Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 1 of 11
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`PHILIPS NORTH AMERICA LLC,
`
`v.
`
`FITBIT, INC.,
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 1:19-cv-11586-FDS
`
`
`
`
`PLAINTIFF’S SUR-REPLY IN OPPOSITION TO FITBIT, INC.’S MOTION TO
`COMPEL THE PRODUCTION OF CERTAIN OF MR. ARIE TOL’S EMAIL
`COMMUNICATIONS
`
`
`
`

`

`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 2 of 11
`
`TABLE OF CONTENTS
`
`Introduction ......................................................................................................................... 1 
`
`The Gerritzen Declaration Fails to Deny that Dutch Patent Attorneys are Afforded
`Privilege by Dutch Law and Are Authorized In Duties Beyond Filing Patent Applications
`............................................................................................................................................. 2 
`
`Fitbit Offers No Legal Basis to Apply the Professional Charter to Dutch Patent Attorneys
`............................................................................................................................................. 3 
`
`Fitbit’s Cited Cases Are Inapposite .................................................................................... 4 
`
`Conclusion .......................................................................................................................... 6 
`
`
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 3 of 11
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases 
`Align Tech., Inc. v. 3Shape A/S, No. CV 17-1646-LPS, slip op. (D. Del. Feb. 3, 2020) ............ 4, 5
`
`Align Tech., Inc. v. 3Shape A/S, No. CV 17-1646-LPS, 2020 WL 1873026 (D. Del. Apr. 15,
`
`2020) ....................................................................................................................................... 4, 6
`
`Cadence Pharms., Inc. v. Fresenius Kabi USA, LLC, 996 F.Supp.2d 1015 (S.D. Cal. 2014) ....... 6
`
`In re Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016) ..................................... 5, 6
`
`Knauf Insulation, LLC v. Johns Manville Corp., No. 1:15-cv-00111-TWP-MJD, 2019 WL
`
`4832205 (S.D. Ind. Oct. 1, 2019) ................................................................................................ 4
`
`McCook Metals L.L.C. v. Alcoa, Inc., 192 F.R.D. 242 (N.D. Ill. 2000) ..........................................6
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 4 of 11
`
`
`
`I.
`
`Introduction
`
`Fitbit’s Reply (Dkt. No. 213 (“Reply”)) fails to refute that under either U.S. or Dutch law,
`
`the communications at issue are privileged.
`
`First, the declaration of Frits Gerritzen (Reply, Ex. 1 (“Gerritzen Decl.”)) completely fails
`
`to offer an opinion as to what constitutes the proper scope of authorized work for a Dutch Patent
`
`Attorney 1 —a focus of Prof. Hoyng’s declaration. Additionally, Mr. Gerritzen does not
`
`meaningfully rebut any of Professor Hoyng’s opinions regarding the legal privilege that Dutch
`
`Patent Attorneys are afforded under Dutch law. Specifically, Mr. Gerritzen does not even dispute
`
`any of Prof. Hoyng’s conclusions, such as that the authorized scope of work for Dutch Patent
`
`Attorneys is broader than mere prosecution of patent applications and that the communications
`
`would be privileged under Dutch law. Indeed, despite being asked by Fitbit “to analyse the
`
`arguments brought forward in Philips’s Expert Statement for invoking privilege under Dutch law”
`
`and to “provide [his] opinion on those arguments”, Mr. Gerritzen’s declaration only purports to
`
`“provide the necessary nuance” to Prof. Hoyng’s statements regarding Dutch privilege. Reply, Ex.
`
`1, Gerritzen Declaration (hereinafter “Gerritzen Decl.”) at 2.
`
`Additionally, as explained by Prof. Hoyng, the “professional charter” requirement only
`
`applies to Dutch Attorneys-At-Law and applying it to Dutch Patent Attorneys “has never been
`
`argued by anybody”. Ex. 1, Prof. Hoyng Supplemental Declaration (hereinafter “Supp. Decl.”), at
`
`¶ 30. Further, Fitbit’s only support for this newly presented theory is Mr. Gerritzen’s opinion that
`
`“it could reasonably be argued”; indeed Mr. Gerritzen does not once express the opinion that this
`
`novel theory is actually correct. See Gerritzen Decl. at 12.
`
`
`1 In its Reply Brief, Fitbit continues to incorrectly refer to the “octrooigemachtigden” as “Dutch patent agents”
`despite the fact that the proper translation, as explained in Philips’s Opposition, is “Patent Attorney”. Dkt. No. 210
`(“Opp.”) at n.3; Opp., Ex. 2 (“Hoyng Decl.”), at 11, n. 20. In fact, Mr. Gerritzen not only exclusively uses the phrase
`“patent attorney” throughout his declaration, but he also expressly acknowledges that this is the correct definition of
`“octrooigemachtigden”. See Gerritzen Decl. at ¶ 1.2 (I was asked by Fitbit to provide a declaration on legal privilege
`for patent attorneys (“octrooigemachtigden”) under Dutch law.)
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 5 of 11
`
`
`
`Finally, none of the cases that Fitbit cites for the first time in their Reply Brief lead to a
`
`different conclusion. For instance, Align Tech, which Fitbit describes as “very similar” to the case
`
`at hand, concerned the laws of Denmark (not the Netherlands), cites to Knauf extensively, and
`
`describes a framework under which Dutch Patent Attorneys would be afforded privilege. Fitbit
`
`also fails to provide any contradictory authority to Knauf and, in fact, does not even argue that the
`
`analysis by Knauf is incorrect.
`
`II. The Gerritzen Declaration Fails to Deny that Dutch Patent Attorneys are Afforded
`Privilege by Dutch Law and Are Authorized In Duties Beyond Filing Patent
`Applications
`
`The Gerritzen Declaration is conspicuously missing any opinion by Mr. Gerritzen as to
`
`whether Dutch Patent Attorneys have authorized duties under Dutch law beyond drafting patent
`
`applications—the crux of Fitbit’s entire argument. Likewise, the closest Mr. Gerritzen gets to
`
`actually taking a position on whether Dutch Patent Attorneys are afforded privilege is claiming
`
`that Prof. Hoyng’s arguments “are not as clear-cut as presented in Philips’s Expert Statement.”
`
`Gerritzen Decl. at 2. Mr. Gerritzen does nothing to challenge Prof. Hoyng’s ultimate conclusion
`
`that he “respectfully disagree[s] with Fitbit’s assertion that the Netherlands does not recognize a
`
`patent attorney privilege for matters other than proceedings before the Dutch Patent Office.” Dkt.
`
`No. 210 (Opposition), Ex. 2 (Hoyng Declaration) (hereinafter “Hoyng Decl.”) at ¶ 56.
`
`Further, the alleged “nuance” that the Gerritzen Declaration attempts to provide to Prof.
`
`Hoyng’s opinions is mostly irrelevant and without merit. For instance, as explained by Prof.
`
`Hoyng, the Telegraaf case relied on heavily by Mr. Gerritzen had major public policy implications
`
`that do not apply in a discovery dispute between private parties.2 Supp. Decl. at ¶ 5. Mr. Gerrizten’s
`
`other arguments similarly lack merit. See e.g., Supp. Decl. at ¶¶ 31-36.
`
`
`2 Specifically, Telegraaf involved whether the State could withhold information regarding whether special powers
`were used by the Dutch Secret Service against certain journalists. See Supp. Decl. at ¶ 5.
`2
`
`
`

`

`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 6 of 11
`
`
`
`Mr. Gerritzen also does not deny that Bruil is outdated. See Gerritzen Decl. at 10 (“It must
`
`be noted that the DPA was amended after the [Bruil] case . . . .”). As Prof. Hoyng’s explains this
`
`amendment renders Bruil obsolete as “it becomes unmistakably clear from the legislative history
`
`that the legislator intended, with the introduction in 2003 of Article 23b(4) DPA, to award legal
`
`privilege to the patent attorney and to end controversy about this question, also in relation to
`
`foreign litigation.” Supp. Decl. at ¶ 17. Nowhere in his declaration does Mr. Gerritzen deny that
`
`this is the correct interpretation of the legislative history of the amendment.
`
`In fact, Mr. Gerritzen does not challenge any of Prof. Hoyng’s sources.3 For instance, Mr.
`
`Gerritzen does not argue that any of the legal commentators relied upon by Prof. Hoyng are not
`
`credible authorities on the subject. Because Mr. Gerritzen does not dispute that Prof. Hoyng’s
`
`sources are credible and also does not dispute Prof. Hoyng’s ultimate conclusions, he fails to rebut
`
`the fact that under Dutch law, the authorized scope of work for Dutch Patent Attorneys is broader
`
`than simply prosecuting patent applications (and includes infringement analysis and licensing
`
`negotiations) and that under Dutch law they are afforded privilege accordingly. See Hoyng Decl.
`
`at ¶¶ 40-56.
`
`III. Fitbit Offers No Legal Basis to Apply the Professional Charter to Dutch Patent
`Attorneys
`
`As Prof. Hoyng explains, the professional charter requirement was enacted in order to
`
`allow Dutch Attorneys-At-Law employed by corporations to conduct limited court proceedings
`
`while ensuring they were also able to conduct these proceedings independently without undue
`
`influence from their employer. Supp. Decl. at ¶¶ 27-29. As explained by Prof. Hoyng, the
`
`requirement to sign a professional charter only applies to Dutch Attorneys-At-Law who are
`
`
`3 Mr. Gerritzen does challenge the applicability of 1019a (3) DCCP to the present case, but as Prof. Hoyng explains,
`even if Mr. Gerritzen is correct that 1019a (3) DCCP does not apply, it is of no consequence as there is not a
`fundamental difference between Articles 843 (4) and 1019a (3) DCCP and even if there were a difference, Article
`843 (4) DCCP offers more protections from the production of documents. Supp. Decl. at ¶ 6.
`3
`
`
`

`

`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 7 of 11
`
`
`
`employed by corporations, not Dutch Patent Attorneys and such an application would conflict with
`
`the statutory provision of Article 23b (4) DPA. Supp. Decl. at ¶ 30.
`
`Further, Fitbit does not point to any authority (legal or otherwise) for this novel argument,
`
`which was raised for the first time in their Reply. In fact, Fitbit’s own Dutch legal expert, Mr.
`
`Gerritzen, does not even express an opinion that this theory is correct instead choosing to limit his
`
`position to the non-committal assertion that this theory “could reasonably be argued”. Gerritzen
`
`Decl. at 12. Mr. Gerritzen also does not provide any evidence of this theory even being considered,
`
`nor could he because “it has never been argued by anybody that such professional charter should
`
`also be required for patent attorneys”. Supp. Decl. at ¶ 30.
`
`IV. Fitbit’s Cited Cases Are Inapposite
`Philips’s Opposition Brief explained that the decision in Knauf is analogous to this matter
`
`and that the same reasoning should be applied here. Fitbit’s attempt to distinguish Knauf as an
`
`“out-of-circuit” case and thus not binding, falls flat when Fitbit’s own “similar case”, Align Tech4
`
`(which is also out of Circuit) cites Knauf extensively in its reasoning. See Align Tech. Order, No.
`
`CV 17-1646-LPS, slip op. at 15-17, 18 n.12 (citing Knauf Insulation, LLC v. Johns Manville Corp.,
`
`No. 1:15-cv-00111-TWP-MJD, 2019 WL 4832205 (S.D. Ind. Oct. 1, 2019) four separate times).
`
`Of course, Align Tech. is not as ‘similar’ of a case as Fitbit makes it out to be. Obviously Align
`
`Tech. differs from the present case for the simple fact that it dealt with the law of Denmark rather
`
`than Dutch law. See Align Tech. Order at 5 (D. Del. Feb. 3, 2020). Additionally, and perhaps more
`
`importantly, Align Tech. did not apply either U.S. law or the law of Denmark via the “touch base”
`
`
`4 Fitbit cited to both a memorandum order from a Magistrate Judge as well as an opinion by the District Court Judge
`affirming the Magistrate Judge’s opinion. See Reply at 3-4 (citing Align Tech., Inc. v. 3Shape A/S, No. CV 17-1646-
`LPS, slip op. (D. Del. Feb. 3, 2020) (hereinafter “Align Tech. Order”) and Align Tech., Inc. v. 3Shape A/S, No. CV
`17-1646-LPS, 2020 WL 1873026 (D. Del. Apr. 15, 2020) (hereinafter “Align Tech. Opinion”). The District Court
`agreed with the Magistrate Judge’s opinion in every respect and adopted the memorandum order. Align Tech.
`Opinion at *1. Thus, for convenience, this sur-reply simply refers to them both collectively as “Align Tech.”.
`4
`
`
`

`

`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 8 of 11
`
`
`
`test, but instead formulated its own test5 based on the In re Queen decision. Id. at 14-18; In re
`
`Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016). However, in the present action,
`
`Fitbit agrees with Philips that the “touch base” test should apply although there is disagreement to
`
`the result of that test.6 See Dkt. No. 199 (“Memorandum”) at 5-6, 9. Thus, it is unclear why Fitbit
`
`believes that the reasoning employed in a District of Delaware case that analyzed this issue under
`
`an entirely different framework is instructive.
`
`However, even under the framework set out by Align Tech., Mr. Tol’s emails would be
`
`deemed privileged as Philips has shown that the communications at issue were made to or by Dutch
`
`Patent Attorneys acting within the scope of their authorized practice of law as set out by Dutch
`
`law. See Opp. at 11-16; Hoyng Decl. at ¶¶ 45-56; see also Suppl. Decl. at ¶¶ 20-25. Philips has
`
`also shown that Dutch law recognizes a patent-lawyer privilege that is broader than what is
`
`recognized by U.S. courts and that the communications at issue fall within the scope of that
`
`privilege. See Opp. at 11-16; Hoyng Decl. at ¶¶ 40-65; see also Suppl. Decl. at ¶¶ 14-25.
`
`
`5 The test stated that “a patent-agent privilege could serve to shield certain communications between registered
`foreign patent agents and their clients from disclosure, if the party seeking protection could show either that: (1) the
`communications at issue were made to or by patent agents acting within the scope of the ‘authorized practice of law’
`set out by the law of the foreign country (or by the regulations of an [sic] governmental entity similar to the
`USPTO); or (2) the law of the foreign country at issue otherwise recognizes a patent-agent privilege that is broader
`than or otherwise in conflict with that recognized by United States courts, and the foreign communications at issue
`fall within the scope of that privilege.” Align Tech. Order, No. CV 17-1646-LPS, slip op. at 18; see also Align Tech.
`Opinion, 2020 WL 1873026, at *2 (adopting this exact test).
`6 Fitbit asserts that only U.S. law applies whereas Philips has noted that this is a unique situation where many of the
`communications involve both aspects that touch base with the U.S. (in the form of enforcement of a U.S. Patent or a
`contract dispute under U.S. law) and aspects that do no touch base with the U.S. (in the form of enforcement of non-
`U.S. patents). See Memorandum at 9; Opp. at 4. Further, contrary to Fitbit’s assertion otherwise, Philips did in fact
`“identif[y] specific communications . . . that only touch base with the Netherlands.” Reply at 1. For instance, in its
`Opposition, Philips noted that “[b]ecause of the approach taken by Philips in preparing for litigation early against
`Fitbit, almost all the correspondence that Fitbit seeks to compel involves both U.S. and Foreign patents” and then in
`a footnote clarified that “[t]he exceptions to this are Entry Nos. [5]8 , 59, 82, 208, and 209 which as explained in Mr.
`Tol’s declaration, relate only to foreign patents.” Opp. at 4, n. 4. (Footnote 4 of Plaintiff’s Opposition mistakenly
`referred to Entry No. 58 as Entry No. “8”. Fitbit has not moved to compel Entry No. 8. See Dkt. No. 198.)
`Additionally, the Tol declaration describes the contents of each of the challenged entries and notes when entries deal
`only with Foreign patents as demonstrated by the descriptions regarding the five entries listed above (Nos. 58, 59,
`82, 208, and 209). See Opp., Ex. 1, Tol. Decl. at ¶¶ 25, 32, 35. Further, even if Philips had not specifically identified
`which communications only touch base with the Netherlands, this point is mooted as Philips’s Opposition
`demonstrates how under either Dutch or U.S. law, all of the emails would be privileged, thus meeting its “burden of
`determining which communications are privileged”. See Opp. at 4-5.
`5
`
`
`

`

`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 9 of 11
`
`
`
`Additionally, in Align Tech., the party seeking to establish privilege “identifie[d] no case,
`
`statute, or other legal authority establishing that Danish patent agents are legally authorized to
`
`engage in infringement, validity, or freedom-to-operate analysis.” Align Tech. Opinion, 2020 WL
`
`1873026, at *2. Here, Philips, through Prof. Hoyng’s declaration, has identified legal authority,
`
`including statutes and commentary of Dutch legal scholars that demonstrates that Dutch Patent
`
`Attorneys are authorized to perform tasks beyond just providing assistance with patent application.
`
`See Hoyng Decl. at ¶¶ 45-56; Supp. Decl. at ¶¶ 20-25.
`
`Fitbit’s also cannot rely on Cadence as it was decided before In re Queens, and thus the
`
`principle that foreign patent agent privilege should be “strictly construed” is based on the now-
`
`outdated assumption that no U.S. patent agent privilege exists. 7 Cadence Pharms., Inc. v.
`
`Fresenius Kabi USA, LLC, 996 F.Supp.2d 1015, 109 (S.D. Cal. 2014)). Additionally, Philips is
`
`unaware of any court applying this principle after In re Queens.
`
`V. Conclusion
`For the foregoing reasons, Philips respectfully requests that Fitbit’s Motion be DENIED.
`
`
`7 Indeed, the case that Cadence quotes verbatim for this principle also notes that “generally no communication from
`patent agents, whether American or foreign, are subject to the attorney-client privilege in the United States.”
`McCook Metals L.L.C. v. Alcoa, Inc., 192 F.R.D. 242, 256 (N.D. Ill. 2000).
`6
`
`
`

`

`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 10 of 11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
` /s/ Ruben J. Rodrigues
`Lucas I. Silva (BBO 673,935)
`Ruben J. Rodrigues (BBO 676,573)
`John Custer (BBO 705,258)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Suite 2500
`Boston, MA 02199-7610
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`lsilva@foley.com
`rrodrigues@foley.com
`jcuster@foley.com
`
`
`
`Eley O. Thompson (pro hac vice)
`FOLEY & LARDNER LLP
`321 N. Clark Street
`Suite 2800
`Chicago, IL 60654-5313
`Phone: (312) 832-4359
`Fax: (312) 832-4700
`ethompson@foley.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`Counsel for Plaintiff
` Philips North America LLC
`
`
`Dated: August 11, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`

`

`
`
`
`
`Case 1:19-cv-11586-FDS Document 220 Filed 08/11/21 Page 11 of 11
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 11, 2021 a copy of the foregoing document
`
`was filed with the Court through the ECF system and that a copy will be electronically served on
`
`registered participants as identified on the Notice of Electronic Filing.
`
`/s/ Ruben J. Rodrigues
`
` Ruben J. Rodrigues
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`