Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 1 of 25
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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 FITBIT INC.’S MEMORANDUM OF LAW IN SUPPORT OF ITS
`MOTION TO COMPEL THE PRODUCTION OF
`CERTAIN OF MR. ARIE TOL’S EMAIL COMMUNICATIONS
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`

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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 2 of 25
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...........................................................................................................................1
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`FACTUAL BACKGROUND & DISCOVERY SOUGHT .............................................................2
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`LEGAL STANDARDS ...................................................................................................................5
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`ARGUMENT ...................................................................................................................................6
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`I.
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`A PATENT AGENT’S ADVICE THAT DOES NOT PERTAIN TO MATTERS
`BEFORE A PATENT OFFICE IS NOT PROTECTED BY ATTORNEY-
`CLIENT PRIVILEGE. .........................................................................................................6
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`1.
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`2.
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`Patent Agent Communications Concerning Purported Pre-Suit
`Investigations And Litigation Are Not Privileged Under U.S. Law. .......................7
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`Patent Agent Communications Concerning Purported Pre-Suit
`Investigations And Litigation Are Not Privileged Under Dutch Law. ....................9
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`II.
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`III.
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`COMMUNICATIONS CONVEYING PRIMARILY BUSINESS ADVICE ARE
`NOT ATTORNEY-CLIENT PRIVILEGED OR WORK PRODUCT
`PROTECTED. ...................................................................................................................12
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`THE REQUESTED COMMUNICATIONS ARE NOT PROTECTED UNDER
`THE WORK PRODUCT DOCTRINE. .............................................................................15
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`CONCLUSION ..............................................................................................................................18
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`i
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 3 of 25
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`
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`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Anwar v. Fairfield Greenwich Ltd.,
`982 F. Supp. 2d 260 (S.D.N.Y. 2013)....................................................................... 6, 8, 11
`
`Atchison Casting Corp. v. Marsh, Inc.,
`216 F.R.D. 225 (D. Mass. 2003) ......................................................................................... 5
`
`Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc.,
`No. 95 CIV. 8833 (RPP), 1998 WL 158958 (S.D.N.Y. Apr. 2, 1998) ............................. 12
`
`Columbia Data Prod., Inc. v. Autonomy Corp.,
`No. CIV.A. 11-12077-NMG, 2012 WL 6212898 (D. Mass. Dec. 12, 2012) ................... 16
`
`E.I. du Pont de Nemours & Co. v. MacDermid, Inc.,
`No. CIV. A. 06-3383 MLC, 2009 WL 3048421 (D.N.J. Sept. 17, 2009) .......................... 9
`
`Gucci Am., Inc. v. Guess?, Inc.,
`271 F.R.D. 58 (S.D.N.Y. 2010) .......................................................................................... 8
`
`Hickman v. Taylor,
`329 U.S. 495 (1947) ............................................................................................................ 5
`
`In re Google Inc.,
`462 F. App’x 975 (Fed. Cir. 2012) ................................................................................... 12
`
`In re Grand Jury Subpoena,
`273 F. Supp. 3d 296 (D. Mass. 2017) ................................................................................. 6
`
`In re IPCom GmbH & Co., KG,
`428 F. App'x 984 (Fed. Cir. 2011) ................................................................................ 9, 10
`
`In re Queen’s University at Kingston,
`820 F.3d 1287 (Fed. Cir. 2016)................................................................................... 6, 7, 8
`
`In re Rivastigimine Pat. Litig.,
`239 F.R.D. 351 (S.D.N.Y. 2006) ...................................................................................... 11
`
`Intell. Ventures I, LLC v. Lenovo Grp. Ltd.,
`No. 16-CV-10860-PBS, 2019 WL 9096048 (D. Mass. Dec. 6, 2019) ..... 12, 14, 15, 16, 17
`
`Massachusetts Eye and Ear Infirmary v. QLT Phototherapeutics, Inc.,
`No. 00-CV-0783 (JLT), 2001 WL 1180694 (D. Mass. Sept. 25, 2001) ........................... 16
`
`Micronics Filtration Holdings, Inc. v. Miller,
`No. 18-CV-303-JL, 2019 WL 9104172 (D.N.H. Nov. 5, 2019) ....................................... 18
`
`
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`ii
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 4 of 25
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`Organon, Inc. v. Mylan Pharms., Inc.,
`303 F.Supp.2d 546 (D. N.J. 2004) ...................................................................................... 9
`
`PersonalWeb Techs., LLC v. Google Inc.,
`No. 13-C-01317-EJD, 2014 WL 4088201 (N.D. Cal. Aug. 19, 2014)..…………………17
`
`
`SanDisk Corp. v. Round Rock Rsch. LLC,
`No. 11-CV-05243-RS (JSC), 2014 WL 691565 (N.D. Cal. Feb. 21, 2014) ............... 15, 18
`
`Tulip Computers International B.V. v. Dell Computer Corp.,
`2002 WL 31556497 (Nov. 15, 2002 D. Del.) ..................................................................... 9
`
`U.S. v. McLellan,
`No. 16-CR-10094-LTS, 2018 WL 9439896 (D. Mass. Jan. 19, 2018) ............................... 5
`
`U.S. v. Textron Inc. & Subsidiaries,
`577 F.3d 21 (1st Cir. 2009) ......................................................................................... 16, 18
`
`VLT Corp. v. Unitride Corp.,
`194 F.R.D. 8 (D. Mass. 2000) ......................................................................................... 5, 6
`
`OTHER AUTHORITIES
`
`Bruil v. Tital International,
`Rechtbank Zutphen [District Court of Zutphen], 1 May 1988,
`ECLI:NL:RBZUT:1988:AB8996 (Neth.) ..................................................................... 9, 10
`
`Rijkswet van 15 december 1994 [Dutch Patent Act], Articles 23, 80, and 82, available at
`https://wetten.overheid.nl/BWBR0007118/2020-04-01#Hoofdstuk6_Artikel82 ....... 10, 11
`
`The EU Single Market Regulated Professions Database: Octrooigemachtigde
`(Netherlands), available at https://ec.europa.eu/growth/tools-
`databases/regprof/index.cfm?action=regprof&id_regprof=834&tab=general ................. 11
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`RULES
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`Fed. R. Civ. P. 26(b)(1)................................................................................................................... 5
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`Fed. R. Civ. P. 26(b)(3)................................................................................................................. 16
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`Fed. R. Civ. P. 26(b)(3)(A) ........................................................................................................... 16
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`Fed. R. Evid. 501 ............................................................................................................................ 5
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`iii
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 5 of 25
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`INTRODUCTION
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`Defendant Fitbit, Inc. (“Fitbit”) moves to compel Plaintiff Philips North America LLC
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`(“Philips”) to produce email communications Philips improperly withheld for privilege.
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`Specifically, Fitbit seeks to compel production of emails of Mr. Arie Tol, a Dutch patent agent
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`employed by Philips’s parent, Koninklijke Philips N.V., in its intellectual property licensing
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`division, Philips Intellectual Property and Standards (“Philips IP&S”). Mr. Tol has first-hand
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`knowledge regarding Philips’s licensing practices and policies, both generally and as they relate
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`to the litigation against Fitbit—matters relevant to Fitbit’s defenses. Nonetheless, both during Mr.
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`Tol’s deposition and in response to Fitbit’s subsequent requests for Mr. Tol’s relevant emails,
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`Philips prevented Fitbit from obtaining this relevant discovery by improperly invoking attorney-
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`client privilege and work product protection. Accordingly, Fitbit moves to compel certain entries
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`on Mr. Tol’s email privilege log (attached as Exhibit A (April 16 Privilege Log)) for three reasons.
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`First, Philips’s invocation of attorney-client privilege for communications exclusively
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`between Dutch patent agents and other non-attorney employees who were not acting at the
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`direction and control of a licensed attorney, and related to matters other than representation before
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`a patent office, has no basis in U.S. or Dutch law. Patent agent privilege extends only to matters
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`before a patent office, such as patent prosecution. As such, Philips’s claims of attorney-client
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`privilege over communications between patent agents related to the post-issuance assertion of
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`patents it acquired from third-parties and did not prosecute, is improper under U.S. law.
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`Additionally, to the extent Dutch law applies—and Fitbit contends that it does not—these
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`communications are not privileged because, like the U.S., the Netherlands does not recognize a
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`patent agent privilege for matters other than proceedings before the Netherlands Patent Office.
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`Second, regardless of the communicants, Philips improperly invokes attorney-client
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`privilege for communications that appear to deal primarily with business—rather than legal—
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`1
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 6 of 25
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`advice, particularly communications related to Philips’s licensing business and attempts to license
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`Fitbit or license the asserted patents. Communications dealing predominantly with business advice
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`or negotiations do not fall within the limited purview of attorney-client privilege.
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`Third, Philips invokes work product protection for communications as early as June
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`2015—four years before Philips filed its complaint in this case and well before the parties even
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`began, much less ended, amicable business discussions negotiating a potential license. Philips did
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`not have a reasonable expectation of litigation in 2015 and has not identified any other plausible
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`pre-filing date by which it formed a reasonable anticipation of litigation.
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`For these three reasons, Mr. Tol’s emails are not protected from discovery by attorney-
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`client privilege or as work product. Accordingly, Fitbit moves to compel the production of Mr.
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`Tol’s emails reflected at Entry Nos. 3-4; 19-21; 24; 26; 28; 30-31; 35-37; 42-43; 46-48; 58-66; 70-
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`73; 79; 82; 144; 155-156; 162-163; 208-209; 244-248; 260-270; 299-301; 349-350; 364; 382-383;
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`392; 394-395; 408; 412-431; 433; 437-438; 440-441; 443; 450-451; 458-460; and 463-464 in
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`Philips’s April 16 log.1 (Ex. A).
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`FACTUAL BACKGROUND & DISCOVERY SOUGHT
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`Philips acquired U.S. Patent Nos. 6,013,007 (“the ’007 patent”); 7,088,233 (“the ’233
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`patent”); and 8,277,377 (“the ’377 patent”) (collectively, the “Patents-in-Suit”) from third-parties
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`after they were prosecuted and issued. On October 10, 2016, Philips sent a letter to Fitbit stating
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`that “Philips is willing to discuss with Fitbit the terms and conditions of a non-exclusive,
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`worldwide license” for a variety of patents, including the currently-asserted patents in this case.
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`1 Philips’s May 28 and June 11 supplemental logs, (Exs. L & M), are not comprehensive; they
`relate to only a subset of the entries identified on the April 16 log. As such, Fitbit identifies the
`entry numbers enumerated on the April 16 log, the most recent complete log served by Philips.
`Because Philips’s privilege logs themselves have been marked confidential in their entirety, entries
`not subject to this motion have been redacted.
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`2
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 7 of 25
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`(Ex. B (Licensing Letters).) Philips sent similar correspondence to Fitbit on March 23 and April
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`13, 2017. (Id.) The parties subsequently discussed the possibility of what Philips called “business
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`discussions” related to a potential license throughout 2017 and 2018. (See Ex. C (2017 email
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`exchange); Ex. D (2018-2019 email exchange).) Despite these ongoing negotiations, Philips filed
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`the complaint in this matter on July 22, 2019.2
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`Philips licenses its intellectual property through its IP&S division, which is authorized to
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`license patents owned by Philips’s parent, Koninklijke Philips N.V. (See Ex. E (Tol Dep. Tr.) at
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`12:18-18:7; Ex. B.) Mr. Arie Tol is a registered Dutch patent agent (or “octrooigemachtigden”)
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`employed by Philips IP&S at its headquarters in Eindhoven, The Netherlands; Mr. Tol’s primary
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`responsibility is licensing Philips’s patents, not patent prosecution. (See Ex. E at 11:2-12:17.)
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`While Philips will likely refer to Mr. Tol as a “Dutch Patent Attorney,” Mr. Tol is not a bar-
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`admitted Dutch attorney-at-law (or “advocaat”). This title instead relates to his status as a patent
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`agent admitted to practice before the Netherlands Patent Office.
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`Pursuant to his duties at Philips IP&S, Mr. Tol has first-hand knowledge of Philips’s
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`licensing practices and policies, including Philips’s attempts to license the Patents-in-Suit to Fitbit
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`and others. Indeed, Mr. Tol was Philips’s primary representative in licensing discussions with
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`Fitbit. Nonetheless, Philips omitted Mr. Tol from its original Initial Disclosures and did not amend
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`its disclosures to include Mr. Tol until January 22, 2021—more than a week after Mr. Tol was
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`deposed. (See Ex. F (Philips Initial Disclosures); Ex. G (Philips Amended Initial Disclosures).)
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`Despite Philips’s omission, Fitbit sought discovery into Mr. Tol’s knowledge and
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`communications regarding Philips’s licensing practices and related topics during Mr. Tol’s
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`2 While Philips filed an infringement action against Fitbit in Germany in December of 2017, it
`continued to pursue commercial discussions with Fitbit in the U.S. through the service of the
`complaint in mid-2019.
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`3
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 8 of 25
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`January 13, 2021 deposition. However, Mr. Tol refused to testify as to those matters based on an
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`incorrect instruction from Philips’s counsel that such information is protected by attorney-client
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`privilege. (See, e.g. Ex. E at 59:3-62:1; Ex. H (January 2021 Letter to Philips).) As Fitbit was
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`unable to question Mr. Tol about those topics during his original deposition and Philips refused to
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`make Mr. Tol available for additional questioning (see Ex. I (February 2021 email from Philips)),
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`Fitbit subsequently requested that Philips search Mr. Tol’s electronically stored information,
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`including emails, for relevant communications.3
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`While Philips agreed to search Mr. Tol’s emails and ultimately produced a subset of the
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`email search hits on March 23, 2021—the last day of fact discovery—it also produced a privilege
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`log describing more than five-hundred of Mr. Tol’s emails that hit on the search terms, but were
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`withheld for privilege. Philips’s March 23 log continued to improperly assert attorney-client
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`privilege and work product protection as to communications that either: (1) occurred between
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`individuals to whom attorney-client privilege does not apply; (2) deal with subject matter—namely
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`business advice related to Philips’s commercial licensing practices—that is not privileged; or (3)
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`occurred well-before Philips could have plausibly formed a reasonable anticipation of litigation
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`such that work product protection could apply. (See Ex. J (March 23 Privilege Log).)
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`The parties met and conferred regarding Philips’s March 23 log, after which Philips agreed
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`to reevaluate the log in light of case law raised by Fitbit, namely that business advice is typically
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`not privileged. Philips subsequently produced an amended log on April 16, 2021 (see Ex. A),
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`removing some entries that reflect non-privileged business advice, but retaining many others with
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`modified descriptions—which previously suggested the communications deal with non-privileged
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`3 Pursuant to the email discovery provisions in the Stipulated Discovery plan, Fitbit requested these
`communications via search terms. (See D.I. 59.)
`4
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 9 of 25
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`discussions related to licensing—to instead indicate that the entries reflect legal advice.
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`The parties subsequently met and conferred about Philips’s amended log, and Philips
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`agreed to further assess the April 16 amended log and provide additional information
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`substantiating its bases for asserting privilege. Fitbit also requested that Philips name the employer
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`of each individual on Philips’s log and specify whether or not each individual is a bar-admitted
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`attorney-at-law (or “advocaat”). Philips provided that information via email. (See Ex. K.)
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`On May 28, 2021 and again on June 11, after multiple meet and confers, Philips amended
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`its April 16 log twice more, each time removing additional entries that it agrees were improperly
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`withheld as privileged and amending—or, in some instances, completely revising—the
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`descriptions of others. (See Ex. L (May 28 Log); Ex. M (June 11 Log).) Nonetheless, Philips’s
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`operative logs retain numerous entries reflecting improperly withheld communications. The
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`parties have met and conferred regarding these issues on multiple occasions, but are at an impasse.
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`LEGAL STANDARDS
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`A party may obtain discovery of “any non-privileged matter that is relevant to any party’s
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`claim or defense and proportional to the needs of the case….” Fed. R. Civ. P. 26(b)(1). “The
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`broad scope of the discovery rules reflects a policy that ‘[m]utual knowledge of all the relevant
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`facts gathered by both parties is essential to proper litigation.’” Atchison Casting Corp. v. Marsh,
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`Inc., 216 F.R.D. 225, 227 (D. Mass. 2003) (quoting Hickman v. Taylor, 329 U.S. 495, 507 (1947)).
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`“The common law—as interpreted by the United States courts in the light of reason and
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`experience—governs a claim of privilege.” Fed. R. Evid. 501. Pursuant to this Rule, U.S. courts
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`may apply the privilege law of foreign jurisdictions “when those jurisdictions have a strong interest
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`in the relationship at issue.” VLT Corp. v. Unitride Corp., 194 F.R.D. 8, 14-15 (D. Mass. 2000).
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`To determine whether U.S. or foreign privilege law applies to a given communication, courts in
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`the First Circuit apply the “touching base” test. See, e.g., id. at 15-16; U.S. v. McLellan, No. 16-
`5
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 10 of 25
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`CR-10094-LTS, 2018 WL 9439896, at *1-2 (D. Mass. Jan. 19, 2018).
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`“If a communication has nothing to do with the United States
`or…[has] only an incidental connection to this country, the privilege
`issue will be determined by the law of the foreign nation. If,
`however,
`the communication has more
`than an
`incidental
`connection to the United States, the courts will undertake a more
`traditional analysis and defer to the privilege of the nation having
`the most direct and compelling interest in the communication….”
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`VLT Corp., 194 F.R.D. at 16. “Communications concerning legal proceedings in the United States
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`or advice regarding United States law are typically governed by United States privilege law, while
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`communications relating to foreign legal proceedings or foreign law are generally governed by
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`foreign privilege law.” Anwar v. Fairfield Greenwich Ltd., 982 F. Supp. 2d 260, 263 (S.D.N.Y.
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`2013) (applying the touching base test to communications with foreign patent agents).
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`The party asserting attorney-client privilege or work product protection bears the burden
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`to prove that the withheld documents are, in fact, covered by the claimed privilege or protection.
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`See, e.g., In re Queen’s Univ. at Kingston, 820 F.3d 1287, 1291 (Fed. Cir. 2016) (attorney-client
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`privilege); In re Grand Jury Subpoena, 273 F. Supp. 3d 296, 304 (D. Mass. 2017) (work-product).
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`ARGUMENT
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`I.
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`A PATENT AGENT’S ADVICE THAT DOES NOT PERTAIN TO MATTERS
`BEFORE A PATENT OFFICE IS NOT PROTECTED BY ATTORNEY-CLIENT
`PRIVILEGE.
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`Philips withheld emails between Mr. Tol and other patent agents or non-attorney Philips
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`employees that do not relate to proceedings before a patent office, and Philips has not indicated
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`that these communications were made at the direction of or relayed the advice of any attorney.
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`Such communications are not entitled to patent agent privilege or attorney-client privilege. The
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`emails corresponding to the following entries on Philips’s April 16 log involve communications
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`exclusively between Philips’s in-house patent agents and other non-attorney employees: 3-4; 26;
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`6
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 11 of 25
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`28; 42; 46-48; 58-59; 65-66; 82; 155-156; 208-209; 349-350.4 These emails primarily relate to
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`the present U.S. litigation and Philips’s pre-suit investigation. As such, they touch base with the
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`U.S. and are governed by U.S. privilege law.
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`Because communications related to patent validity or infringement pertain to the Federal
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`Circuit’s exclusive jurisdiction, the application of privilege to such communications is governed
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`by Federal Circuit law. See, e.g., In re Queen’s, 820 F.3d at 1301. The scope of privilege for
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`patent agents not acting under the direction or control of a licensed attorney is limited. Importantly,
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`“[c]ommunications that are not reasonably necessary and incident to the prosecution of patents
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`before the Patent Office fall outside the scope of the patent-agent privilege.” Id. at 1301. “For
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`instance, communications with a patent agent who is offering an opinion on the validity of another
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`party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on
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`infringement,” are not per se privileged. Id. at 1301-02.
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`Because the U.S. does not recognize a privilege for patent agent communications unrelated
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`to proceedings before a patent office, these emails are not privileged and should be produced.
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`Moreover, even if these emails touch base with the Netherlands and Dutch privilege law applies,
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`they still are not privileged because, like the U.S., the Netherlands does not recognize a privilege
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`for patent agent communications unrelated to patent office proceedings.5
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`1.
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`Patent Agent Communications Concerning Purported Pre-Suit
`Investigations And Litigation Are Not Privileged Under U.S. Law.
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`Philips withheld numerous communications between Mr. Tol and other Dutch patent
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`agents or non-attorney employees on the basis of attorney-client privilege. As described in
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`4 Philips’s claims of work product protection for these communications is also incorrect, as
`addressed below.
`5 The scope of patent-agent privilege in other jurisdictions is beyond the scope of this brief, and
`Fitbit takes no position on such issues.
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`
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`7
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 12 of 25
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`Philips’s April 16 and supplemental logs, these communications predominantly relate to Philips’s
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`purported “pre-suit investigation” of Fitbit,6 or Philips’s “ongoing and threatened litigation with
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`Fitbit” in the U.S.7 (See, e.g., Ex. A at Entry Nos. 3-4; 246-248.) Thus, these communications
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`relate to Fitbit’s alleged infringement of U.S. patents arising from conduct within the U.S. and the
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`present U.S. patent infringement action. Such communications clearly have more than an
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`“incidental relationship” to the U.S. Indeed, the U.S. has a direct and compelling interest in
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`ensuring that its intellectual property laws are enforced according to and consistent with the
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`procedures and policies embedded in federal law. As such, these communications touch base with
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`the U.S. and are governed by U.S. privilege law. See, e.g., Anwar, 982 F. Supp. 2d at 263; Gucci
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`Am., Inc. v. Guess?, Inc., 271 F.R.D. 58, 65 (S.D.N.Y. 2010).
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`Mr. Tol and the other participants on the above-identified communications are either Dutch
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`patent agents or non-attorney employees—not licensed attorneys. Under U.S. privilege law,
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`“[c]ommunications that are not reasonably necessary and incident to the prosecution of patents
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`before the Patent Office fall outside the scope of the patent-agent privilege.” In re Queen’s, 820
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`F.3d at 1301. Thus, for example, “communications with a patent agent who is offering an opinion
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`on…the sale or purchase of a patent, or on infringement,” are not privileged. Id. at 1301-02.
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`Consequently, Dutch patent agent communications relating to licensing, pre-suit investigations of
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`infringement, or “ongoing or threatened” litigation do not fall within the limited scope of the
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`patent-agent privilege. Nor is there any indication that privilege might apply because these
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`6 As explained below, Fitbit believes that many of these communications in fact relate to Philips’s
`efforts and negotiations to license its patents to Fitbit in the U.S., rather than investigation or
`preparation for litigation.
`7 Entry Nos. 42-43, 46-47, and 155-156 purportedly relate to amendments to a patent purchase
`agreement between Philips and Roger Quy, a U.S. citizen and the named inventor and previous
`owner of the ’377 Patent. Because these communications relate to a transaction with a party in the
`U.S. for rights in a U.S. patent, these communications also touch base with the U.S.
`8
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 13 of 25
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`individuals were acting under the direction and supervision of licensed attorneys in the course of
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`these communications. See, e.g., E.I. du Pont de Nemours & Co. v. MacDermid, Inc., No. CIV.
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`A. 06-3383 MLC, 2009 WL 3048421, at *4 (D.N.J. Sept. 17, 2009) (finding that communications
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`made to patentee’s in-house patent agent were not privileged because the agent “was not acting
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`under the authority and control” of a licensed attorney). Indeed, in the course of providing its June
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`11 supplemental privilege log, Philips specifically noted that other entries contained the advice of
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`attorneys not directly party to the communication (see e.g., Ex. M at Entry Nos. 6-8), but made no
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`such representation as to these entries, further suggesting that licensed attorneys were not involved
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`in any way. Accordingly, Philips cannot withhold these communications on the basis of attorney-
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`client privilege.
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`2.
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`Patent Agent Communications Concerning Purported Pre-Suit
`Investigations And Litigation Are Not Privileged Under Dutch Law.
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`While Fitbit believes that U.S. law applies to the aforementioned patent agent
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`communications under the touching base test, applying Dutch law does not change the outcome.8
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`Like the U.S., the Netherlands does not recognize a privilege for patent agent
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`communications concerning topics other than proceedings before a patent office. See Bruil v. Tital
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`International, Rechtbank Zutphen
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`[District Court of Zutphen], 1 May 1988,
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`ECLI:NL:RBZUT:1988:AB8996 (Neth.)9; Tulip Computers International B.V. v. Dell Computer
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`Corp., 2002 WL 31556497, at *1 (Nov. 15, 2002 D. Del.); Organon, Inc. v. Mylan Pharms., Inc.,
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`303 F.Supp.2d 546, 547 (D. N.J. 2004) (interpreting Bruil to hold “that a [Dutch] patent agent may
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`not assert the privilege of non-disclosure for acts beyond the scope of his specific duties in
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`8 Because the choice of law issue is not dispositive, the court may render a decision based purely
`on U.S. law. See, e.g., In re IPCom GmbH & Co., KG, 428 F. App'x 984, 986 (Fed. Cir. 2011).
`9 A translated copy of a summary of this decision is attached as Ex. N. Despite diligent efforts,
`Fitbit was unable to locate a copy of the full decision in this matter.
`9
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`

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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 14 of 25
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`
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`rendering assistance with respect to patent applications.”). As explained in Bruil v. Tital
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`International, to Fitbit’s knowledge the only Dutch case law opining directly on the matter, the
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`scope of a Dutch patent agent’s privilege is limited to those specific activities for which s/he is
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`licensed—namely, “rendering assistance with the patent application.” (Ex. N at 1.) And while
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`subsequent amendments to the Dutch Patent Act (“DPA”) have acknowledged that Dutch patent
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`agents may more generally assist with acts and proceedings before the Netherlands Patent Office
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`and limited proceedings before the District Court of the Hague, the scope of a patent agent’s
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`licensure remains limited to those specific activities and, in particular, does not extend to the
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`general context of litigation, which requires admission to the Netherlands bar as an advocaat. See
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`Rijkswet van 15 December 1994
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`[Dutch Patent Act], Article 82, available at
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`https://wetten.overheid.nl/BWBR0007118/2020-04-01#Hoofdstuk6_Artikel82.10
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`During the parties’ meet and confers, Philips put forth a number of arguments purportedly
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`showing that, under Dutch law, a Dutch patent agent’s communications regarding matters not
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`before a patent office are nonetheless privileged. None are convincing, particularly since U.S. law
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`applies to the relevant communications under the touching base test.
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`First, Philips argued that such communications are de facto protected from discovery
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`because “Dutch courts do not provide for automatic discovery” and consequently “Dutch law
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`would protect these materials from discovery, regardless of whether a specific privilege applies.”
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`(See Ex. O (May 28 email from Philips).) Philips “cannot use [Dutch] discovery laws to shield
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`itself from producing documents that can be used to attack the validity or enforceability of its
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`patents” in U.S. litigation. In re IPCom, 428 F. App’x at 986.
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`Second, Philips argued that the Dutch Code of Civil Procedure (“DCCP”) provides only
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`10 All relevant sections of the DPA referenced herein are also attached as Exhibit S.
`10
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 15 of 25
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`“for a narrow and limited means to seek a court order demanding the production of documents”
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`and that “internal confidential communications of Philips’s Dutch Patent Attorneys would never
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`qualify for such relief.” (Ex. O.) But this argument has already been rejected by U.S. courts. See,
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`e.g., Anwar, 982 F. Supp. 2d at 266-68 (finding that “Dutch law allows wide-ranging document
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`disclosure” and requiring the production of communications of defendant’s in-house lawyer).
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`Third, Philips argues that the DCCP and DPA require patent agents to maintain the
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`confidentiality of information disclosed to them in the course of their profession as patent agents.11
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`(See Ex. O.) First, such provisions “create at most a professional secrecy obligation for patent
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`agents, not an absolute evidentiary privilege comparable to U.S. attorney-client privilege.” In re
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`Rivastigimine Pat. Litig., 239 F.R.D. 351, 357 (S.D.N.Y. 2006) (finding the comparable Swiss
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`statutes did not protect communications of Swiss patent agents from discovery). Second, such
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`provisions do not apply to the communications at issue because the subject matter of those
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`communications—U.S. litigation—does not fall within the professional capacity of a Dutch patent
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`agent as such. See The EU Single Market Regulated Professions Database: Octrooigemachtigde
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`(Netherlands) (explaining that patent agents “take[] care of the procedures for the acquisition and
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`maintenance of protection at the Netherland Patent Office” and that “[t]he exclusive service for
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`patent attorneys is limited to represent the client for the NL patent office with the exception of
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`services that are of administrative nature such as filing translations and the payment of annual
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`fees.”),
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`available
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`at
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`https://ec.europa.eu/growth/toolsdatabases/regprof/index.cfm?action=regprof&id_regprof=834&
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`
`11 For example, Article 23b of the DPA provides that “a patent attorney or a person working under
`his responsibility is obliged to observe secrecy with regard to all information of which he becomes
`aware by virtue of his activities as such.” Dutch Patent Act, Article 23b, available at
`https://wetten.overheid.nl/BWBR0007118/2010-10-10#Hoofdstuk2_Paragraaf1a_Artikel23a.
`11
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`Case 1:19-cv-11586-FDS Document 199 Filed 06/18/21 Page 16 of 25
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`tab=general.
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`In sum, to the extent Philips’s Dutch patent agents engage in activities beyond
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`representation before a patent office, they do so outside the scope of their capacity as a patent agent
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`and any attendant privilege under Dutch law. While it may be true that in practice, Philips’s patent
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`agents’ responsibilities are broader than representation before the patent office, tha