Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 1 of 16
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Plaintiff,
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`v.
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`PHILIPS NORTH AMERICA LLC,
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`
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`FITBIT, LLC.
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`
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`
`
`Defendant.
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`C.A. No. 1:19-cv-11586-FDS
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`JOINT STATUS REPORT IN RESPONSE TO DKT. 61 AND DISPUTED PROPOSAL
`FOR CASE SCHEDULE THROUGH PRETRIAL CONFERENCE
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`

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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 2 of 16
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`Plaintiff Philips North America LLC (“Philips”) and Defendant Fitbit LLC1 (“Fitbit”)
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`jointly file this status report in response to the Court’s order on April 8, 2020 as reflected in Dkt.
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`61, which requested that the parties submit a briefing schedule on Fitbit’s Motion for Partial
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`Summary Judgment (Dkt. 43) with regards to the validity of U.S. Patent No. 6,013,007 (“the ’007
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`Patent”) upon a ruling on Fitbit’s Motion to Dismiss (Dkt. 33). This Court’s Claim Construction
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`Order (Dkt. 212) construed the language “means for computing athletic performance feedback
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`data from the series of time-stamped waypoints obtained by said GPS receiver” and determined
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`that the ’007 patent does not include any structure thereby rendering the following claims
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`indefinite: claims 7, 21, 23, 24, 25, 26, 28, and 29. As explained in more detail below, the parties
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`believe that the Court’s indefiniteness finding renders Fitbit’s Motion for Partial Summary
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`Judgment (Dkt. 43) moot and that all asserted claims of the ’007 Patent have been presently held
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`invalid in this proceeding, and are therefore presently no longer at issue in this proceeding.
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`The parties have met and conferred with respect to the case schedule going forward and
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`submit the following disputed proposal with regards to the case schedule, the bases for which are
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`explained in the parties’ respective positions below:
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`Event
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`Current Deadlines
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`Joint Status Report
`regarding ’233 Patent
`IPR outcome
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`
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`Philips’s Proposed
`Dates
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`Fitbit’s Proposed
`Dates
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`Not necessary.
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`November 1, 2021
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`1 Effective July 31, 2021, Fitbit converted from Fitbit, Inc. to Fitbit LLC. See (D.I. 226, 227.)
`2
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 3 of 16
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`Opening expert reports
`regarding issues as to
`which a party bears the
`burden
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`Last day for PTAB to
`issue a Final Written
`Decision in ’233 Patent
`IPR
`
`September 27, 2021
`(Dkt. 209)
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`September 27, 2021
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`November 29,
`20212,3
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`October 27, 2021
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`
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`
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`Rebuttal expert reports November 8, 2021
`(Dkt. 209)
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`November 8, 2021
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`January 10, 2022
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`December 6, 2021
`(Dkt. 209)
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`December 13, 2021
`(Dkt. 209)
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`December 6, 2021
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`February 7, 2022
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`December 13, 2021
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`February 14, 2022
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`June 24, 2021 (Dkt.
`126/127)
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`January 12, 2022
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`March 16, 2022
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`Close of expert
`discovery, including
`expert depositions
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`Deadline for expert
`discovery motions,
`including Daubert
`motions
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`Dispositive motions,
`such as motions for
`summary judgment or
`partial summary
`judgment and motions
`for judgment on the
`pleadings
`
`
`2 Consistent with its request below, Fitbit’s suggested deadlines reflect a proposed schedule for
`Section 101-specific expert discovery, expert motion practice, and dispositive motion practice,
`with general expert discovery and dispositive motions to follow immediately thereafter if any
`valid, enforceable claims remain. To the extent the Court determines that Section 101-specific
`discovery is unnecessary, the suggested deadlines set forth in Fitbit’s proposed schedule should
`instead be the deadlines for all expert discovery and dispositive motions in order to account for the
`’233 Patent IPR and pending discovery motions discussed in Fitbit’s explanation of its position
`below.
`3 Philips views on scheduling and its response to Fitbit’s footnote are set forth below in the
`scheduling explanations. Philips believes that the basis for the scheduling proposals is not well
`suited to arguments in footnotes.
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`3
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`

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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 4 of 16
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`Joint Pretrial
`Memorandum
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`Motions in Limine
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`Oppositions to Motions
`in Limine
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`Final Pretrial
`Conference
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`March 24, 2022
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`May 26, 20224,5
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`April 7, 2022
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`June 9, 2022
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`April 14, 2022
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`June 16, 2022
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`April 28, 2022
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`On or about June 30,
`2022 subject to the
`Court’s schedule
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`
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`The parties’ respective positions on the current status of the case, and how the case should
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`proceed, are set out below.
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`
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`Philips’s Position
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`Effect of Claim Construction Order: Philips believes that the motion for summary
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`judgment as to the Root ’007 patent is moot, but reserves its rights to argue that the Court
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`improperly determined issues of material fact in contravention of FED. R. CIV. P. 56, including
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`without limitation:
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`1. That the specification includes, among others, the formula for pace specifying that Pace
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`= Time/Distance. See e.g., ‘007 Patent at Fig. 11 (“Current Pace: ? Minutes per Mile”);
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`see also unrebutted Martin Decl. ¶ 24, et seq.
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`2. That the specification states that the formula Pace = Time/Distance (which is similar to
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`the Ohms Law equation of Current = Voltage/Impedance) is to employ a “series of time-
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`4 If the Court orders a dedicated Section 101 expert discovery period and dispositive motions
`practice and valid, enforceable claims remain after that expert discovery period and motions
`practice, Fitbit proposes that the parties should serve opening expert reports on other issues as to
`which the party bears the burden of proof on May 26, 2022 with subsequent deadlines occurring
`at intervals consistent with the schedule above and local practice and rules.
`5 Philips views on scheduling and its response to Fitbit’s footnote are set forth below in the
`scheduling explanations. Philips believes that the basis for the scheduling proposals is not well
`suited to arguments in footnotes.
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`4
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`

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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 5 of 16
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`stamped waypoints” in the equation Pace = Time/Distance. See e.g., ‘007 Patent at 7:40-
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`50; see also unrebutted Martin Decl. ¶ 17, et seq.
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`
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`Schedule: This dispute began with a notice of infringement first served on Fitbit in 2016
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`which, despite Philips’s best efforts to reach settlement, led to the initiation of this lawsuit in July
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`of 2019. This case has now been pending for more than two years, and as is sometimes common
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`among defendants, Fitbit has sought to maximize delay, multiply the proceedings and frustrate
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`the progress of this case to trial. Now, in spite of Fitbit’s 101 eligibility defense having been its
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`main defense in the case since the beginning, Fitbit now suggests that it has not taken the
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`necessary discovery and wishes to expand the prior expert schedule to delay this case in expert
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`discovery. Fitbit also suggests that this court should extend the case so Fitbit can convert its
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`failed 101 eligibility motion into a motion for summary judgment which is also without merit.
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`
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`On top of Fitbit’s attempts to rehash its failed 101 eligibility defense, Fitbit has attempted
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`to raise a late and previously waived inequitable conduct defense, which is without plausible
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`basis to proceed under Iqbal/Twombly and the heightened pleading requirements of Exergen.
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`Fitbit not only chose to withhold the unfounded defense during discovery, but Fitbit continued in
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`spite the fact that this issue came up before Magistrate Judge Boal with regards to Fitbit’s
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`Motion to Compel discovery from prosecution counsel (discussed in more detail below). Now,
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`Fitbit now attempts to leverage its decision to withhold the defense to attempt to derail this
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`case’s progress to pretrial hearing.
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`Fitbit’s position in this case is similarly inconsistent in view of the fact that it has
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`advocated for a very different approach in the retaliatory patent infringement suit that it filed
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`against Philips that is presently pending in this district before the Hon. Judge W. Young and
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`which is tentatively set for trial in June of 2022, despite IPRs having been instituted against all
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`the patents in that case. See Fitbit, LLC v. Koninklijke Philips N.V., et al, No. 1:20-cv-11613-
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`5
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 6 of 16
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`WGY (D. Mass). There is an obvious attempt by Fitbit to have its retaliatory case proceed to
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`trial before this one.
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`Fitbit overstates the potential vagaries in the scope of expert reports that Fitbit identifies
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`as justification for further endless delay in this case, as well as any purported “efficiencies” that
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`would arise from waiting until the resolution of other pending disputes. In any patent
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`infringement case, expert reports necessarily address different issues and contingencies. While
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`some issues, like claim construction, may be necessary to proceed with expert reports—Fitbit’s
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`position is akin to arguing that the Court should hold multiple rounds of summary judgment
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`briefing before the expert reports, and then another after the expert reports.. Contrary to Fitbit’s
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`suggestion, Fitbit’s piecemeal approach cannot conceivably promote judicial efficiency.
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`To date, Fitbit has been quite successful in delaying the orderly progress of this litigation.
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`At the outset, Fitbit sought (and obtained) a delay of discovery in order to allow the Hon. Judge.
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`I. Talwani an opportunity to resolve Fitbit’s Motion to Dismiss under 35 U.S.C. § 101—which
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`Philips maintained from the very beginning would be unsuccessful in view of underlying factual
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`disputes. (See Dkt. 29) Of course, at the end of the day, the § 101 issues that Fitbit had portrayed
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`as so compelling that the case should be delayed, were not so, and this Court ultimately denied
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`the motion. See Dkt. 219. After refusing to participate in discovery for months in light of its
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`position that its Motion to Dismiss should resolve everything, Judge Talwani was forced to order
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`Fitbit to produce documents and comply with the requirements of L.R. 16.6(d). (See Dkt. 56 at
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`13-18 and Dkt. 54). Fitbit also sought to delay all proceedings by 60 days on the basis of
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`COVID, but the Court refused the request in light of the ability to proceed remotely. (See Dkt.
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`47.) Fitbit then delayed fact discovery for many more months by making false allegations that
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`Philips’s source code review expert took photos of Fitbit’s source code. After months of
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`demands and side discovery on the claim, no evidence of such photos was ever found and Fitbit
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`6
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`

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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 7 of 16
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`ultimately agreed to permit source code review to continue, albeit with only 12 business days left
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`in the fact discovery period—requiring a further extension. (See Dkt. 151.)
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`Further efforts to delay the resolution of this case by trial should not be permitted and
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`Fitbit’s retaliatory case should not be permitted to leap frog this case. Were Fitbit’s proposed
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`schedule adopted, it will surely invite only additional attempts at further delay.
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`
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`The ’233 IPR: In early 2020, Fitbit told the court that it might seek an IPR stay if its
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`IPR petitions were granted. (See Dkt. 56 at 31) Fitbit challenged the patents all of the patents,
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`but the PTAB only instituted inter partes review as to the Menard ‘233 patent. The ‘233 IPR
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`institution decision issued on October 27, 2020. Fitbit chose not to seek a stay of the case and
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`instead proceeded with claim construction and the 101 decision rejecting its defenses. Now, in
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`spite of foregoing any IPR stay, Fitbit raises it as a reason to extend and delay the case.
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`Philips offered Fitbit a reasonable compromise: that Philips would agree to extend the
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`deadlines for expert reports in this matter until after resolution of the ’233 IPR in exchange for a
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`similar agreement in Fitbit’s retaliatory action against Philips that would stay that matter until
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`resolution of the instituted IPRs in that matter (which, unlike this matter, were against all
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`asserted patents). Fitbit refused, and there is no reason that this case—which has now been
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`pending for more than two years and in which fact discovery is closed—to be derailed while
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`Fitbit’s retaliatory case, in which discovery just began, potentially proceeds to trial in June of
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`2022. In view of Fitbit’s inconsistencies, any suggestion by Fitbit that it would be more efficient
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`to wait for resolution of the IPR against the ’233 Patent in this case rings hollow.
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`
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`Philips’s Forthcoming Motion to Strike Fitbit’s Inequitable Conduct Defense: Fitbit
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`chose to wait until last week to plead inequitable conduct. As previously explained in Philips’s
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`successful motion to quash and noted by Magistrate Judge Boal, Fitbit could have filed an
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`Answer pleading inequitable conduct at any time while its Motion to Dismiss was pending, but
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`7
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 8 of 16
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`elected not to do so.6 Indeed, in quashing that subpoena, Magistrate Judge Boal recognized that
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`“it is undisputed that Fitbit has not pleaded an inequitable conduct defense. Indeed, it has elected
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`not to answer at this time.” (See Helget v. Fitbit, Inc, No. 21-mc-91150-FDS (D. Mass), Dkt. 48
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`at 4.) That intentional delay by Fitbit should not be permitted to create even further delay now.
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`Other Outstanding Disputes: With regards to other outstanding disputes, there is no
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`cognizable connection between the internal privileged communications of Fitbit’s in-house lead
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`counsel Arie Tol that Fitbit seeks to compel and the service of expert reports. Meanwhile, it is
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`Philips, and not Fitbit, who bears the burden of an opening expert reports on infringement, and
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`Philips intends to include the few additional products that are the subject of its motion to amend
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`the contentions in its opening reports regardless, despite Fitbit’s refusal to produce damages
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`related information for those products until that motion is resolved. Agains, to the extent expert
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`reports on damages need to be supplemented because Fitbit refused to produce that information
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`until a resolution of the motion—that is a complication caused by Fitbit and does not justify
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`further delay.
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`Fitbit’s Position
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`
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`Effect of Claim Construction Order: The Court’s indefiniteness finding renders Fitbit’s
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`Motion for Partial Summary Judgment (Dkt. 43) presently moot as the asserted claims of the ’007
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`Patent have been held invalid and are no longer at issue in this proceeding. Should Philips
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`successfully appeal that ruling, Fitbit reserves the right to refile a Motion for Partial Summary
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`Judgment that the ’007 Patent is directed to ineligible subject matter under 35 U.S.C. § 101.
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`6 See Helget v. Fitbit, Inc, No. 21-mc-91150-FDS (D. Mass), Dkt. 23 at 2 (explaining how Fitbit’s
`refusal to answer was a choice despite the entry of a scheduling order in this matter, and quoting
`Lifeguard Licensing Corp. v. Kozak, 15-CIV-8459-LGS-CF, 2016 WL 3144049, at *1 (S.D.N.Y.
`May 23, 2016) (“Whatever their strategic reasons for moving to dismiss before answering, nothing
`precluded the defendants from filing an answer together with their motion to dismiss, asserting
`any available defenses, and thereby providing the predicate for the discovery they seek.”)
`8
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 9 of 16
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`Schedule: Opening expert reports are presently due on September 27, 2021, with rebuttal
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`reports due November 8. (See D.I. 209.) However, the scope of expert discovery and the issues
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`that the parties’ respective experts will need to address are still in flux.
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`In order to promote judicial efficiency and avoid wasting party resources, Fitbit
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`respectfully requests that the Court modify the current expert discovery schedule with a short
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`extension to start the expert discovery period 30 days after the Patent Trial and Appeal Board
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`(“PTAB”) issues the final written decision in the inter partes review (“IPR”) of the asserted claims
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`of U.S. Patent No. 7,088,233 (“the ’233 Patent”)—one of two patents remaining in the case.7 The
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`IPR decision is due in just two months—no later than October 27, 2021, and will significantly
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`simplify the case either because the asserted claims of the ’233 patent are found unpatentable, or
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`as the result of IPR estoppel that will prevent Fitbit from making certain invalidity arguments if
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`the asserted claims are not invalidated by the PTAB. See 35 U.S.C. § 315(e)(2). Thus, Fitbit
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`proposes that this schedule would permit the parties to efficiently account for the IPR decision
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`before serving opening expert reports. Fitbit’s proposed schedule would also give the Court time
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`to rule on (1) various pending discovery motions that will affect the scope and content of the expert
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`discovery required in this case, and (2) Philips’s potentially forthcoming motion to strike Fitbit’s
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`inequitable conduct defense, which will be subject to both fact and expert discovery if it remains
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`in the case. Following the service of opening expert reports, Fitbit’s proposed schedule above
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`adopts the same time periods between subsequent events as Philips’s proposal—i.e., both parties
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`propose exchanging rebuttal expert reports 42 days after exchanging opening expert reports,
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`closing expert discovery 28 days after exchanging rebuttal expert reports, and so on.
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`7 The Court invalidated all asserted claims of the third asserted patent—U.S. Patent No.
`6,013,007—in the claim construction order, issued on July 22, 2021. (D.I. 212.) As explained
`above, the parties agree that this decision rendered invalid all asserted claims of the ’007 Patent
`and mooted Fitbit’s request for summary judgment of invalidity. Accordingly, only the ’233
`Patent and U.S. Patent No. 8,277,377 (“the ’377 Patent”) remain at issue in this case.
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`9
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 10 of 16
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`Additionally, when expert discovery ultimately proceeds, Fitbit respectfully proposes that
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`§ 101 related expert discovery and summary judgment briefing should proceed before more
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`general expert discovery on other issues, which will also promote efficient use of judicial and party
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`resources.
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`The basis for these proposals is as follows:
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`IPR: First and foremost, an extension of expert discovery is warranted because a final
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`written decision in the IPR of the ’233 Patent is expected no later than October 27, 2021, just one
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`month after the current September 27, 2021 deadline for opening expert reports (in which Fitbit’s
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`expert(s) will address invalidity) and before the deadline for rebuttal expert reports. See 35 U.S.C.
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`§ 316(a)(11) (PTAB must issue a final written decision within one year of instituting an IPR).
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`Here, the PTAB instituted an IPR of all twelve asserted claims of the ’233 Patent—representing a
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`full two-thirds of all claims still asserted in this case—on October 27, 2020.8 (See IPR2020-00910,
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`D.I. 12.)
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` If the PTAB invalidates any asserted claims of the ’233 Patent, then the parties need not
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`address those claims in their expert reports. Further, the PTAB’s final written decision will give
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`rise to IPR estoppel. See 35. U.S.C. § 315(e). Either way, the PTAB’s decision will affect the
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`scope of expert discovery, and could eliminate one of the two currently enforceable and asserted
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`patents and two-thirds of the asserted claims from this case. Proceeding with expert discovery
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`prior to the PTAB’s decision therefore effectively guarantees that the parties will engage in
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`unnecessary efforts to address issues that will become moot only weeks later—either infringement
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`of invalid claims or invalidity arguments that are estopped. Modestly extending expert discovery
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`deadlines until after the ’233 Patent IPR has been resolved, however, will allow the parties to
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`streamline discovery and focus their efforts and the Court’s attention on issues actually in
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`8 Philips originally asserted, and IPR was instituted as to, thirteen claims. Philips subsequently
`withdrew its assertion of Claim 14 of the ’233 Patent in April 2021.
`10
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 11 of 16
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`dispute. As such, the parties should wait until after the PTAB has rendered its IPR decision
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`regarding the ’233 Patent before proceeding with expert discovery.
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`Philips claims that Fitbit is attempting to delay the case via its request for a short extension
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`of the deadline for opening expert reports, and taking inconsistent positions as compared to Fitbit’s
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`patent infringement case against Philips. On the contrary, Fitbit offered to stay both cases through
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`the final written decision on Philips’s IPRs against Fitbit’s patents so that the parties could have
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`full information for purposes of a potential settlement discussion before expending any further
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`resources, but Philips refused. Philips’s similar refusal of Fitbit’s short suggested extension here
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`will waste still more Court and party resources.
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`Pending discovery motions: Second, there are two pending discovery motions that will
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`affect the scope and content of expert discovery: (1) Philips’s motion to amend its infringement
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`contentions (D.I. 167) and (2) Fitbit’s motion to compel the production of certain of Mr. Arie Tol’s
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`emails (D.I. 198).
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`Just as the patents and claims at issue in this case should be fixed before the parties proceed
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`with expert discovery, so too should the products accused of infringement. As noted in the parties’
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`prior briefing, Philips’s pending motion to supplement infringement contentions seeks to belatedly
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`accuse (after the close of fact discovery) four additional products of infringing the ’377 Patent
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`including via newly-accused features such as personalized heart rate zones. (See D.I. 182 at 6.) If
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`the Court permits Philips to amend its infringement contentions to accuse these additional products
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`and features, then the parties will need to conduct additional expert discovery concerning Philips’s
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`infringement and damages apportionment theories as they relate to the previously unaccused
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`products and features. (See D.I. 173 at 8-9; D.I. 182 at 6-8.) Further, given that opening expert
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`reports are due in a matter of weeks, if the parties were to proceed on the current schedule, any
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`expert opinions regarding the new products would likely have to be submitted as piecemeal and
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`inefficient supplemental reports. On the other hand, preparing expert reports regarding the
`11
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 12 of 16
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`additional accused products and features will be unnecessary if the Court ultimately denies
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`Philips’s motion. Therefore, this motion should be decided, and the scope of accused products
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`and expert discovery set, before the parties exchange opening expert reports.
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`Similarly, if the Court compels production of any of Mr. Arie Tol’s withheld emails, the
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`parties will need time for Philips to produce the emails and for Fitbit and its experts to review that
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`production for potential use in expert discovery.9 As explained in the parties’ briefings, Mr. Tol
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`is knowledgeable about Philips’s pre-suit investigation and efforts to license Fitbit and others, both
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`generally and under the Patents-in-Suit. (See, e.g., D.I. 199 at 3-4.) Because Mr. Tol was
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`intimately involved with Philips’s acquisition of the Patents-in-Suit and subsequent efforts at
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`licensing and asserting them, his emails are relevant to at least validity, infringement, and
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`damages—all issues that will be subject to expert discovery and should be fully investigated in
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`fact discovery prior to exchanging expert reports. A hearing on Fitbit’s motion to compel was held
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`before Magistrate Judge Dein on August 24, 2021. Magistrate Judge Dein has not yet ruled on the
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`motion, and asked the parties to submit supplemental information during the week of August 30,
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`2021 to potentially focus the disputed issues.
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`Philips claims that it intends to include these previously-unaccused products in its opening
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`expert report, so there is no cause for the parties to wait for the Court to decide the motion before
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`proceeding with expert discovery. Regardless of Philips’s willingness to potentially waste
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`resources, Fitbit should not be forced to waste resources on its expert addressing those products in
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`a rebuttal report when the Court has not granted Philips’s motion to supplement its contentions,
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`and the products are thus not currently within the scope of this case.
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`Therefore, the Court should decide these pending motions and the parties should conduct
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`any further necessary fact discovery before exchanging any expert reports.
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`9 Fitbit may also request additional deposition time with Mr. Tol or other appropriate follow-up
`discovery to explore the issues addressed in such newly produced documents.
`12
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 13 of 16
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`Philips’s threatened motion to strike: Third, if the ’233 Patent remains in the case,
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`additional motion practice and fact discovery may be necessitated by Fitbit’s inequitable conduct
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`defense against that patent, which is pleaded in Fitbit’s Answer to Philips’s Second Amended
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`Complaint, filed on August 24, 2021.10 Philips has already indicated that it will move to strike
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`this defense, see Helget v. Fitbit, Inc., Case No. 1:21-mc-91150-FDS, D.I. 2 at 3, and further
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`represents above that such a motion is “forthcoming.”
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`If Fitbit’s inequitable conduct defense remains in the case, Fitbit intends to depose the
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`central figure in this defense—the prosecuting attorney for the ’233 Patent—Mr. Gerald
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`Helget. Fitbit previously subpoenaed Mr. Helget, who moved to quash because Fitbit had not yet
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`pleaded its inequitable conduct defense. See Helget v. Fitbit, Inc., No. 21-MC-91150-FDS, 2021
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`WL 1737300, at *3 (D. Mass. May 3, 2021). Magistrate Judge Boal granted Mr. Helget’s motion
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`to quash so that Philips could first test Fitbit’s inequitable conduct defense through the pleading
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`process. Id. Judge Boal expressly noted, however, that “[i]f the inequitable conduct defense
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`survives that process, Helget’s deposition may be appropriate then” and quashed the subpoena
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`“without prejudice to Fitbit seeking Helget’s deposition once it has pleaded inequitable
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`conduct.” Id.
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`Further, if Fitbit’s inequitable conduct defense remains in the case, the parties will likely
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`exchange expert reports regarding the materiality of the information that Mr. Helget withheld
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`during prosecution of the ’233 Patent, and/or Patent Office rules and procedures. Judicial and
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`party efficiency counsels that these reports should be exchanged during the regular expert
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`discovery phase, rather than the parties rushing to exchange them and depose the experts after
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`conducting other expert discovery.
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`
`10 Fitbit first raised this defense in its February 2021 Supplemental Objections and Responses to
`Philips’s First Set of Interrogatories. Because Fitbit’s motion to dismiss Philips’s complaint was
`still pending at that time (see D.I. 33), Fitbit had not yet answered the Complaint.
`13
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`

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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 14 of 16
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`Section 101 issues: Finally, the Court’s recent order on Fitbit’s motion to dismiss Philips’s
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`complaint for Section 101 ineligibility identified a small number of potentially case-dispositive
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`issues relating to the patent-eligibility of all asserted claims of the ’233 and ’377
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`Patents. Specifically, the Court ruled that all of the currently-remaining, enforceable asserted
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`claims of the ’233 and ’377 Patents are directed to abstract ideas under Section 101 and Step One
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`of the Alice test. (D.I. 219 at 12, 19.) However, the Court denied Fitbit’s motion to dismiss in
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`light of Philips’s allegations in the Complaint of inventiveness under Alice Step Two. (Id. at 12-
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`16, 19-21.) In doing so, however, the Court specifically identified the few inventive concepts
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`Philips adequately alleged, finding that Philips’s allegations “border on the conclusory” and that
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`“discovery may well prove otherwise.” Id. at 20. Therefore, the few remaining Section 101
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`patent-eligibility issues—whether or not the asserted claims of the ’233 and ’377 patents contain
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`inventive concepts—are discrete and potentially dispositive.
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`To further streamline this case and conserve Court and party resources, Fitbit respectfully
`
`submits that when expert discovery ultimately proceeds, the parties should first exclusively address
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`Section 101 issues through dedicated patent-eligibility-related expert discovery and summary
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`judgment briefing; then, if any asserted patent-eligible claims remain, the parties can proceed to
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`conduct the rest of expert discovery and prepare for trial. See, e.g. Cellspin Soft, Inc. v. Fitbit,
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`Inc., Case No. 4:17-cv-05928-YGR, D.I. 136 (N.D. Cal. June 12, 2020) (scheduling a Section 101-
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`dedicated discovery and summary judgment period preceding general discovery). Addressing
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`Section 101 first through dedicated discovery and summary judgment practice will further allow
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`the parties to substantially narrow—and potentially resolve—the issues in dispute before
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`proceeding with more costly and intensive general expert discovery, summary judgment practice,
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`and trial preparation on infringement, invalidity, damages, and potentially, unenforceability for
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`inequitable conduct.
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`
`
`14
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 15 of 16
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`Dated: August 27, 2021
`
`Respectfully submitted,
`
`PHILIPS NORTH AMERICA LLC,
`
`By its Attorneys,
`
`/s/ Eley O. Thompson
`Ruben Rodrigues (BBO 676,573)
`Lucas I. Silva (BBO 673,935)
`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
`rrodrigues@foley.com
`lsilva@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
`
`FITBIT, LLC.
`
`By Its Attorneys,
`
`/s/ David J. Shaw
`David J. Shaw (pro hac vice)
`dshaw@desmaraisllp.com
`DESMARAIS LLP
`1701 Pennsylvania Ave., NW, Suite 200
`Washington, D.C. 20006
`Telephone: (202) 451-4900
`Facsimile: (202) 451-4901
`
`Karim Z. Oussayef (pro hac vice)
`koussayef@desmaraisllp.com
`Leslie M. Spencer (pro hac vice)
`lspencer@desmaraisllp.com
`Brian D. Matty (pro hac vice)
`bmatty@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`
`Ameet A. Modi (pro hac vice)
`amodi@desmaraisllp.com
`Emily H. Chen (pro hac vice)
`echen@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
`
`Gregory F. Corbett (BBO # 646394)
`Elizabeth A. DiMarco (BBO#681921)
`WOLF, GREENFIELD & SACKS, P.C. 600
`Atlantic Avenue
`Boston, MA 02110
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`gcorbett@wolfgreenfield.com
`edimarco@wolfgreenfield.com
`
`
`
`
`15
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`Case 1:19-cv-11586-FDS Document 228 Filed 08/27/21 Page 16 of 16
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the above document was
`
`served on August 27, 2021 on counsel for Defendant via electronic mail.
`
`
`
`
`
`
`/s/ Ruben J. Rodrigues
`Ruben J. Rodrigues
`
`
`
`16
`
`