Case 1:19-cv-11586-FDS Document 210-4 Filed 07/16/21 Page 1 of 18
`Case 1:19-cv-11586—FDS Document 210-4 Filed 07/16/21 Page 1 of 18
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`EXHIBIT 2
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`EXHIBIT 2
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`Case 1:19-cv-11586-FDS Document 210-4 Filed 07/16/21 Page 2 of 18
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`DECLARATION
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`I, Willem A. Hoyng, state as follows:
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`Introduction
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`1.
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`I am an attorney-at-law in the Netherlands since 1973 and I am one of the founders of the
`law firm HOYNG ROKH MONEGIER with offices in the Netherlands, Belgium, France,
`Germany and Spain.
`
`2. My practice primarily consists of litigating in the field of intellectual property law, in
`particular in national and international patent disputes. I practice before all Dutch courts
`(the courts of first instance, the courts of appeal and the Supreme Court) and I litigate
`before the Court of Justice of the European Union (“CJEU”) and the European Patent
`Office.
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`3.
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`Since 1988, I have been a professor of civil law, especially intellectual property law, at the
`University of Tilburg in the Netherlands. I am the former President of the European Patent
`Lawyers Association (“EPLAW”), the former President of the Dutch group of the
`International Association for the Protection of Intellectual Property (“AIPPI”), a former
`member of the Committee which advises the government in patent matters, the former
`chairman of the advisory committee on IP matters of the Dutch Bar and former President
`of the VIEPA (Association of IP litigation lawyers). I have also been a member of the
`government appointed Examination Board for the Dutch patent attorney exam for many
`years and co-chairman of the patent law educational program for Dutch patent attorneys. I
`am currently a member of the Drafting Committee of the Rules of Procedure of the Unified
`Patent Court and a member of the committee advising the Preparatory Committee for the
`Unified Patent Court. I attach my cv as Exhibit A.
`
`
`
`The Present Assignment
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`4.
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`5.
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`I understand Philips North America LLC (“Philips”) and Fitbit Inc. (“Fitbit”) are involved in
`patent infringement proceedings before the United States District Court for the District of
`Massachusetts.
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`I have been retained as an expert in these proceedings on behalf of Philips. I understand
`that this declaration will be submitted in the proceedings between Philips and Fitbit. I
`understand that I have a duty to the Court to help it with matters within my area of
`expertise. The facts stated in this report are true to the best of my knowledge and belief
`and the opinions stated herein are truly held. I submit this declaration under penalty of
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`6.
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`7.
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`8.
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`9.
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`Case 1:19-cv-11586-FDS Document 210-4 Filed 07/16/21 Page 3 of 18
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`perjury under the laws of the United States of America and affirm that the contents herein
`are true and correct, and am prepared to confirm the contents of this declaration under
`oath.
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`U.S. counsel acting for Philips have provided me with Fitbit’s “Motion to compel the
`production of Certain of Mr. Arie Tol’s email communications” dated 18 June 2021 (the
`“Motion”) and the accompanying “Memorandum of law in support of its Motion to compel
`the production of certain of Mr. Arie Tol’s email communications” (the “Memorandum”) and
`have asked me to consider the allegations made therein and provide my opinions relating
`thereto. In particular, they have asked me to respond to allegations that relate to whether
`certain communications at issue may be privileged or protected from discovery under
`Dutch Law.
`
` General Remarks On Disclosure Under Dutch Law
`
`The Dutch legal system does not provide for a pre-trial discovery phase comparable to the
`U.S. legal system.1 Dutch procedural law merely creates a duty to produce documents
`that are relevant to the outcome of the case. Article 21 of the Dutch Code of Civil
`Procedure (“DCCP”) provides that the parties are obliged to present the facts relevant to
`the decision in a complete and truthful manner. As also follows from article 24 DCCP, this
`obligation is limited to those facts that are relevant to the resolution of the dispute. A party
`may select the facts that it deems relevant to his case and interpret them from his own
`perspective.
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`Dutch law sets forth specific requirements for litigants who seek to obtain evidence from
`an opponent in advance of trial. These requirements are further discussed in this
`declaration. The requirements for a party seeking pre-trial discovery in the Netherlands
`are, in general, more strict than those in the United States.
`
`Dutch procedural law provides for a number of possible measures that can be used to
`obtain pre-trial evidence. The most important measures concern provisional examination
`of witnesses (article 186 et seq. DCCP), a provisional report of examination of an expert
`or a provisional site inspection (both article 202 et seq. DCCP) and a claim seeking
`exhibition of documents (to be discussed under Section IV below).
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` See e.g. Asser/Vranken Algemeen deel** 1995/21, no. 21 (Exhibit B): “There is no duty to provide information in
`Dutch procedure that is comparable with the English or American system of discovery.”
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`10. Such provisional measures should be explicitly requested. Since the ruling of the Supreme
`Court in Frog People Mover/Floriade2, a request for any of these provisional measures for
`obtaining evidence that otherwise meets the conditions for awarding it, can nevertheless
`be dismissed by the court on the basis of one of the following grounds: (i) the petitioner
`does not have a sufficient interest in the respective provisional measure for obtaining
`evidence as meant in Article 3:303 Dutch Civil Code (“DCC”)3; (ii) the power to use any of
`these provisional measures for obtaining evidence is abused, which may apply if, e.g. the
`measure is intended to obtain trade secrets while the applicant has no reasonable cause
`of action against the respondent4 or (iii) the request is contrary to good procedural order,
`or should be dismissed on the basis of another objection which according to the judge is
`serious. Also in view of these grounds for refusal, these provisional measures for
`obtaining evidence are rarely used in patent infringement matters in the Netherlands.
`
`11. Advocate General Huydecoper noted in an opinion5 before a Supreme Court ruling6 that
`such provisional measures should not amount to fishing expeditions, because that would
`be contrary to the principle of Dutch law that one cannot simply obtain information which is
`in someone else’s possession. Huydecoper also explicitly notes that the Anglo-Saxon
`“discovery” system is incompatible with the principles governing access to information
`under Dutch law (my translation):
`
`“12) (…) That [a sufficiently clear description of the intended investigation, WAH] is
`also relevant because it is indeed considered burdensome (something that I heartily
`endorse) that preliminary measures of inquiry should be applied, that the petitioner
`obtains the space to go gather (all kinds of) information (pleasing to him) according
`to his own discretion to the detriment of his counterparty (from Anglo-Saxon legal
`practice, we know the evocative expression “fishing expedition” (7)).
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` 2
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` Supreme Court 11 February 2005, ECLI:NL:HR:2005:AR6809, NJ 2005/442 (Frog People Mover/Floriade)
`(Exhibit C).
`3 Article 3:303 DCC reads as follows: “No person has a right of action without sufficient interest.” In Dutch: “Zonder
`voldoende belang komt niemand een rechtsvordering toe.”
`4 A request for a provisional means to obtain evidence may be abused for fishing, for example to trade secrets
`while no claim can be
`filed against
`the other party
`(e.g. Supreme Court 11 March 1988,
`ECLI:NL:HR:1988:AC1916, NJ 1988/747) (Exhibit D).
`5 After the parties have made their arguments in a case before the Supreme Court the advocate general gives his
`opinion (to which the parties can react) in a in general very elaborate opinion discussing all aspects of the case
`and the applicable law. In about 90% of the cases this opinion is followed by the Supreme Court.
`6 Opinion Advocate General Huydecoper in Supreme Court 24 December 2004, ECLI:NL:PHR:2004:AR4980,
`pars. 12 and 13 (Exhibit E).
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`13) Why this last item should not be granted can be explained as follows: something
`like this would not be compatible with the starting point accepted under Dutch law
`that one cannot “casually” demand access to all information at the disposal of
`another (partly for this reason, Dutch law does not accept the principles on which
`Anglo-Saxon “discovery”(8) is based) (9).” [emphasis added, WAH]
`
`12. These considerations also apply with respect to obtaining access to documents, as I will
`discuss below.
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` A Claim for the Production of Documents Under Dutch Law
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`IV.1. General
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`13. The legal basis for a claim for “production” or “exhibition” of documents (i.e. inspection or
`obtaining a copy or extract of such documents) is Article 843a DCCP, in combination with
`Article 1019a DCCP if the documents are relevant to an intellectual property infringement.
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`14. Article 843a DCCP reads as follows (Exhibit F):
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`Article 843a
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`1. A party that has a relevant legitimate interest may claim at its own expense
`inspection, a copy or an extract of, specific documents concerning a legal
`relationship to which that party or its legal predecessors are party, from the party
`who has the documents at its disposal or in its custody. Documents are understood
`to include: information stored on a data carrier.
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`2. If necessary, the court will determine the manner in which inspection, a copy or
`an extract will be provided.
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`3. A party that is obliged to observe confidentiality pursuant to its office, profession
`or position is not obliged to satisfy this claim if the documents have been placed at
`its disposal or in its custody exclusively in that capacity.
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`4. The party who has the documents at its disposal or in its custody is not obliged to
`satisfy this claim if there are serious reasons not to do so or if it can be reasonably
`assumed that the proper administration of justice is also served if the information
`requested is not provided. [emphasis added, WAH]
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`15. Article 1019a DCCP7 reads as follows (Exhibit F):
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`Article 1019a
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`1. An obligation in tort for infringement of an intellectual property right is deemed to
`be a legal relationship as referred to in Article 843a.
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`2. In proceedings pursuant to Section 843a the submission of other evidence under
`the control of the other party may also be demanded.
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`3. The court shall reject the claim in so far as the protection of confidential
`information is not guaranteed. Section 843a (4) shall not apply. [emphasis added,
`WAH]
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`16. Article 843a (1) DCCP thus lists three separate requirements of “legitimate interest,”
`“specific documents” and “legal relationship” that must be met. Were the case pending in
`the Netherlands, Fitbit would have the burden to show that every one of these
`requirements was satisfied.
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`17. Paragraph 3 and 4 of Article 843a stipulate (for situations in and out of court) that the
`respondent is not obliged to satisfy the claim to provide documents in case of a
`professional duty of confidentiality (paragraph 3), when there are serious reasons not to
`do so or if proper administration of justice is also served if the information requested is not
`provided (paragraph 4). Serious reasons as referred to in paragraph 4 may be the
`confidentiality of the information or the fact that the claim concerns medical or financial
`records. The reasons provided are balanced with the interests of the party seeking
`access.
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`18. Article 1019a (3) DCCP declares the right to refuse production of documents in and out of
`court of paragraph 4 of Article 843a DCCP inapplicable. This is in line with the aim of the
`Enforcement Directive to offer the intellectual property right holder a high level of
`protection. At the same time, Article 1019a (3) DCCP still offers the judge the possibility to
`deny a claim based on Article 843a DCCP for reasons of confidentiality, because also the
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` Art 1019a is the result of the so-called Enforcement Directive (Directive 2004/48/EC of the European Parliament
`and of the Council of 29 April 2004 on the enforcement of intellectual property rights). A Directive is a European
`Union instrument which obliges the member states to make sure that their national laws are in conformity with the
`Directive.
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`alleged infringer has a right to protection of confidential information, such as trade
`secrets.8
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`19. The mere availability of an action under Article 843a DCCP does not mean that the
`Netherlands has an active document production culture similar to the U.S.9 The burden to
`satisfy the requirements of Article 843a DCCP discussed below, limits the possibility of
`obtaining documents from the other party. The limitation in the possibilities of obtaining
`documents in control of someone else is in contrast with the broad scope of the U.S.
`discovery rules (noted by Fitbit on page 5 of its Memorandum).
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`20. Sijmonsma, judge at the Court of Appeal ‘s-Hertogenbosch and PhD on the law of
`inspection of documents, has noted that the restrictions implied by these requirements
`distinguishes the Dutch system from the Anglo-Saxon systems:10
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`“In England and the United States, there is what is known as the ‘pre-trial discovery
`phase’. During this phase, a party may ask the other party to allow him to examine
`the content of the documents that are relevant to the proceedings.[7] There are few
`or no restrictions like the ones imposed by the terms ‘legitimate interest’ and ‘certain
`records’ used in Article 843a DCCP.[8] The absence of such restrictions can lead to
`an alarming increase in the scope of the proceedings, offering further opportunities
`to fish for documents. This would not be possible under Dutch law because the
`combination of the terms ‘legitimate interest’ and ‘certain records’ precludes such
`fishing for documents.” [emphasis added, WAH]
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`21. The requirements of paragraph 1 of Article 843a DCCP are further discussed below.
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` According to the legislature, in the context of court proceedings, the content of paragraph 4 of Article 843a DCCP
`will however maintain its relevance, because “[i]ncidentally, it should always be part of the judge’s deliberations to
`deny the claim because there are weighty reasons or because due process is guaranteed even without inspection
`or submission. It is necessary to prevent this claim from turning into what are called fishing expeditions, which
`would put the claimant in a position to poke around in his competitor’s enterprise by requesting all sorts of
`“evidence”.” See Parliamentary Documents (“Kamerstukken”) II 2005–2006, 30 392, nr. 3, p.19-20 (Exhibit G).
`9 The reasoning in Anwar v. Fairfield Greenwich Ltd., 982 F.Supp.2d 260 (2013) seems based on this notion, but
`that is incorrect. I note that this case deals with communications of a defendant’s non-licensed in-house lawyer.
`10 Sijmonsma, Het inzagerecht (in English: “The law on Disclosure”) (Burgerlijk Proces & Praktijk nr. IX), section 3.3
`The disclosure or discovery (Exhibit H).
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`IV.2. The Requirements of Article 843a (1) DCCP
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`“Legitimate interest”
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`22. The requirement of legitimate interest serves to prevent a party having control over the
`documents from being unnecessarily obliged to disclose information. The party seeking
`access to documents should demonstrate a direct and specific interest in the documents.
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`23.
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`In particular, the party must demonstrate that the documents are useful and relevant
`evidence with respect to its legal position and the legal grounds supporting its claims or
`defenses. A legitimate interest may for example lie in using the documents to further
`substantiate (the nature and scope of) an infringement of an intellectual property right
`which it had already made sufficiently plausible with the evidence already at hand.11
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`24. Dutch courts do not grant exhibition claims that result in ‘fishing expeditions.’12 It is
`insufficient to demonstrate that a document is only of general interest to the party claiming
`exhibition of the documents. It is also insufficient if a party merely assumes that the
`documents may provide support for its assertions, or if it merely speculates on the
`possible relevance.13
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`25. A claim based on Article 843a DCCP may also be dismissed for reasons of timing or
`because it is regarded as premature. For example, if the claim does not relate to evidence
`of technical infringement, but instead to evidence needed to determine the amount of
`damages caused by the infringement, the court may dismiss the claim for lack of (urgent)
`interest if the infringement has not yet been established.14
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`11 See, for example, Supreme Court 13 November 2015, ECLI:NL:HR:2015:3304 (AIB/Novisem), par. 4.4.1 and
`4.4.2 (Exhibit I).
`12 It is established case law that article 843a DCCP cannot be used to go fishing for the documents of another party
`hoping to find substantiation of its assertions. Cf. for example A-G Strikwerda in his opinion for Supreme Court 18
`February 2000, LJN AA4877, NJ 2001/259, par. 15 (Exhibit J): “Art. 843a of the Dutch Code of Civil Procedure
`thus does not offer the possibility of requesting documents where the claimant merely suspects that they could at
`some point provide support for his arguments.” Cf. also Court of Appeal Den Bosch 12 May 2015,
`ECLI:NL:GHSHE:2015:1668 (C1000/Jumbo), par. 6.5.7 (Exhibit K): “Since the claim is furnished with
`speculations, not with specific facts, this can be called a fishing expedition. Article 843a of the Dutch Code of Civil
`Procedure offers no space for such a basis. The issue for C1000 is to obtain documents in order to see whether
`the information it presupposes is contained therein, or at any rate where it hopes to have something, while it has
`not adequately supported the presumption and there is also no indication of it.”
`13 See, for example, District Court Amsterdam 8 November 2012, JOR 2013/61 (Palm Invest/ABN Amro), par. 4.5
`(Exhibit L): “Article 843a of the Dutch Code of Civil Procedure does not grant carte blanche to demand unlimited
`surrender of documents in order to use them to investigate whether there is perhaps liability for damage that the
`bankruptcy trustee has discovered in the estate.” [emphasis added, WAH]
`14 District Court The Hague 26 November 2008, IEF 7332 (Abbott Cardiovascular Systems/Medtronic) (Exhibit M).
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`“Specific documents”
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`26. The second requirement for claiming exhibition of documents in the Netherlands is
`whether the claimant has sufficiently specified the documents that it seeks exhibition of.
`This requirement means that the claimant must specify the evidence as specifically as can
`reasonably be expected from the claimant in the given circumstances.15
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`27. As such, the level of specification differs from case by case. Generally, an exact
`specification of the documents is not required, nor is it required that the exact contents of
`the documents is known. It should be sufficiently clear what documents the claim is about
`and sufficiently clear or plausible that these documents exist.
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`“Legal relationship”
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`28. Related to the requirement of “legitimate interest”, there has to be an “legal relationship” to
`which the documents are relevant. A “legal relationship” could, for example, be an
`obligation arising from an unlawful act in the form of patent infringement (as specified
`explicitly in Article 1019a (1) DCCP). The Supreme Court ruled in two IP cases
`(AIB/Novisem and Synthon/Astellas) that the party claiming access to the documents is
`required to make plausible that such a legal relationship exists.16 This criterion means that
`the party requesting the inspection, copying or extraction of evidence must state such
`facts and circumstances and substantiate them with any evidence already available to it,
`that it is sufficiently plausible that an intellectual property right has been or is likely to be
`infringed.
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`29. According to the Supreme Court, this enables the court to find a balance between the
`interest of the claimant or applicant to discover the truth and to strengthen his legal
`position, and the interest of the defendant not to have to disclose confidential information
`and to be spared the drastic measure that exhibition often is. This standard also offers the
`court sufficient room to take into account the nature of the underlying dispute and the
`other circumstances of the case, including the scope of the inspection claimed and the
`possibility to substantiate the existence of the alleged claim with other means of evidence.
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`15 Court of Appeal The Hague 19 June 2016, ECLI:NL:GHDHA:2016:2225 (Dow Chemical/Organik), finding 4.8
`(Exhibit N), with
`reference
`to
`the
`judgment of
`the Supreme Court of 13 September 2013,
`ECLI:NL:HR:2013:BZ9958, finding 3.7.1. (Exhibit O), in which the Supreme Court decided that the same
`condition applies with respect to a petition for a provisional seizure of evidence in order to avoid fishing
`expeditions.
`16 Supreme Court 13 November 2015, ECLI:NL:HR:2015:3304 (AIB/Novisem), par. 4.1.5 (Exhibit I), and Supreme
`Court 9 December 2016, ECLI:NL:HR:2016:2834 (Synthon/Astellas), par. 3.2.1-3.2.2 (Exhibit P), recently
`confirmed also for non-IP cases in Supreme Court 10 July 2020, ECLI:NL:HR:2020:1251 (Semtex), pars. 3.1.3
`and 3.1.4 (Exhibit Q).
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`30. Consequently, although a claimant is not required to prove the legal relationship in order
`to obtain access to documents, it must still satisfy the burden of making the legal
`relationship plausible based on evidence in its possession without the fruits of any Dutch
`discovery.
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`31. By way of example: a defendant in Standard Essential Patent (“SEP”) litigation raising a
`FRAND defense for alleged discriminatory conduct by the SEP holder, should make such
`discrimination sufficiently plausible in order to satisfy this requirement before obtaining
`exhibition of the SEP holder’s license agreements under article 843a DCCP.17 Also, a
`Dutch court may dismiss a patentee’s claim based on 843a DCCP for lack of a “legal
`relationship” if infringement by the defendant or validity of the patent is not sufficiently
`plausible. The underlying logic is that, in absence of an underlying legal relationship (no
`act of infringement because e.g. the product does not read onto the claim or the patent is
`deemed invalid), there is no valid ground for looking around in the other side’s documents.
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`Fitbit’s Claim for Access to the Communications of a Dutch Patent Attorney Would
`be Denied
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`V.1. A claim for access to Mr. Tol’s Communications would be denied based on Article
`843a (1), (4) and/or 1019a (3) DCCP
`
`In my opinion, under Dutch procedural law, a claim by Fitbit to have Philips disclose the
`requested communications, seems to fail to meet all three requirements of Article 843a (1)
`DCCP and would moreover in all likelihood be denied on the basis of Article 843a (4) or (if
`the legal relationship involves enforcement of an IP right) Article 1019a (3) DCCP.
`
`In particular, Fitbit seems to lack a “legitimate interest” in obtaining access to these
`documents as Fitbit in my opinion did not demonstrate that the documents would be useful
`and relevant evidence with respect to its legal position. I conclude this from the fact that
`the Memorandum does not include a single argument why Fitbit would have a legitimate
`interest in Mr. Arie Tol’s email communications (hereinafter referred to as the
`“Communications”18). The reasoning in the Memorandum seems limited to arguments why
`Philips can allegedly not withhold disclosure, on the assumption that communications that
`do not involve U.S. attorneys should be produced.
`
`32.
`
`33.
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`34.
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`In addition, although I understand the privilege log may list specific documents that Fitbit
`seeks disclosure of, the scope of Fitbit’s request seems to be too unspecified. For
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`17 See e.g. District Court The Hague 16 April 2008, IEPT 20080416 (Sisvel/Acer) (Exhibit R).
`18 See p. 2 of the Memorandum.
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`example, Fitbit apparently seeks all documents relating to litigation against Fitbit. There
`seems to be no specification as to what kind of documents relating to such litigation. In
`view of this lack of specification, a Dutch court would also likely refuse the claim for not
`being specific enough, amounting to a fishing expedition.
`
`35. For example, in a recent case between Philips and Asus before the Court of Appeal of the
`Hague19, Asus sought inspection of “all” of Philips’ license agreements with third parties
`under
`its UMTS/LTE SEPs portfolio
`in order
`to substantiate
`its allegations of
`discrimination. According to the Court of Appeal, for the assessment of discrimination,
`only licensees similarly situated to Asus were relevant. The Court of Appeal considered
`the claim to include license agreements that are irrelevant to Asus’ allegations of
`discrimination and therefore insufficiently specified. Also for that reason, Asus lacked a
`legitimate interest. In the present case, the selection of documents is equally unspecified.
`
`36. Furthermore, in view of Fitbit’s apparent lack of substantiation, it is also unclear what the
`legal relationship within the meaning of article 843a (1) DCCP would be, and why the
`documents that Fitbit seeks disclosure of would bear any relevance to that legal
`relationship.
`
`37. Fitbit’s requests for these documents rather seems to amount to a ‘fishing expedition,’
`which article 843a DCCP and its requirements specifically intend to prevent. Fitbit appears
`to only assume, without substantiation, that the documents will provide support for its
`assertions, and merely speculates on the possible relevance. Under those circumstances,
`a Dutch judge would deny an exhibition claim under Article 843a DCCP.
`
`38. Furthermore, the confidential nature of the Communications could also be a ground for
`denying a claim based on Article 843a (4) or 1019a (3) DCCP. In my opinion it could very
`well be argued that information regarding licensing and enforcement of patents concerns
`valuable confidential information.
`
`39. The above are general considerations why a Dutch Court in my opinion would have
`refused a claim for the Communication to be produced. Hereinafter, I discuss whether, as
`the Communication pertains the communication of Mr. Arie Tol, who is a Dutch and
`European Patent Attorney and member of the Dutch Patent Attorneys Bar, is privileged
`under Dutch law and under Dutch law do not have to be produced in litigation (cf. art.
`843a (3) DCCP).
`
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`19 Court of Appeal 7 May 2019, ECLI:NL:GHDHA:2019:1065 (Philips/Asus), pars. 4.202-4.204 (Exhibit S).
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`V.2. No Discovery of Privileged Communications of Dutch Patent Attorneys
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`40. Patent attorneys20 are subject to a professional duty of confidentiality such as referred to
`in paragraph 3 of article 843a DCCP and can therefore refuse to satisfy a claim for access
`to documents. Similarly, article 165 (2)(b) DCCP exempts “those who are bound to
`secrecy pursuant to their office, profession or position with regard to subject matter which
`has been entrusted to them in their capacity” from the general obligation to appear and
`testify as a witness.
`
`41. This is what I will refer to below as the Dutch patent attorney’s “privilege”, although it
`should be noted that this privilege is not absolute and may in some cases be outweighed
`by the public interest of ascertaining the truth in court. In the present case, I do not think
`Fitbit’s (private) interests in disclosure of the documents would outweigh the interests in
`maintaining the privilege.
`
`42. Patent attorneys in the Netherlands can be registered as a Dutch patent attorney and as a
`European patent attorney. I understand that in this case, Mr. Arie Tol is registered as both
`and that he is a member of the Bar of Dutch Patent Attorneys.21 He is therefore subject to
`provisions of the Dutch Patent Act (“DPA”) and the European Patent Convention22
`(“EPC”).
`
`43. Under Dutch law, a Dutch patent attorney is under a legal obligation to keep confidential
`all that comes to his knowledge by virtue of his work as a patent attorney. See article 23b
`(4) of the Dutch Patent Act (“DPA”) (Exhibit F):
`
`“Unless otherwise under or pursuant to the law, a patent attorney or an individual
`working under such attorney’s supervision, is obligated to observe confidentiality
`regarding all that of which the attorney becomes aware pursuant to his activities.
`This obligation remains in force after termination of the relevant activities.”
`[emphasis added, WAH]
`
`44. See also article 4(a) of the Dutch Code of Conduct for Patent Attorneys (Exhibit F):
`
`
`
`20 The Dutch word for patent attorney is “octrooigemachtigde”. “Octrooi” means patent, “gemachtigde” means
`attorney
`(as
`defined
`in
`e.g.
`Oxford
`Advanced
`American
`Dictionary,
`available
`at
`https://www.oxfordlearnersdictionaries.com/, “a person who is given the power to act on behalf of another in
`business or legal matters”). Fitbit incorrectly suggests that the use of the word “attorney” is reserved for bar-
`admitted attorneys-at-law. See also e.g. Rule 153 EPC which has wording similar to Article 23b DPA and is
`entitled “Attorney-client evidentiary privilege” [emphasis added, WAH].
`21 Like the bar for Dutch attorneys-at-law, the bar for patent attorneys is a semi-public organisation.
`22 The EPC governs, among other things, the grant of European patents (which is, strictly speaking, a bundle of
`national patents).
`
`
`
`
`
`11/17
`
`

`

`
`
`
`
`Case 1:19-cv-11586-FDS Document 210-4 Filed 07/16/21 Page 13 of 18
`
`
`
`
`
`“A Member will observe complete confidentiality in relation to information of a
`confidential nature that the Member knows or reasonably ought to know is
`confidential and that he has received in his capacity as a patent attorney, unless the
`Member is absolved of his duty of confidentiality.”
`
`45. These provisions refer to information entrusted to the patent attorney in his capacity as
`such, or similar wording. In my experience, 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.
`
`46.
`
`In general, the 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 confidentiality of his profession.23
`This implies a narrow exception24 which does not appear to apply in the present situation.
`
`47. Legislative history concerning article 23b(4) DPA (which was passed in 2003) and
`literature on this point, also indicate that the scope of this attorney privilege is broad. From
`the Explanatory Memorandum of Amendment with respect to the amendment of the
`DPA25, it can be derived that the legislature intended to ali