. Acer,
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`2010 WL 3618687 at *1- 2. The case had been stayed pending results of a reexamination, and only
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`after the stay was lifted, the patent owner “re-investigated evidence” regarding the accused
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`2
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`infringers’ products, and finally three months after the stay was lifted, moved to amend its
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`infringement contentions. Id. at *5 The patent owner failed to explain why it had not performed
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`its review of available information before the stay was instituted, or why it took three months after
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`the stay was lifted to amend its contentions. Id., (denying motion to amend contentions for lack
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`of diligence). Here, while Philips’s proposed amendments rely on publicly available
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`information—Philips could not have known about these new products until Fitbit actually released
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`them—all of which occurred after the service of the original contentions. In Synopsys, the patent
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`owner claimed it was diligent because it had to review source code that was produced over several
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`months and that the source code review delayed its ability to amend its contentions. Synopsys,
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`2016 WL 4945489, at *3. The court’s analysis was directed to whether the patent owner
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`“establish[ed] its diligence in seeking amendment by adequately tying its proposed amendments
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`to [the accused infringer’s] late production of source code.” Id. The court found that the patent
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`owner had not established diligence because the patent owner had “not shown how the proposed
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`amendments are tied to newly discovered information.” Id. at *5. Here Philips’s proposed
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`amended infringement contentions are tied to the newly released Fitbit products.
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`Lastly, Intellectual Ventures, LLC v. Lenovo Group, Ltd., et al., No. 16-cv-10860-PBS (D.
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`Mass. Aug. 15, 2019) (Lead case), does not apply either.2 In Intellectual Ventures the court denied
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`the motion to amend invalidity contention because first, there was no connection between the
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`court’s claim construction and the proposed amended invalidity contentions, second, the defendant
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`did not explain the time delay from locating the new prior art and its motion to amend, and lastly
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`expert report deadlines were imminent. Id. at 2. Here, as stated before, it is only because Fitbit
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`2 Fitbit cites to Intellectual Ventures, LLC v. NetApp, Inc., No. 16-10868-PBS, slip op. at 2 (D. Mass. Aug. 15, 2019)
`(Dkt. No. 173 at 3), but the order appears to have been filed in the lead case, Intellectual Ventures, LLC v. Lenovo
`Group, Ltd., et al., No. 16-cv-10860-PBS.
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`3
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`Case 1:19-cv-11586-FDS Document 176 Filed 04/21/21 Page 7 of 12
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`launched new products that Philips seeks to amend its contentions to include those products, and
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`not because Philips seeks to add any new infringement theories.
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`III. FITBIT CANNOT IDENTIFY ANY GENUINE PREJUDICE FROM THE
`PROPOSED AMENDMENTS
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`While Philips’s proposed amendment accuses new Fitbit products of infringement, it adds
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`no new infringement theories to the case. Only features previously accused of infringement and
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`available in past products, such as Fitbit’s “Cardio Fitness Score,” are accused of infringement for
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`the very same reasons those features were previously accused in Fitbit’s older products. Philips is
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`not expanding the case by its request to include the recently released Fitbit products. The same
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`features were already in the case and Philips is now simply contending that these pre-existing
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`features now infringe as incorporated into Fitbit’s new products.
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`Fitbit’s complaint that it is unaware of the extent of Philips’s amended contentions is
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`overstated. While the proposed amendment Philips provided to Fitbit in December did identify an
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`additional “Active Zone Minutes” feature of infringement, that feature has been removed from the
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`proposed amendment as reflected in Ex. I, (Dkt. No. 168-9), to Philips’s Motion. The “material
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`difference” Fitbit refers to is the removal of this infringement theory such that the proposed
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`amended contentions are solely focused on features previously accused of infringement.
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`While Philips regrets the omission of the charts for the Inspire 2, Sense, and Versa 3 in its
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`opening motion, as reflected in the attached Exhibits R, S, and T the proposed amendment for
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`these products is—as was the proposed amendment for the Charge 4—limited to these features
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`previously accused of infringement.
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`Tellingly, while Fitbit protests that the infringement claims against the new products were
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`not explored during discovery, it does not (and cannot) dispute that discovery was taken on the
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`accused features. What is more, Fitbit fails to identify any particular further discovery it would
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`need regarding its own products. From Philips’s perspective, the only additional necessary
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`discovery would be updated sales figures for the new accused products that Fitbit has already
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`agreed to provide were Philips to prevail on the present motion to amend its contentions.
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`Accordingly, there is no conceivable prejudice to Fitbit that could arise from any need for
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`unidentified discovery by Fitbit and Philips is not looking to reopen discovery with respect to these
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`products.
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`IV. FITBIT’S “CONVERSION” THEORY IS UNSUPPORTED BY ANY
`PRECEDENT
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`Fitbit does not cite a single instance where a court treated a patent application as a
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`“conversion” of a provisional application when it was—in fact—not a conversion in accordance
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`with 37 C.F.R. § 153(c)(3). Fitbit does not actually dispute that the requirements for actually
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`converting the ’486 Provisional into the application that led to the ’191 Patent were not met—
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`indeed, applicants never even attempted such a conversion. Fitbit’s argument is that because the
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`priority claim of the ’191 Patent colloquially referred to itself as a “conversion” of ’486 Provisional
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`the ’191 Patent should be treated like a conversion. Yet Fitbit cites no authority in support of this
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`proposition.
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`The cases Fitbit does cite to are inapposite because they address the failure to meet the
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`“specific reference” requirement of 35 U.S.C. § 120, and have nothing to do with conversions.
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`See 35 U.S.C. § 120 (“An application for patent . . . shall be entitled to the benefit of the filing
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`date of the first application and if it contains or is amended to contain a specific reference to the
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`earlier filed application.”). In Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741 F.3d
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`1359, 1366 (Fed. Cir. 2014), because the asserted patent failed to identify all of the prior patent
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`applications in the priority chain, the patent was not entitled to the earliest priority date. In Nat.
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`Alternatives Intl., Inc. v. Iancu, 904 F.3d 1375 (Fed. Cir. 2018), “because the fifth application
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`lacked priority to the first application, the eighth application’s priority claim to the first application
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`(via the fifth application) did not satisfy all of § 120’s requirements” because the fifth application
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`had disclaimed priority to the first application. Id. at 1381. The issue in the instant case is not
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`whether there is a “specific reference” to the ’486 Provisional, there undisputedly is. Fitbit simply
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`seeks to give legal import to the word “conversion” in this context where there is none, and no
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`court has ever found any.
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`What is more, the reason U.S. Patent Law was amended in 1999 to allow for the
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`“conversion” of a non-provisional into a provisional application as contemplated in 37 C.F.R. §
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`153(c)(3) was simply to comport U.S. Patent Law with the various requirements of international
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`treaties. 4 Chisum on Patents § 11.02[1][g][ii] (2021) (attached as Ex. W). Prior to this amendment,
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`provisional applications would expire without ever being able to themselves issue as a patent. See
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`id. This was problematic since, to claim priority in foreign countries the claim of priority must be
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`to an application that could itself mature into an issued patent. See id. By providing a mechanism
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`by which to convert a provisional application into a non-provisional, Congress established a
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`mechanism by which a provisional application could itself mature into a patent such that it would
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`qualify as the basis for a priority claim under international law. See id. This means that, in
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`practical terms, there is rarely any reason to actually convert a provisional application into a non-
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`provisional application pursuant to 37 C.F.R. 1.53(c)(3), and indeed the regulation cautions against
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`its use and suggests that applicants simply instead file a non-provisional application—which is
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`what applicants here did. See 37 C.F.R. 1.53(c)(3) (“[A]pplicants should consider avoiding this
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`adverse patent term impact by filing a nonprovisional application claiming the benefit of the
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`provisional application under 35 U.S.C. 119(e), rather than converting the provisional application
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`into a nonprovisional application pursuant to this paragraph.”). This is so despite colloquial use
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`of the term “conversion” amongst patent practitioners to the act of preparing a non-provisional
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`application that is based on an earlier provisional filing and simply filing it as a non-provisional
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`application that claims the benefit of the provisional—without ever having actually converted the
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`application under 37 C.F.R. 1.53(c)(3).
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`Finally, Fitbit fails to address Philips’s position that this dispute should not preclude
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`Philips’s ability to seek to amend its contentions, but rather is a dispute as to the merits best
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`adjudicated in due course.
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`V. CONCLUSION
`For the foregoing reasons and the reasons set forth in its opening memorandum, Philips
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`respectfully requests leave to serve the proposed amended infringement contentions attached as
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`Exhibits. I, R, S, and T.
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`Case 1:19-cv-11586-FDS Document 176 Filed 04/21/21 Page 11 of 12
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`Respectfully Submitted,
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` /s/ Ruben J. Rodrigues
`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
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`
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`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
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`Counsel for Plaintiff
` Philips North America LLC
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`Dated: April 21, 2021
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`Case 1:19-cv-11586-FDS Document 176 Filed 04/21/21 Page 12 of 12
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on April 21, 2021 a copy of the foregoing document
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`was filed with the Court through the ECF system and that a copy will be electronically served on
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`registered participants as identified on the Notice of Electronic Filing.
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`/s/ Ruben J. Rodrigues
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` Ruben J. Rodrigues
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