Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 1 of 7
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`Exhibit H
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`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 2 of 7
`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 2 of 7
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`PAUL —
`
`HASTINGS
`
`1(650) 320-1832
`yarchaikovsky@paulhastings.com
`
`January 26, 2021
`
`VIA EMAIL
`
`Eley 0. Thompson
`Foley & Lardner LLP
`321 North Clark Street Ste 3000
`
`Chicago, Illinois 60654-4762
`
`Mr. Thompson:
`
`We write regarding the deposition of Mr. Arie Tol on January 13, 2021, and the improper
`privilege objections that prevented Fitbit from obtaining answers to questions that are not
`protected by any applicable privilege. Please provide your availability for a meet and confer at
`your earliest convenience to discuss Mr. Tol’s continued deposition and whether Philips intends
`to continue shielding Mr. Tol’s testimony through these improper objections, several examples
`of which are detailed below.
`
`In particular, as I stated during the deposition, 3 “yes or no” question whether Philips’
`Intellectual Property and Standards (“IP&S”) business unit has internal licensing royalty target
`numbers or ranges when it initiates a licensing campaign against a third-party is not covered by
`any applicable privilege. This information is relevant to Fitbit’s notice to Philips that it intends to
`seek attorneys’ fees under 35 U.S.C. § 285 in this action. None of these questions sought
`information protected by the attorney-client or work product privilege, something I tnade clear
`during the deposition. Foley’s attempt to shield this business information from disclosure
`through a privilege objection is improper.
`
`I highlight two illustrative examples of the improper objections made during Mr. Tol’s
`deposition below:
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`Jan. 13,2021 Tol Tr. at 59:3—62zl:
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`Q. Okay. And as of today, in your position at Philips, is there a goal or outcome
`that you were expected to achieve on the Fitbit project?
`
`MR. THOMPSON: I'm going to object and instruct not to answer as the goals
`and -- of this case. with a person who is in the day-to-day group relating to the
`case. who has advice by Foley and a whole bunch of other attomeys. is attorney
`work product and attorney-client privilege so I instruct him not to answer.
`
`Paul Hastings LLP I 1117 S. California Avenue | Palo Alto. Caitornia 94304
`t: +1.650.320.1800 I www.paullia$1ings.com
`
`

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`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 3 of 7
`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 3 of 7
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`PAUL
`
`HASTINGS
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`January 26, 2021
`Page 2
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`MR. CHAIKOVSKY: And just for that instruction. Mr. Thompson, and the
`earlier instruction that you provided with respect to the prior questions, can you
`state the basis for the privilege on the record?
`
`MR. THOMPSON: [just did.
`
`MR. CHAIKOVSKY: No, you did not. You stated that, "has advice by Foley
`and a whole bunch of other attorneys, is attomey work product and attomey-
`client privilege sol instruct him not to answer."
`And what I'm saying is -- you know, Foley is not intemal to Fitbit. You know.
`you don't exist internal —— sorry, to Philips. You don't exist internally to Philips,
`and so when Philips creates its kind of outcome with respect to what its goals
`and its projects are, whether it's Fitbit, Garmin or other projects, you know.
`Foley & Lardner is not there. And so what I'm asking for is what's the basis of
`the privilege -- all of those questions I asked before the break, on any project,
`Fitbit, Garmin or otherwise, how is that privileged?
`
`MR. THOMPSON: Well, sure. So you asked what‘s the goal or outcome of the
`case; so, I mean, I'll outline it but I think this will be familiar to you because I‘m
`sure that you do the same thing in other cases. So when you assess a case, right,
`you look at the actions of the defendant. Here, Fitbit, right. You look at how
`long they've infringed the patents and the situation in which they infringe the
`patents. which leads to damages to Philips. You assess that and then when you
`assess that, then it goes into what would be the, as you characterized it, goal or
`outcome of the litigation. That is all part of the assessment of the case and it's
`also part of attomey-client privilege.
`
`MR. CHAIKOVSKY: Okay. And so let's refer not to the Fitbit matter. Let's
`refer to any project within IP&S. And any project in IP&S, you can't make that
`representation, and so -- and, in fact, I would assume -- and I'll ask the question,
`I would assume outside counsel's not involved in many ofthe IP&S' projects.
`And so the questions I asked prior to the break were not tied to F itbit at all. They
`were -- you know. they were asking about projects within the group and
`compensation with respect to those projects and targets, and so that answer or
`that response you just gave me with respect to privilege wouldn't apply -— I can
`have a debate about whether it even applies to Fitbit even. But let's focus on the
`broader notion of targets on any projects and what the basis of that privilege is.
`How is that privileged?
`
`MR. THOMPSON: I don't think —— first off, I don't agree with your
`characterization of there being targets. What there is, especially in regards to
`Fitbit, is a course of action taken by Fitbit where they willfully disregarded the
`patent rights of Philips. They caused tremendous damage to Philips that led to
`Philips seeking redress in this case. So that is -- that's what's going on here.
`
`Jan. 13,2021 Tol Tr. at 50:19—54:22, 57:7—18:
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`BY MR. CHAIKOVSKY:
`
`Q. And then, so that same question: During the course oftalking to a licensee
`where Philips is -- I‘m sorry, Fitbit is one example, does the expectation ofthe
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`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 4 of 7
`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 4 of 7
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`PAUL
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`HASTINGS
`
`January 26, 2021
`Page 3
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`amount of royalties change given the results of the discussion or the results of
`any litigation, for example?
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`MR. THOMPSON: You know, I think at this point, the nature of your question,
`you‘re asking a person within the litigation group, outside of a 30(b)(6) topic, the
`discussions that the outside counsel and they have relating to the liability
`because of F itbit's wilful infringement of the patents owned by Philips, and that
`assessment, as you know, Yar, is privileged on a number oflevels: it's privileged
`at the work-product level; it's privileged at the attomey-client privilege level.
`And so I think that when you ask your question like this, to the extent that
`there's something that would be outside that, and I can't envision what it would
`be, he can answer. But as far as the discussions that happened between —- and the
`work that's dorte relative to this case in addressing the wilful infringement by
`Fitbit and the monies that Fitbit has made without paying a license to Philips,
`then that's just not -- that's privileged and so I'll instruct him not to answer in
`that regard.
`
`MR. CHAIKOVSKY: I don't disagree that any discussions had with you, Eley --
`or, Mr. Thompson -- are privileged and any discussions with you are work
`product. I disagree with you that any discussions internally with Philips with
`respect to their IP licensing business and the revenue expectations, whether
`that's an absolute number or a range, are privileged. I don‘t believe they're
`privileged. I don‘t believe the judge will find them privileged and. again. we will
`-- you know, to the extent this witness doesn't answer today. we'll just be
`bringing him back after speaking to the Court about it
`BY MR. CHAIKOVSKY:
`
`Q. So. again, 1 will ask the question one more time. You know, is there an
`absolute number or a range of numbers that Philips expects to receive from a
`licensee such as Fitbit and does that number change over time based on the
`negotiations and/or litigation; yes or no?
`
`MR. THOMPSON: The details relating to the assessment of the damages caused
`by Fitbit's wilful infringement and what that would be liability—wise, and then, of
`course, thereby resulting in the settlement negotiations that Arie has been
`involved in -- and so have I, and so have you, as a matter of fact -- along the
`way are privileged and so I instruct him not to answer on that.
`
`MR. CI’IAIKOVSKY: I, again, am not asking Mr. To] for any damage
`calculation or any number that you would put forward in a litigation and in a
`court in the United States that is developed by your firm, and, let's say, that
`could be work product. I'm asking for internal calculations done withinside
`Philips, for example internal calculations that would have been done even before
`you likely were hired, Mr. Thompson, and Foley & Lardner was engaged for
`this matter. I'm asking for those numbers. They're not privileged, they won't be
`privileged. Again, if Mr. Tol's not willing to provide them today, we'll just raise
`it with Mr. Talwani.
`BY MR. CHAIKOVSKY:
`
`Q. So. Mr. Tol. are you not willing to answer my question?
`
`MR. THOMPSON: That's not what he said, and that -- I told you that we would
`discuss it. But I think that if you could ask a particular question in that regard
`
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`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 5 of 7
`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 5 of 7
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`PAUL
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`H A S T I N G 8
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`January 26, 2021 —
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`Page 4
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`where you're trying to -- I guess you're trying to get as close to privileged and
`work-product information that you can. I appreciate that that's fine, Yar. but I
`think you need to ask a specific question so we can discuss it.
`
`BY MR. CHAIKOVSKY:
`
`Q. And I think one example, although there are several in the realtime transcript,
`is: Does Philips maintain an absolute number or a range ofnumbers that it
`expects to receive from any licensee“! One example of that is Fitbit. And does
`that number change over time based on the course of negotiations and/or the
`results of litigation?
`
`MR. THOMPSON: I think, by its own nature, your question asks for work
`product and privileged information.
`
`MR. CHAIKOVSKY: Okay. I disagree because it's Philips’ business unit, the [P
`business unit that's doing that. You know, happy to have the dispute about that.
`Now would be a good time to have a break, you can have a discussion with your
`client. but that's something we're going to raise with Judge Talwani because I
`think it‘s very clear that that business information of Philips. in its IP unit, is not
`privileged in any way.
`
`MR. CHAIKOVSKY: Okay. If you assessed the privilege, what was the
`outcome of your assessment, Mr. Thompson?
`
`MR. THOMPSON: The outcome of my assessment was that what 1 had said
`earlier on the record was accurate.
`
`MR. CHAIKOVSKY: Okay. Sojust so I understand, the witness will not be
`answering the questions that were posed just prior to the break based on your
`instruction not to answer as privileged, correct?
`
`MR. THOMPSON: That's right.
`
`In addition to the above two example, improper privilege objections were made to similar
`questions seeking simple “yes or no” answers not protected by privilege at least at 48: 16—49: 1,
`8622—88219, 92:23—96:14, 106:5—23, 107220—108z7, 111:17—1 12:3, 153:11—154210, 155:6—
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`157zl4, 170213—17522.
`
`Indeed, even when I posed a question specifically requesting answer outside the scope of Foley
`and Lardner’s involvement in this case, Mr. T0] was still instructed not to answer based on
`“attomey-client privilege and work product." This instruction is not proper.
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`

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`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 6 of 7
`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 6 of 7
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`PAU L
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`HASTIN GS
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`January 26, 2021 —
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`PageS
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`Jan. 13, 2021 T01 Tr. at 67:16—68:17:
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`BY MR. CHAIKOVSKY:
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`Q. Mr. Tol. I'll ask: With respect to Philips' licensing efforts in the United
`States. does Philips identify a royalty number or a royalty range that it expects to
`achieve from a prospective licensee when it initiates discussions with that
`licensee?
`
`MR. THOMPSON: I'm going to object on the same basis as before and instruct
`not to answer, as attomey-client privilege and attomey work product.
`
`MR. CHAIKOVSKY: And that objection stands whether outside counsel is
`involved in the discussions or not, Mr. Thompson?
`
`MR. THOMPSON: It stands based upon the application of attomey-client
`privilege and work product.
`
`MR. CHAIKOVSKY; And you would apply that even in the absence of outside
`counsel involvement is what I'm asking? That will shortcut questioning.
`
`MR. THOMPSON: I think that it applies -- it applies both when outside counsel
`is involved and when other counsel is involved.
`
`MR. CHAIKOVSKY: And the other counsel that you're referring to there is
`counsel inside of Philips?
`
`MR. THOMPSON: It can be.
`
`As shown in the above examples, Mr. T0] was instructed not to answer a number of “yes or no”
`questions seeking information related to business decisions by Philips’ IP&S business unit, none
`of which sought privileged information, and none of which are covered by an applicable
`privilege. These improper objections impeded the testimony of Mr. To].
`
`Furthennore, Philips produced a number of documents relating to a license with MlO Global less
`than 24 hours before Mr. Tol’s deposition. These documents were related to Topic 1 1 in Fitbit’s
`Rule 30(b)(6) deposition notice to Philips, a topic for which Philips identified Mr. T01 as its
`corporate designee. Fitbit expects to discuss this topic, along with topics shielded from the first
`session of Mr. Tol’s deposition through improper privilege objections in a subsequent deposition
`session with Mr. Tol.
`
`In particular, for the remaining duration of Mr. Tol’s deposition, in addition to questions on the
`M10 Global license for which he has been designated as Philips’ corporate representative, Fitbit
`expects Mr. Tol to answer questions in his personal capacity about the business practices of
`Philips’ IP&S business unit, including those strategies as they relate to Philips’ licensing and
`litigation policies in general. As I stated during the deposition, we are not seeking work product
`prepared because of this particular case or communications with Foley and Lardner made for the
`
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`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 7 of 7
`Case 1:19-cv-11586-FDS Document 200-8 Filed 06/18/21 Page 7 of 7
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`PAUL
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`HASTINGS
`
`January 26, 2021
`Page 6
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`sole purpose of providing legal advice. However, discussions “encompassing business strategy
`and decision-making are not privileged, regardless of whether the business decisions may have a
`legal impact on [the company].” Wilstein v. San Tr'opai Condo. MasterAss’n, 189 F RD. 371,
`379 (ND. Ill. 1999).
`
`And "[i]t is beyond dispute that parties seeking to establish the privilege are required to
`sufficiently establish the communication at issue relates to professional legal services (as
`opposed to business considerations)" In re Google Inc, 462 F. App'x 975, 978 (Fed. Cir. 2012).
`Should Philips contend that a privilege shields Mr. Tol’s testimony on the licensing business
`strategies of Philips’ IP&S unit, Fitbit intends to seek all applicable relief for Philips’ improper
`privilege objections including its fees, from Judge Talwani.
`
`Please provide your availability for a meet and confer at your earliest convenience so that we
`may discuss the date and conduct for Mr. Tol’s continued deposition.
`
`Sincerely,
`
`/s/ Yar R. Chaikovsky
`
`Yar R. Chaikovsky
`
`