Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 1 of 21
`Case 1:19-cv-11586—FDS Document 210-1 Filed 07/16/21 Page 1 of 21
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 2 of 21
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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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`v.
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`FITBIT, INC.,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-FDS
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`DECLARATION OF ARIE TOL IN SUPPORT OF PLAINTIFF’S
`OPPOSITION TO DEFENDANT’S MOTION TO COMPEL DISCOVERY OF CERTAIN
`DOCUMENTS IN THE ARIE TOL PRIVILEGE LOG.
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`1
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 3 of 21
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`I, Arie Tol, hereby declare:
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`1.
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`I am a registered Dutch Patent Attorney, and have been since 2000. I have also
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`been a registered European Patent Attorney since 2003. I am currently employed as a Principal
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`Licensing Counsel for the Philips Intellectual Property & Standards (“IP&S”) organization of
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`Koninklijke Philips N.V. (“Philips”) in the Netherlands, where I have worked since 1995. I have
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`personal knowledge of the facts set forth herein and declare under penalty of perjury under the
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`laws of the United States that these facts are true and correct.
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`2.
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`I understand that Fitbit has sought discovery of particular communications that I
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`either sent or received between June 2, 2014 and December 17, 2019 that generally relate to
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`disputes between Philips on the one hand and Fitbit, Garmin, and/or Lifescan on the other
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`involving the patents in suit. I understand that in response, Philips maintains that these materials
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`are privileged and/or work product in anticipation of discovery or otherwise immune from
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`discovery”. I have reviewed the documents that Fitbit seeks to compel the production of, and
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`can confirm (as described in more detail below) that all the communications are confidential
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`communications that fall within the scope of my work as a Dutch Patent Attorney for Philips,
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`and further than many of the communications include work product prepared in anticipation of
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`litigation against Fitbit and/or Garmin.
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`3.
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`Philips’s approach to licensing almost always starts with identifying infringers of
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`Philips’s patent rights in anticipation of having to enforce those patent in court. To this end, the
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`beginning of such licensing activities in this instance first involves identifying products that
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`infringe Philips’s patents, and working up a case against the accused infringer. Next, Philips
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`puts the infringer on notice of their infringement in view of pursuing enforcement actions for
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`damages and/or an injunction against the infringers. Depending on the patent rights at issue, this
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`may include an enforcement action in one or more of the United States, Europe, or Asia (or
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 4 of 21
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`anywhere in which Philips’s patent rights may be enforced). While Philips is of course willing
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`to enter into licensing discussion upon providing notice of infringement in order to settle disputes
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`with accused infringers, the focus throughout is to develop and enforce Philips’s patent rights
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`through legal action as necessary. As described in more detail below, this approach, which
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`anticipates litigation with an accused infringer from the very beginning and is necessitated by
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`the reluctance of the infringers to recognize legitimate patent rights, was the approach taken
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`when Philips’s sought to enforce certain patents that related to activity monitoring technology
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`against both Fitbit and Garmin.
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`4.
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`In 2015, Philips began evaluating whether certain Fitbit and Garmin products
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`infringed certain Philips-owned patents related to activity trackers (also sometimes referred to as
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`“fitness trackers”). I was involved in this project from the very beginning, and am presently the
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`primary patent attorney responsible for managing Philips’s enforcement of patents in this field
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`against Fitbit and Garmin. Because of similarities across the infringing Garmin and Fitbit
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`products, and overlap in the patents to be asserted against each, this enforcement effort focused
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`on both Garmin and Fitbit from the very beginning (even though litigation with Garmin was
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`instituted earlier than litigation with Fitbit). Because of this overlap, much of the
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`correspondence at issue concerns pre-suit analysis against both of Fitbit and Garmin.
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`5.
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`The initial work of this enforcement campaign against Fitbit and Garmin focused
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`on reviewing and analyzing Philips’s patent rights to evaluate which patents rights might be
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`infringed by Fitbit and Garmin. While this work involved the work of both Dutch and U.S.
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`patent attorneys, at the time Mr. Erik Pastink, who is also a Dutch Patent Attorney, was primarily
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`responsible for directing this work.
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 5 of 21
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`6.
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`With regards to Garmin, this work from 2015 through 2016 led to a letter from
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`Erik Pastink on February 17, 2016 that notified Garmin of infringement of various Philips
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`patents in various regions across the world, a true and accurate copy of which is attached as
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`Exhibit 1.A.
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`7.
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`With regards to Fitbit, this work led to a letter from Philips’s U.S. in-house
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`counsel Elias Schilowitz (an attorney licensed to practice in the State of New York) to Fitbit on
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`October 10, 2016 notifying Fitbit of its infringement of various Philips patents in various regions
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`across the world, a true and accurate copy of which is attached as Exhibit 1.B.
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`8.
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`While Philips thereafter engaged in discussions with Fitbit and Garmin in an
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`effort to settle the dispute through licensing, Philips continued to anticipate the need to enforce
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`its patents in Court against both entities, both in the United States and abroad and, in view of
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`Garmin and Fitbit’s continued infringement, filed suit against both Garmin and Fitbit in
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`Germany in 2017. The German infringement suit against Garmin on European Patent No. EP 1
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`076 806 was filed on September 27, 2017 and a German infringement suit against Garmin on
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`European Patent No. EP1 247 229 was filed on October 27, 2017 while the German infringement
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`suit against Fitbit on the same patents was filed on December 4, 2017 for EP 1 247 229 and on
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`December 12, 2017 for EP 1 076 806.
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`9.
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`During this same period of time, Garmin initiated a revocation proceeding against
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`European Patent No. EP 1 076 806 in the United Kingdom, which was filed on October 20,
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`2017. Philips subsequently counterclaimed for infringement of this patent by Garmin on
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`December 1, 2017 and Garmin eventually further initiated a nullity proceedings in Germany
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`against this Patent on January 25, 2018.
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 6 of 21
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`10.
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`Hearings on these various proceedings in the United Kingdom and German
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`relating to Fitbit and Garmin’s infringement of Philips’s patents occurred in the fall of 2018. In
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`the United Kingdom action against Garmin, the patent at issue was found to be valid and
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`infringed, and Philips and Garmin settled that matter. The remaining litigations in Germany
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`remain pending in light of stays issued while nullity proceedings are resolved.
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`11. While the European litigations were proceeding, my team at Philips were focused
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`on those active matters in Europe rather than proceeding with Philips’s claims for infringement
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`in the United States. However, in 2018 and 2019, Philips proceeded to further evaluate the
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`claims of infringement against both Garmin and Fitbit in the United States, and engaged in an
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`effort to retain outside counsel to bring suit in the United States. Again, because of the
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`similarities in the accused products across Garmin and Fitbit, this effort often involved
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`correspondence and communications that addressed both enforcement efforts.
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`12.
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`On July 22, 2019, Philips filed complaints against both Fitbit (in the present case)
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`and Garmin (in the Central District of California) for patent infringement of the patents at issue.
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`The Central District of California case against Garmin is currently stayed pending an inter partes
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`review of one of the patents.
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`13.
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`On December 10, 2019, Philips also filed a complaint with the United States
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`International Trade Commission (“ITC”) for patent infringement on a set of unrelated patents
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`against both Fitbit and Garmin. The ITC declined to issue an exclusion order and the matter is
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`currently being appealed to the Federal Circuit.
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`14.
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`As this history makes clear, Philips has been actively and diligently working on
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`its claims for patent infringement against both Fitbit and Garmin due to Fitbit and Garmin’s
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`infringement of a large number of patents (both within and outside the United States) since as
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 7 of 21
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`early as 2015, and has been engaged on litigation on multiple fronts throughout this period of
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`time.
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`15.
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`I will now address the specific correspondence Fitbit seeks to compel production
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`of in this matter. In the interests of being economical with time and space, where multiple
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`logged items of correspondence relate to the same subject matter or constitute ongoing
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`correspondence on the same thread of communications, I have addressed those collectively.
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`16.
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`Entry No. 3: This entry is correspondence that concerns Philips’s analysis with
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`regards to bringing a claim of patent infringement against both Fitbit and Garmin. The entry
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`includes the legal advice of Mr. Erik Pastink, a Dutch Patent Attorney, as well as my own
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`comments and feedback as a Dutch Patent Attorney, and was prepared in the course of our work
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`as Dutch Patent Attorneys to advise on, and prepare for, the enforcement of Philips’s patents
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`against those who would infringe them. This legal advice specifically relates to analysis of
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`patents now asserted against Fitbit in the District of Massachusetts, and this correspondence was
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`made in furtherance of preparing for present litigations against Fitbit and Garmin.
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`17.
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` Entry No. 4: This entry is correspondence that concerns Philips’s analysis with
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`regards to bringing a claim of patent infringement against both Fitbit and Garmin. The entry
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`includes the legal advice of Mr. Erik Pastink, a Dutch Patent Attorney, and also requests my own
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`input and feedback as a Dutch Patent Attorney, and was prepared in the course of our work as
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`Dutch Patent Attorneys to advise on, and prepare for, the enforcement of Philips’s patents
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`against those who would infringe them. This legal advice specifically relates to analysis of
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`patents now asserted against Fitbit in the District of Massachusetts, and this correspondence was
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`made in furtherance of preparing for the present litigations against Fitbit and Garmin.
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 8 of 21
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`Additionally, this entry also includes legal advice and information relating to the pre-suit
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`investigation for other patents and matters unrelated to Fitbit and Garmin as well.
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`18.
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`Entry Nos. 19 & 20: These entries comprise correspondence between myself and
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`Mr. Erik Pastink concerning the drafting of a letter notifying Fitbit of its infringement of various
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`Philips patents. These entries reflect the legal advice of Mr. Erik Pastink, a Dutch Patent
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`Attorney, and also requests my own input and feedback as a Dutch Patent Attorney, and were
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`prepared in the course of our work as Dutch Patent Attorneys to advise on, and prepare for, the
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`enforcement of Philips’s patents against those who would infringe them. This legal advice
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`specifically relates to preparation of the notice letter to Fitbit, and the drafts of said letter were
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`prepared in furtherance of preparing for the present litigations against Fitbit. This
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`correspondence was further prepared in view of seeking further legal advice from U.S. Attorney
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`E. Schilowitz, who eventually sent the final letter notifying Fitbit of its infringement later in
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`2016, the final version of which was based on the preliminary drafts prepared by Mr. Erik
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`Pastink and who would have also been consulted about the preparation of this letter on or around
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`December of 2015 despite not being included in this correspondence.
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`19.
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`Entry Nos. 21 & 24: These entries comprise correspondence between myself, Mr.
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`Erik Pastink, and Mr. Jako Eleveld, all of whom are Dutch Patent Attorneys, concerning the
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`drafting of letters notifying both Fitbit and Garmin of their infringement of various Philips
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`patents. These entries reflect the legal advice of Mr. Erik Pastink, a Dutch Patent Attorney, and
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`also requests Mr. Eleveld’s input and feedback as a Dutch Patent Attorney, and were prepared in
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`the course of our work as Dutch Patent Attorneys to advise on, and prepare for, the enforcement
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`of Philips’s patents against those who would infringe them. This legal advice specifically relates
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`to preparation of the notice letters to Fitbit and Garmin, and the drafts of said letter were
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 9 of 21
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`prepared in furtherance of preparing for the present litigations against Fitbit and Garmin. This
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`correspondence was further prepared in view of seeking further legal advice from U.S. Attorney
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`E. Schilowitz, who eventually sent the final letter notifying Fitbit of its infringement later in
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`2016, the final version of which was based on the preliminary drafts prepared by Mr. Erik
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`Pastink and who would have also been consulted about the preparation of this letter on or around
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`January of 2016 despite not being included in this correspondence.
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`20.
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`Entry Nos. 26 & 28: These entries comprise correspondence between myself and
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`Mr. Erik Pastink, a Dutch Patent Attorney, concerning an analysis of potential Patents to assert
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`against Fitbit and Garmin. The entry includes the legal advice of Mr. Erik Pastink, a Dutch
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`Patent Attorney, and was prepared in the course of his work as Dutch Patent Attorneys to advise
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`on, and prepare for, the enforcement of Philips’s patents against those who would infringe them.
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`This legal advice specifically relates to analysis of patents not presently asserted against Fitbit,
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`but was nonetheless made in furtherance of preparing for present litigations against Fitbit and
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`Garmin.
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`21.
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`Entry Nos. 30, 31, & 35: These entries comprise correspondence between
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`myself, Dutch Patent Attorney Mr. Erik Pastink, and U.S. Attorney Mr. E. Schilowitz concerning
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`the drafting of a letter notifying Fitbit of its infringement of various Philips patents. These
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`entries reflect the legal advice of Mr. Erik Pastink, a Dutch Patent Attorney, and also requests
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`legal advice and feedback from U.S. Attorney E. Schilowitz. With respect to Mr. Pastink, these
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`correspondence were prepared in the course of his work as a Dutch Patent Attorneys to advise
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`on, and prepare for, the enforcement of Philips’s patents against those who would infringe them.
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`Mr. Schilowitz’s legal advice was similarly in the course of his work as a U.S. attorney for
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`Philips. This legal advice specifically related to preparation of the letter notifying Fitbit of its
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 10 of 21
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`infringement, and the drafts of said letter were prepared in furtherance of preparing for the
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`present litigations against Fitbit. This correspondence was further prepared in view of seeking
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`further legal advice from U.S. Attorney E. Schilowitz, who eventually sent the final letter
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`notifying Fitbit of its infringement later in 2016, the final version of which was based on the
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`preliminary drafts prepared by Mr. Erik Pastink.
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`22.
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`Entry Nos. 36 & 37: These entries comprise correspondence between myself,
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`Dutch Patent Attorney Mr. Erik Pastink, Dutch Patent Attorney Ms. Stephanie Wermeskerken,
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`Dutch Patent Attorney Jako Eleveld, and U.S. Attorney Ed Blocker concerning the drafting of a
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`letter notifying Fitbit of its infringement of various Philips patents. These entries reflect the legal
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`advice of Mr. Erik Pastink, a Dutch Patent Attorney, and also requests legal advice and feedback
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`from U.S. Attorney Ed Blocker. The correspondence also reflects the legal advice of Mr. E.
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`Schilowitz who was included on earlier correspondence relating to the subject matter of this
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`communication. With respect to Mr. Pastink, these correspondence were prepared in the course
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`of his work as a Dutch Patent Attorneys to advise on, and prepare for, the enforcement of
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`Philips’s patents against those who would infringe them. With respect to U.S. Attorneys, the
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`legal advice was prepares as part of their role as U.S. Attorneys to Philips. This legal advice
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`specifically related to preparation of the letter notifying Fitbit of its infringement, and the drafts
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`of said letter were prepared in furtherance of preparing for the present litigations against Fitbit.
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`23.
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`Entry Nos. 42, 43, 46, and 47: These entries comprise correspondence between
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`myself and Dutch Patent Attorney Erik Pastink with regards to legal advice concerning
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`amendments to Philips’s Patent Purchase Agreement with inventor Roger Quy. The
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`correspondence reflects Mr. Pastink’s legal advice and opinions with regard to the then-existing
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`patent purchase agreement, as well as proposed amendments and/or supplements thereto, as well
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 11 of 21
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`as legal advice and opinions on the scope of various Philips and/or Quy patents. This
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`correspondence was prepared in the course of Mr. Pastink’s work as a Dutch patent Attorney to
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`advise on patent-related matters, including the acquisition of patent assets and agreements
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`relating thereto. This correspondence was also prepared in view of seeking further legal advice
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`from U.S. Attorney David Schreiber with regards to the patent purchase agreement and potential
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`amendments thereto, as reflected in Entry No. 43, which is correspondence forwarding Mr.
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`Pastink’s legal advice on this subject to Mr. David Schreiber, a U.S. Attorney, in view of further
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`obtaining his legal advice on the agreement and propose amendments.
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`24.
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`Entry No. 48: This entry is correspondence from Dutch Patent Attorney Mr. Erik
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`Pastink to myself and Dutch Patent Attorney Jako Eleveld with regards to Philips’s pre-suit
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`investigation concerning the present Litigations against Fitbit and Garmin, as well as others, and
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`contains the legal advice of Mr. Erik Pastink and myself. This correspondence was prepared in
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`the course of our work as a Dutch Patent Attorneys to advise on, and prepare for, the
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`enforcement of Philips’s patents against those who would infringe them. This correspondence
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`specifically relates to analysis of patents now asserted against Fitbit in the District of
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`Massachusetts, and this correspondence was made in furtherance of preparing for the present
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`litigations against Fitbit and Garmin.
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`25.
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`Entry Nos. 58 and 59: These entries comprise correspondence between myself
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`and Dutch Patent Attorney Erik Pastink with regards to the pre-suit investigation relating to
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`litigation against Fitbit, and specifically concerns the analysis of a patent that is not a U.S. patent
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`and is not presently at issue in this or any of the pending litigations against Fitbit, but nonetheless
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`was made in furtherance of preparing for the present litigations against Fitbit and Garmin. This
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`correspondence was also prepared in the course of our work as a Dutch Patent Attorneys to
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 12 of 21
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`advise on, and prepare for, the enforcement of Philips’s patents against those who would infringe
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`them.
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`26.
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`Entry Nos. 60, 61, 62, 63, and 64: These entries comprise correspondence
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`between myself, U.S. Attorney Elias Schilowitz, and Dutch Patent Attorney Mr. Erik Pastink
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`concerning the preparation of a letter notifying Fitbit of its infringement of certain Philips
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`patents. In the first entry, No. 60, Mr. Pastink seeks the legal advice of Mr. Elias Schilowitz with
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`regards to the draft letter notifying Fitbit of infringement. Entry No. 61 appears to be a duplicate
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`of this very same correspondence. In Entry No. 62, Mr. Schilowitz provides legal advice with
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`regards to the draft notice letter to Fitbit, and Entry No. 63 appears to simply be a duplicate of
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`Entry No. 62. Meanwhile, Entry No. 64 concerns forwarding prior correspondence and legal
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`advice from Mr. Pastink, myself, and U.S. Attorney Elias Schilowitz with regards to the draft
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`notice letter to Fitbit to Dutch Patent Attorney Jako Eleveld. All this correspondence was made
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`in furtherance of preparing for the present litigations against Fitbit, and with respect to Dutch
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`Patent Attorneys, was prepared in the course of our work as a Dutch Patent Attorneys to advise
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`on, and prepare for, the enforcement of Philips’s patents against those who would infringe them.
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`27.
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`Entry Nos. 65 and 66: The entries comprise correspondence between Dutch
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`Patent Attorney Jako Elevend and myself concerning the pre-suit investigation for litigation
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`against Fitbit and Garmin, as well as a number unrelated matters and unrelated patents. This
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`correspondence was prepared in the course of our work as Dutch Patent Attorneys to advise on,
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`and prepare for, the enforcement of Philips’s patents against those who would infringe them.
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`This correspondence was also made in furtherance of preparing for the present litigations against
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`Fitbit and Garmin.
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`28.
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`Entry No. 70: This entry is correspondence between Dutch Patent Attorney J.
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`Eleveld and myself concerning the pre-suit investigation relating to litigations with Fitbit and
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`Garmin, as well as with regards to a number of other unrelated parties on unrelated patents. This
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`correspondence was prepared in the course of our work as Dutch Patent Attorneys to advise on,
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`and prepare for, the enforcement of Philips’s patents against those who would infringe them.
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`This correspondence was also made in furtherance of preparing for the present litigations against
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`Fitbit and Garmin.
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`29.
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`Entry No. 71: This entry is correspondence between myself, U.S. Attorney Elias
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`Schilowitz, and Dutch Patent Attorneys Mr. Erik Pastink and Jako Eleveld concerning the
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`preparation of a letter notifying Fitbit of its infringement of certain Philips patents. Specifically
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`this correspondence reflects the legal advice of Dutch Patent Attorney J. Eleveld with regards to
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`the letter placing Fitbit on notice of its infringement, and seeks further legal advice from U.S.
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`Attorney Elias Schilowitz with regards to the same. Indeed, subsequent to this correspondence,
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`Mr. Schilowitz worked with Mr. Pastink to further revise the notice letter to Fitbit and Mr.
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`Schilowitz, as attorney for Philips, eventually sent the notice letter to Fitbit. With regards to the
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`Dutch Patent Attorneys on these communications, this correspondence was prepared in the
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`course of our work as Dutch Patent Attorneys to advise on, and prepare for, the enforcement of
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`Philips’s patents against those who would infringe them.
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`30.
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`Entry Nos. 72 & 73: These entries comprise correspondence between Dutch
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`Patent Attorneys J. Eleveld, E. Pastink, and myself and U.S. Attorney E. Schilowitz concerning
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`the preparation of the letter notifying Fitbit of its infringement of certain Philips patents. While
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`this correspondence is specifically dated October 11, 2016 (the day after Fitbit was put on notice
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`of its infringement), the correspondence includes legal advice and opinions with regards to the
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 14 of 21
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`preparation of the letter by Mr. Pastink and Mr. E. Schilowitz going back to October 4, 2016 and
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`including many communications between them containing legal advice with regards to the same.
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`This correspondence was prepared in the course of our work as Dutch Patent Attorneys to advise
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`on, and prepare for, the enforcement of Philips’s patents against those who would infringe them.
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`Additionally, this correspondence was made in furtherance of preparing for the present
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`litigations against Fitbit.
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`31.
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`Entry No. 79: This entry is correspondence between Dutch Patent Attorney Erik
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`Pastink, myself, and U.S. Attorneys Michael Marion, Mark Beloborodov, Sherry Austin, and
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`Paul Im reflecting the legal advice of Dutch Patent Attorney Erik Pastink with regards to the pre-
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`suit investigation for litigations with Fitbit and Garmin and further reflects the legal advice of
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`Erik Pastink with regards to one of the patents presently asserted against Fitbit in this action.
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`This correspondence was prepared in the course of Mr. Pastink’s work as a Dutch Patent
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`Attorney to advise on, and prepare for, the enforcement of Philips’s patents against those who
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`would infringe them. Additionally, this correspondence was made in furtherance of preparing
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`for the present litigations against Fitbit and Garmin.
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`32.
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`Entry No. 82: This entry is correspondence that concerns Philips’s analysis with
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`regards to bringing a claim of patent infringement against both Fitbit and Garmin, as well as
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`other potential parties. The entry includes the legal advice of Mr. Erik Pastink, a Dutch Patent
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`Attorney, with regards to the scope of certain Philips’s patents and their potential infringement
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`by Fitbit, Garmin, and others and was prepared in the course of Mr. Pastink’s work as a Dutch
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`Patent Attorney to advise on, and prepare for, the enforcement of Philips’s patents against those
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`who would infringe them. The patent discussed herein is not a U.S. patent and has not been
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`asserted in any litigation against Fitbit or Garmin to date, but this correspondence was
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`nevertheless made in furtherance of preparing for the litigation against Fitbit and Garmin.
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`33.
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`Entry No. 144: This entry is correspondence that primarily relates to a pre-suit
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`investigation against other entities besides Fitbit and Garmin, however also reflects legal advice
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`and a pre-suit investigation with regards to whether Fitbit and Garmin may infringe a certain
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`Philips patent. This correspondence was prepared in the course of Mr. Pastink’s work as a Dutch
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`Patent Attorney to advise on, and prepare for, the enforcement of Philips’s patents against those
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`who would infringe them. The patent discussed herein has not been asserted in any litigation
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`against Fitbit or Garmin to date, yet this correspondence was nonetheless made in furtherance of
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`preparing for litigations with Fitbit and Garmin.
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`34.
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`Entry Nos. 155 and 156: These entries comprise correspondence between
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`myself and Dutch Patent Attorney Erik Pastink, as well as Pierre Hendriks (Entry No. 155) and
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`Gabrielle Wellens (Entry No. 156) both of whom work in Philips’s controller and finance
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`offices. The correspondence reflects the legal advice and opinions of Mr. Pastink concerning the
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`scope of Philips’s patent purchase agreement with Mr. Quy as well as well as options for
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`amending or supplementing the same, as well as legal advice on the scope of various Philips
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`and/or Quy patents. This correspondence was prepared in the course of Mr. Pastink’s work as a
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`Dutch Patent Attorney to advise on patent-related matters, including the acquisition of patent
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`assets and agreements relating thereto, and further reflected the input of U.S. Attorney David
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`Schreiber who was further involved in advising on these agreements (as reflected in Entry No.
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`43, above). In this correspondence, Mr. Pastink is sharing this legal advice with Mr. Pierre
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`Hendriks and Ms. Wellens in an effort to provide details on the transaction for their records.
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`35.
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`Entry Nos. 208 & 209: These entries comprise correspondence between myself
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`and Dutch Patent Attorneys Alwin Marsman and John Kroeze, as well as Philips Research
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`Engineer Kees Roos. These entries concerns Philips’s analysis with regards to bringing a claim
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`of patent infringement against both Fitbit and Garmin. The entry includes the legal advice of Mr.
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`Alwin Marsman, a Dutch Patent Attorney, and was prepared in the course of Mr. Marsman’s
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`work as a Dutch Patent Attorney to advise on, and prepare for, the enforcement of Philips’s
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`patents against those who would infringe them. This legal advice specifically relates to analysis
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`of patents not presently asserted in any litigation against Fitbit and Garmin, but nevertheless was
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`made in furtherance of preparing for present litigations against Fitbit and Garmin. I also note that
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`this correspondence does not concern any U.S. patents. These communications further requested
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`the technical assistance of Mr. Kees Roos in advancing Philips’s pre-suit investigation and
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`preparation for litigation.
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`36.
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`Entry Nos. 244, 245, 246, 247, 248, 260, 261, 262, 263, 264, 265, 266, 267, 268,
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`269, 270: These entries all comprise correspondence related to the settlement of then ongoing
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`litigation with Fitbit in Europe, including insights into Philips’s confidential settlement positions,
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`as well as preparing for further litigation with Fitbit and a pre-suit investigation relating thereto,
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`including the present and ongoing litigation with Fitbit. This correspondence was prepared in
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`the course of my, Erik Pastink’s, and Jako Eleveld’s work as Dutch Patent Attorneys to advise
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`on, and prepare for, the enforcement of Philips’s patents against those who would infringe them
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`as well as to advise on the settlement of such disputes. The correspondence was also relates to
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`seeking the legal advice of U.S. Attorney Ed Blocker, who opinions and legal advice I sought
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`with regards to this subject matter beginning at Entry No. 260 and who provided legal advice and
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`Case 1:19-cv-11586-FDS Document 210-1 Filed 07/16/21 Page 17 of 21
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`opinion relating to a potential settlement with Fitbit beginning at Entry No. 261, whose legal
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`advice was further relied on an reflected through Entry No. 270.
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`37.
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`Entry No. 299: These entry comprise correspondence between myself, Dutch
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`Patent Attorney Erik Pastink and U.S. Attorney Ed Blocker with regards to a license dispute with
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`Lifescan, and reflect legal advice and opinions of both Ed Blocker and Erik Pastink on the then-
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`existing Lifescan agreement, and further reflect a pre-suit investigation relating to potential
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`litigation against Lifescan in view of Lifescan’s potential breach of the agreement. This
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`correspondence was prepared in the course of my and Mr. Pastink’s work as a Dutch Patent
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`Attorney to advise on patent related issues, including the scope of certain Philips patents and
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`licenses related thereto, as well as the potential enforcement of Philips’s patents against those
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`who would infringe them.
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`38.
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`Entry Nos. 300 & 301: These entries comprise correspondence related to U.S.
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`Attorney Brint York’s prior representation of Philips, as well as the legal advice of Mr. Yorks.
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`This correspondence further reflects the pre-suit investigation conducted by Philips in preparing
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`for possible litigation against Lifescan in view of its potential breach of the License agreement.
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`With respect to Mr. Pastink and myself, this correspondence was prepared in the course of my
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`and Mr. Pastink’s work as a Dutch Patent Attorney to advise on patent related issues, including
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`the scope of certain Philips patents and licenses related thereto, as well as the potential
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`enforcement of Philips’s patents against those who would infringe them.
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`39.
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`Entry Nos. 349 & 350: These entries comprise correspondence between myself
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`and Erik Pastink related to the pre-suit investigation for the present litigations against Fitbit and
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`Garmin, and also reflect Philips’s potential settlement positions relating thereto. Specifically, the
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`correspondence reflects the legal advice and opinions of Mr. Erik Pastink concerning the pre-suit
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`Case 1:19-cv-11586-FDS Documen