Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 1 of 24
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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.
`
`Civil Action No. 1:19-cv-11586-FDS
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`
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`PLAINTIFF’S OPPOSITION TO FITBIT, INC.’S MOTION TO COMPEL THE
`PRODUCTION OF CERTAIN OF MR. ARIE TOL’S EMAIL COMMUNICATIONS
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`

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`
`
`I. 
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`II. 
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`III. 
`
`A. 
`
`i. 
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 2 of 24
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1 
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`PHILIPS’S APPROACH TO PATENT ENFORCEMENT AND LICENSING
`AGAINST FITBIT BEGAN WITH DEVELOPING AN INFRINGEMENT CASE
`AGAINST FITBIT.............................................................................................................. 2 
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`CORRESPONDENCE THAT FITBIT SEEKS TO COMPEL IS PRIVILEGED UNDER
`BOTH U.S. AND FOREIGN LAW ................................................................................... 4 
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`The Challenged Correspondence that “Touches Base” with the United States is Privileged
`............................................................................................................................................. 5 
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`U.S. Courts and U.S. Law Recognize that Communications with Foreign Patent
`Attorneys/Agents Are Privileged to the Extent They Fall Within the Scope of Work that a
`Foreign Patent Attorney/Agent Is Authorized To Do. ........................................................ 5 
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`(a) Privileged communications. A communication between a client and a USPTO patent
`practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and
`incident to the scope of the practitioner’s authority shall receive the same protections of
`privilege under Federal law as if that communication were between a client and an
`attorney authorized to practice in the United States, including all limitations and
`exceptions. .......................................................................................................................... 7 
`
`ii. 
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`B. 
`
`i. 
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`ii. 
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`IV. 
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`The Challenged Correspondence Was Made in Anticipation of Litigation And Is Also
`Protected for Discovery As Work Product ......................................................................... 8 
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`Applying Dutch Law, the Challenged Correspondence Would Also Be Privileged ........ 10 
`
`A Dutch Patent Attorney’s Authorized Scope of Work Extends Well Beyond Merely
`Advising on Patent Prosecution ........................................................................................ 11 
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`Under Dutch Law, the Challenged Correspondence Would Never Be Produced. ........... 16 
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`THERE IS NO BASIS FOR FITBIT’S ASSERTION THAT CERTAIN
`COMMUNICATIONS RELATE PRIMARILY TO BUSINESS ADVICE .................... 18 
`
`V. 
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`CONCLUSION ................................................................................................................. 19 
`
`
`
`i
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 3 of 24
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases 
`Anwar v. Fairfield Greenwhich Ltd., 982 F. Supp. 2d 260 (S.D.N.Y. 2013) ............................... 17
`Bruil v. Tital, Int’l, Rechtbank Zutphen [District Court of Zutphen], 1 May 1988,
`ECLI:NL:RBZUT:1988:AB8996 (Neth.) ................................................................................. 14
`Columbia Data Products, Inc. v. Autonomy Corp. Ltd., No. 11-12077-NMG, 2012 WL 6212898
`(Dec. 12, 2012) ........................................................................................................................... 9
`In re Grand Jury Subpoena, 220 F.R.D. 130 (D. Mass. Mar. 16, 2004) ........................................ 8
`In re IPCom GmbH & Co., KG, 428 F. App’x 984 (Fed. Cir. 2011) ........................................... 17
`In re Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016) ......................................... 6
`Intell. Ventures I, LLC v. Lenovo Grp. Ltd., No. 16-cv-10860-PBS, 2019 WL 9096048 (D. Mass.
`Dec. 6, 2019) ............................................................................................................................. 19
`Knauf Insulation, LLC v. Johns Manville Corp., No. 1:15-cv-00111, 2019 WL 4832205 (S.D.
`Ind. Oct. 1, 2019) ............................................................................................................... passim
`Maine v. U.S. Dep’t of Interior, 298 F.3d 60 (1st Cir. 2002) ......................................................... 8
`Organon, Inc. v. Mylan Pharms., Inc., 303 F. Supp. 2d 546 (D. N.J. 2004) ................................ 14
`Tulip Computers Int’l B.V. v. Dell Computer Corp., 2002 WL 31556497 (D. Del. Nov. 15, 2002
`................................................................................................................................................... 14
`Upjohn Co. v. U.S., 449 U.S. 383 (1981) ....................................................................................... 4
`U.S. v. Textron Inc. & Subsidiaries, 577 F.3d 21 (1st Cir. 2009) ............................................... 8, 9
`VLT Corp. v. Unitrode Corp., 194 F.R.D. 8 (D. Mass 2000) ......................................................... 5
`
`Statutes 
`37 C.F.R. § 42.57 ............................................................................................................................ 7
`
`Other Authorities 
`Comments and Response with Regard to 37 C.F.R. § 42.57, 82 Fed. Reg. 51,572 (Nov. 7, 2017).
`..................................................................................................................................................... 7
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`
`ii
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 4 of 24
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`I.
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`INTRODUCTION
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`Mr. Arie Tol has been a registered Dutch Patent Attorney since the year 2000, and in his
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`current role serves as a Principal Licensing Counsel for Philips, where he has worked since 1995.
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`(See Ex. 1, Tol. Decl. ¶ 1.) Mr. Tol is also the patent attorney at Philips principally responsible
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`for overseeing not only the present litigation pending in the District Massachusetts, but also the
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`litigation matters pending against Fitbit before the U.S. International Trade Commission, and
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`earlier matters relating to European Patents involving Fitbit or Garmin in Germany and the United
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`Kingdom.1 This is not a case where Philips has refused—wholesale—to produce Mr. Tol’s
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`correspondence on some blanket assertion of privilege over his communications. To the contrary,
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`and in accordance with the parties’ agreement to run search terms on Mr. Tol’s e-mail, Philips
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`produced 685 documents from Mr. Tol’s e-mail that related to business issues as opposed to legal
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`advice or pre-suit investigations—a production totaling 4,279 pages.2
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`Of course, given Mr. Tol’s role as a Dutch Patent Attorney,3 who not only advises on the
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`prosecution of patent applications, but also manages patent infringement disputes—including the
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`1 Fitbit accuses Philips of “omitting” Mr. Tol from its initial disclosures. To be clear, Fed. R.
`Civ. P. 26(a)(1)(A)(i) requires an identification of witnesses that a disclosing party “may use to
`support its claims or defenses.” Until Fitbit sought to depose Mr. Tol in this action, Philips had
`no intent on relying on his testimony at trial, and had no obligation to disclose him.
`2 Fitbit notes that Mr. Tol’s documents were produced on “March 23, 2021—the last day of fact
`discovery,” however Fitbit’s first request that Philips run search terms on Mr. Tol’s e-mails was
`made on January 15, 2021. The parties then negotiated the scope of terms to be searched,
`reaching an agreement on March 4th, 2021.
`3 Fitbit refers to Mr. Tol and other Dutch Patent Attorneys as “Patent Agents” in an effort to
`equate the scope of Mr. Tol’s authorized scope of work under Dutch law as limited to the
`equivalent of a U.S. Patent Agent. However, as explained in more detail throughout this
`opposition, and in the accompanying expert declaration of Dutch Law Professor Willem Hoyng
`(see Ex. 2, Hoyng Decl.), the authorized scope of work for a Dutch Patent Attorney is not so
`limited. While Mr. Tol, those at Philips, and others in the Dutch larger legal community appear
`to use the term “attorney” rather than “agent” to describe the role of “Dutch Patent Attorney”—
`whether one uses the term “agent” or “attorney” should not matter, what matters is the scope of
`the role as authorized under Dutch law—which is broader than merely advising on the
`prosecution of patent applications.
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`1
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 5 of 24
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`present and related cases—it should not be surprising that many of communications that happened
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`to hit on Fitbit’s search terms are privileged and were, accordingly logged. As explained below,
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`the documents would be protected from discovery under both U.S. and Dutch law, and there is no
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`basis on which to compel their discovery.
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`While Philips’s initial privilege log included a number of errors attributable to the number
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`of documents to be reviewed and mistakes initially made by some of the individuals reviewing
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`those materials, Philips has repeatedly engaged in a good faith effort to correct those errors and
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`provide additional detail on any privilege log entry for which Fitbit has sought additional
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`information. Indeed, since the initial privilege log Philisp has produced many documents that were
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`originally logged but, upon further inspection, were not protected from discovery.
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`II. PHILIPS’S APPROACH TO PATENT ENFORCEMENT AND LICENSING
`AGAINST FITBIT BEGAN WITH DEVELOPING AN INFRINGEMENT CASE
`AGAINST FITBIT
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`As described in Mr. Tol’s accompanying declaration, Philips’s approach to licensing
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`almost always starts with identifying infringers against whom Philips could bring a legal claim
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`for patent infringement (whether in the U.S., Europe, Asia, or elsewhere), and this was indeed
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`the approach taken by Philips in preparing to put Fitbit on notice of its infringement and then
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`filing suit against Fitbit (first in the Europe, later in the United States). (See Ex. 1, Tol. Decl. ¶
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`3.) As explained by Mr. Tol, Philips began evaluating whether certain Fitbit and Garmin
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`products infringed Philips patents in 2015, and Dutch Patent Attorney Erik Pastink was primarily
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`responsible for this work. (Id. ¶ 4-5). Because of the similarities in the infringing Fitbit and
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`Garmin technologies, and the overlap in patents to be asserted against each entity, the effort
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`2
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 6 of 24
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`focused on both Fitbit and Garmin from the very beginning, and much correspondence relates to
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`both matters. Id.
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`While Fitbit attempts to portray the time between Philips’s initial investigation
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`concerning its legal claims for patent infringement against Fitbit and Garmin in 2015, and the
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`actual filing of this specific lawsuit in 2019 (a mere four years later) as too long a period of time
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`to justify Philips’s claims of privilege and work product protection, this ignores the timeline of
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`the dispute. Philips’s investigation led to letters notifying both Fitbit and Garmin of
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`infringement the very next year, in 2016, and led to Philips to file suits for patent infringement
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`against both Fitbit and Garmin in Europe the following year, in 2017. (See, generally, Ex. 1, Tol.
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`Decl. ¶¶ 4-8.)
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`Contrary to Fitbit’s suggestion that correspondence relating to the notice letters merely
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`related to “business” rather than legal advice, the notice letter to Fitbit unequivocally notified
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`Fitbit of Philips’s legal claims: “This letter serves as formal notice that the Fitbit products and
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`services as indicated and identified in Exhibit 1, as well as Fitbit products and services having
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`equal or similar functionality, all infringe one or more Philips owned or controlled granted U.S.
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`patents and their foreign counterparts,” and then identified seven specific U.S. Patents, including
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`the three patents presently asserted in this case. (See Ex. 1.B at 1.) The letter then additionally
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`further identified in a chart patents throughout the globe that Fitbit was infringing, noting that
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`“All Fitbit products and services having equal or similar functionality also infringe the Philips’
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`patents identified in this Exhibit 1.” (Id. at 3.)
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`Despite engaging in efforts with both Fitbit and Garmin to settle Philips’s claims for
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`patent infringement through a license, the parties did not reach agreement and in 2017 Philips
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`initiated infringement proceedings against both Fitbit and Garmin. (See Ex. 1, Tol. Decl. ¶¶ 8-9.)
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`As Mr. Tol explains, these European litigations were the focus of his team at Philips’s efforts in
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`3
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 7 of 24
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`2017 and 2018, with Philips then turning to litigation in the United States in 2019 (which it
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`nonetheless began anticipating and preparing for in 2015). (Id. ¶¶ 11-13.)
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`III. CORRESPONDENCE THAT FITBIT SEEKS TO COMPEL IS PRIVILEGED
`UNDER BOTH U.S. AND FOREIGN LAW
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`Federal common law, “as interpreted by United States courts in the light of reason and
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`experience – governs a claim of privilege.” Fed. R. Evid. 501. “The attorney-client privilege is
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`the oldest of the privileges for confidential communications known to the common law. Its
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`purpose is to encourage full and frank communications between attorneys and their clients and
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`thereby promote broader public interests in the observance of law and administration of justice.”
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`Upjohn Co. v. U.S., 449 U.S. 383, 389 (1981) (internal citations omitted). “[T]he purpose of the
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`privilege [is] to encourage clients to make full disclosure to their attorneys.” Id. (internal
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`quotations and citations omitted).
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`Fitbit is correct that this district applies the “touch base” approach to determine the
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`choice of law when evaluating whether communications involving foreign counsel are
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`privileged. Because of the approach taken by Philips in preparing for litigation early against
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`Fitbit, almost all the correspondence that Fitbit seeks to compel involves both U.S. and Foreign
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`patents.4 Accordingly, this case presents a unique situation where most communications
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`arguably “touch base” with the United States because they involve the enforcement of a U.S.
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`Patent or a contract dispute under U.S. law, while other aspects of the same communication
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`would not, because they relate to the enforcement of non-U.S. patents. Fortunately, and as
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`4 The exceptions to this are Entry Nos. 8, 59, 82, 208, and 209 which as explained in Mr. Tol’s declaration, relate
`only to foreign patents.
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`4
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 8 of 24
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`explained in more detail below, whether U.S. Law or Dutch Law applies, the communications
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`are privileged and protected from discovery.
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`A.
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`The Challenged Correspondence that “Touches Base” with the United
`States is Privileged
`i.
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`U.S. Courts and U.S. Law Recognize that Communications
`with Foreign Patent Attorneys/Agents Are Privileged to the
`Extent They Fall Within the Scope of Work that a Foreign
`Patent Attorney/Agent Is Authorized To Do.
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`For the portions of communications that touch base with the United States, and for which
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`U.S. Law governs, the communications are privileged. While this district has previously
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`recognized that questions of privilege involving foreign practitioners can be both “fascinating”
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`and “very difficult,” (See VLT Corp. v. Unitrode Corp., 194 F.R.D. 8, 10 (D. Mass 2000)), at
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`least one other district court has already rejected many of the arguments now advanced in Fitbit’s
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`motion in denying a very similar motion to compel.
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`In Knauf Insulation, LLC v. Johns Manville Corp., No. 1:15-cv-00111, 2019 WL
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`4832205 (S.D. Ind. Oct. 1, 2019), the Court denied a motion to compel communications with a
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`foreign patent attorney/agent,5 including communications that were not limited to advising on
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`patent prosecution. The Court, applying U.S. Law pursuant to the “touch base” test, held that the
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`scope of privilege for communications with foreign patent attorneys or agents may be broader
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`under U.S. Law than that accorded a U.S. Patent Agent, noting that what matters for such an
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`analysis is whether the foreign practitioner is acting within their authorized scope of practice
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`according to foreign law. See Knauf, 2019 WL 4832205 at *5-6 (“agreeing with the Patent and
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`Trademark Office’s determination that “the patent-agent privilege should apply to foreign patent
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`agents acting within the scope of their authority, however that may be defined in their home
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`5 In Knauf the party challenging privilege, much as Fitbit does here, also characterized the role of a U.K. Patent
`Attorney as limited to that of a “patent agent” and repeatedly referred to the U.K. Patent Attorney at issue there as an
`“agent” rather than an “attorney”, despite the fact that within the U.K. said practitioners were referred to as “Patent
`Attorneys.” See Knauf, 2019 WL 4832205 at *2.
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`5
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 9 of 24
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`country.”) In Knauf, because a U.K. Patent Attorney’s practice was not limited merely to
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`advising on the prosecution of patent applications and extended more broadly to advising on
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`patent related matters more generally, the Court upheld the claim of privilege:
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`There is no suggestion, however that Farmer [the U.K. Patent
`Attorney/Agent at issue] was acting outside of his authority as a
`U.K. [emphasis in original] patent agent, which is the relevant
`inquiry. In other words, while JM argues that applying U.S.
`privilege law to foreign patent agents means applying the patent-
`agent privilege only to communications that relate to services that
`patent agents are permitted to provide in the United States, the Court
`disagrees. Rather, as long as the patent agent in question is subject
`to regulation in his or her own country analogous to being registered
`with the Patent Office in this country, applying U.S. privilege law
`to foreign patent agents means applying the patent-agent
`privilege to communications relating to services that the patent
`agent is permitted to provide in the patent agent’s own country.
`To hold otherwise would be contrary to the goal of protecting the
`client’s reasonable expectation of privilege in its communications
`with its legal advisor.
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`See Knauf, 2019 WL 4832205 at *5 (emphasis added).
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`Fitbit misreads In re Queen’s University at Kingston, 820 F.3d 1287, 1301 (Fed. Cir.
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`2016) as somehow limiting the scope of a foreign patent attorney/agent’s work that is entitled to
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`privilege. However, as explained extensively in Knauf, which specifically considered and
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`rejected this very same argument based on In re Queen’s, the Federal Circuit was merely
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`discussing the authorized scope of work for U.S. Patent Agents under U.S. regulations and was
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`silent with respect to foreign patent attorneys/agents. See Knauf, 2019 WL 4832205 at *4 (“[In
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`re Queen’s] did not involve foreign patent agents; accordingly, the Federal Circuit did not
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`address the application of the privilege to communications with foreign patent agents.”) Knauf
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`went on to discuss how then recent post-Queen’s changes to USPTO regulations actually
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`acknowledged that the privilege accorded foreign patent practitioners was coextensive with the
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`6
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 10 of 24
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`authority granted to them under foreign laws and regulations and not tied to the authority of a
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`U.S. Patent Agent:
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`This holding is consistent with the privilege rules that have
`recently been adopted by the Patent and Trademark Office, which
`provide as follows:
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`(a) Privileged communications. A communication between a
`client and a USPTO patent practitioner or a foreign jurisdiction
`patent practitioner that is reasonably necessary and incident
`to the scope of the practitioner’s authority shall receive the
`same protections of privilege under Federal law as if that
`communication were between a client and an attorney
`authorized to practice in the United States, including all
`limitations and exceptions.
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`Knauf, 2019 WL 4832205 at *5 (quoting 37 C.F.R. § 42.57) (emphasis original). Indeed, in
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`responding to rulemaking comments concerning the sorts of activities that would fall within the
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`scope of privilege, the USPTO noted that “regardless of any clarifications made to the scope of
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`authorized duties for U.S. patent agents, the USPTO cannot alter or clarify the authorize functions
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`of foreign patent agents in their home jurisdiction, which are established by foreign laws and
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`regulations.” Comments and Response with Regard to 37 C.F.R. § 42.57, 82 Fed. Reg. 51,572
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`(Nov. 7, 2017).
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`As discussed in more detail in Section III.B., below, and as supported by the expert
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`declaration of Professor Willem Hoyng, as well as the Dutch legal authority cited therein, the
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`authorized scope of work for a Dutch Patent Attorney extends well beyond merely advising on
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`patent prosecution to more broadly advising on patent related matters, including, but not limited
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`to, advising on the infringement and validity of issued patents, patent licensing matters, and
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`assisting with patent-related litigation matters (See Section III.B., below and Ex. 2, Hoyng Decl.
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`¶¶ 44-54. Accordingly, and as further supported by the accompanying declaration of Mr. Arie Tol,
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`the challenged communications are privileged under U.S. Law for the same reasons the
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 11 of 24
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`communications in Knauf were found to be privileged, as they were all prepared within the scope
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`of Mr. Tol and other Dutch Patent Attorney’s authorized areas of practice.
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`ii.
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`The Challenged Correspondence Was Made in Anticipation of
`Litigation And Is Also Protected for Discovery As Work
`Product
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`As Fitbit acknowledges, “Ordinarily, a party may not discover documents and tangible
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`things that are prepared in anticipation of litigation or for trial by or for another party or its
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`representative.” Fed. R. Civ. P. 26(b)(3)(A). Yet, Fitbit nonetheless seeks to compel the
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`production of the privilege log entries that were prepared in anticipation of litigation by Philips’s
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`Dutch Patent Attorneys, as well as U.S. Attorneys.
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`This district has recognized that “[t]he range of materials potentially eligible for work
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`product protection is quite broad” and that “work product protection potentially extends to any
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`such material prepared by an attorney, a party, or certain of the party’s non-attorney
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`representatives.” In re Grand Jury Subpoena, 220 F.R.D. 130, 143-144 (D. Mass. Mar. 16,
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`2004). “In order for a document to be eligible for protection as work product, the claimant need
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`not establish that the document was prepared ‘primarily or exclusively to assist in litigation’;
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`rather, he need only show that ‘in light of the nature of the document and the factual situation in
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`the particular case, the document can be fairly said to have been prepared or obtained because of
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`the prospect of litigation.” Id. at 146 (emphasis original) (citing Maine v. U.S. Dep’t of Interior,
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`298 F.3d 60, 68 (1st Cir. 2002)). Fitbit argues that the First Circuit has overruled the work
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`product standard of Maine in U.S. v. Textron Inc. & Subsidiaries, 577 F.3d 21 (1st Cir. 2009),
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`yet the Court in Textron was unambiguous in stressing that “[w]e now conclude that under our
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`own prior Maine precedent—which we reaffirm en banc—the Textron work papers were
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`independently required by statutory and audit requirements and that the work product privilege
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`does not apply.” Textron, 577 F.3d at 26. That the First Circuit in Textron described the
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`8
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 12 of 24
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`materials at issue as not “for use” in litigation, was simply to stress that those materials were
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`prepared for a completely separate purpose not related to litigation—not to overrule Maine. See
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`id. at 27. Indeed, in Textron, the Court noted that even under Maine, work product would not
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`extend to “documents that are prepared in the ordinary course of business or that would have
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`been created in essentially similar form irrespective of the litigation”—which is essentially what
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`the documents at issue in Textron were. See id. at 30 (quoting Maine, 298 F.3d at 70). While
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`this Court has since, in light of the characterization of Judge Torruella’s dissent in Textron,
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`found that the First Circuit did narrow the test described in Maine, Philips respectfully submits
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`that Judge Torruella’s dissent mischaracterized the majority opinion’s approach and that Maine
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`and Textron are in accord. See Columbia Data Products, Inc. v. Autonomy Corp. Ltd., No. 11-
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`12077-NMG, 2012 WL 6212898, at *12 (Dec. 12, 2012).
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`Regardless, the materials for which Philips maintains work product protection were all
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`prepared exclusively in anticipation and were not prepared for some other business purpose (e.g.
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`tax filings) in a manner that would render them discoverable.6 That the dispute between the
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`parties could have been settled with a license does not change the nature of the dispute, nor does
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`6 With respect to Entries Nos. 3, 4, 19, 20, 21, 24, 26, 28, 30, 31, 35-37, 48, 58-67, 70-73, 79, 82,
`144, 208, 209, 364, 382, 383, 392, 394, and 395, the correspondence all concerns Philips’s pre-
`suit investigation against Fitbit and Philips, including the assessment of Philips’s infringement
`claims against Fitbit and Philips—material that goes right to the heart of Philips’s legal claims
`against Fitbit. (See Ex. 2, Tol. Decl. ¶¶ 16-22, 24-33, 40.) Additionally, Entries Nos. 244-248,
`260-270, 349, 350, 364, 382, 383, 392, 394, and 395 reflect Philips’s settlement positions and
`strategy, including after the beginning of litigation in Europe, that Fitbit is not entitled to
`discovery on. (See Ex. 2, Tol. Decl. ¶¶ 36, 39, 40.) Meanwhile, Entries Nos. 299-301, 408, 412-
`420, 422, 423, 425-431, 437-438, 440-441, 443, 450-451, 458-460, & 463-464 all concern the
`contract dispute with Lifescan, which was focused on Lifescan’s failure to pay royalties on
`certain products, whether and how those products might be covered by Philips’s patents, and
`Philips’s claim for breach of contract against Lifescan—all of which relates directly to Philips’s
`legal claims. (See Ex. 2, Tol. Decl. ¶¶ 37-38, 41-43.)
`9
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 13 of 24
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`it somehow transform materials discussing Philips’s pre-suit investigation into generic “business
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`advice” about “licensing.”
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`Fitbit attacks the length of time from when Philips began its pre-suit investigation in 2015
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`to the filing of U.S. Litigation in 2019 (four years). However, this completely overlooks the fact
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`that Philips first filed suit against Fitbit in Europe in 2017 (one year after providing notice of
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`infringement, and around two years from the beginning of Philips’s infringement investigation).
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`(See Section II, above.) That Philips spent a year evaluating which Philips patents to assert
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`against Fitbit and Garmin before providing notice of infringement is not terribly surprising, given
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`the fact that Philips owns thousands of patents across the globe. Indeed, a number of privilege
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`log entries concern patents that ended up not being asserted against Fitbit and Garmin (See, e.g.,
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`Ex. 2, Tol. Decl. ¶¶ 25, 32, 33, 35.) In context, the amount of time, and the existence of
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`intervening litigation in Europe, demonstrates the reasonableness of Philips’s approach and how
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`the logged material really was, throughout, prepared in anticipation of litigation.
`
`B.
`
`Applying Dutch Law, the Challenged Correspondence Would Also Be
`Privileged
`
`As explained above, almost all the disputed communications concerns both U.S. and
`
`foreign patents.7 Accordingly to the extent portions of these communications do not “touch
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`base” with the United States, they would be protected from discovery under Dutch Law in view
`
`of the protections accorded Dutch Patent Attorneys acting within the authorized scope of their
`
`
`7 A number of entries also concern a contract dispute with Lifescan over an agreement governed
`by U.S. Law (See Entries Nos. 299-301, 408, 412-420, 422, 423, 425-431, 437-438, 440-441,
`443, 450-451, 458-460, & 463-464 and Mr. Tol’s declaration with regards to same), but which
`also covered both U.S. and foreign patents, and settlement of that dispute.
`10
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`

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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 14 of 24
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`
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`work—which is much broader than merely advising on patent applications before the Dutch
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`Patent Office.
`
`i.
`
`A Dutch Patent Attorney’s Authorized Scope of Work Extends
`Well Beyond Merely Advising on Patent Prosecution
`
`A fundamental premise underlying Fitbit’s Motion is the incorrect (and unsupported)
`
`notion that the authorized scope of work for a Dutch Patent Attorney is narrowly limited to
`
`advising on the prosecution of patent applications before the Dutch Patent Office. Indeed, Fitbit
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`does not appear to contest that if the authorized scope of a Dutch Patent Attorney were broader
`
`than its narrow characterization, the disputed correspondence would be properly maintained as
`
`privileged. Just as the Court in Knauf recognized that the authorized scope of practice for a U.K.
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`Patent Attorney/Agent was broader than that of a U.S. Patent Agent, and upheld a claim of
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`privilege over communications beyond those that involved the prosecution of patent applications
`
`(see discussion in Section III.A.i., above), the authorized scope of work for a Dutch Patent
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`Attorney under Dutch Law is also broader.
`
`As explained in the accompanying declaration of Professor Willem Hoyng, and as
`
`supported by the many references to Dutch legal authority cited therein, the authorized scope of
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`work for a Dutch Patent Attorney extends to many patent related activities (including advising on
`
`patent scope beyond patent prosecution, and including advising on litigation and licensing). (See
`
`Ex. 2, Hoyng Decl. ¶¶ 44-54.) Prof. Hoyng is an attorney-at-law in the Netherlands, where he
`
`has practiced since 1973, and is a founder of the Dutch law firm Hoyng Rokh Monegier. (Id. ¶
`
`11
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`Case 1:19-cv-11586-FDS Document 210 Filed 07/16/21 Page 15 of 24
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`1) Prof. Hoyng is one of the Netherlands’ preeminent experts on not only Dutch intellectual
`
`property law, but on the practice of registered Dutch Patent Attorneys.8
`
`As Prof. Hoyng’s declaration explains, the “capacity” of a Dutch Patent Attorney under
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`Dutch law is not limited to advising on patent applications:
`
`A Dutch or European patent attorney’s ‘capacity’ includes (at least)
`the assistance in deciding whether to file a patent application,
`assistance in obtaining a patent application, the representation of
`clients in opposition proceedings, in court cases involving questions
`of infringement and invalidity and cases involving prior user rights
`and licenses, advising on and assisting with pre-suit analysis of
`(potential) infringement and invalidity and more general the scope
`or strength of the patent applications or issued patents, and
`assistance in negotiating patent transactions such as the transfer of
`patents or the grant of licenses.
`
`(Ex. 2, Hoyng Decl. ¶ 44.) Prof. Hoyng went on to further note how, under Dutch Law,
`
`the scope of a Dutch Patent Attorneys authorized capacity should not be narrowly construed in
`
`accordance with guidance by the Dutch Supreme Court:
`
`[T]he scope of a duty of confidentiality should not be interpreted
`restrictively. The Dutch Supreme Court has ruled that with respect
`to persons entitled to privilege by virtue of their profession, the
`privilege is not applicable only when there is no reasonable doubt
`that
`the
`testimony requested does not
`interfere with
`the
`
`
`8 Since 1988, Prof. Hoyng has been a professor of