Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 1 of 21
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`PHILIPS NORTH AMERICA LLC,
`
`
`
`
`
`FITBIT, INC.
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`JOINT STATEMENT
`
`C.A. No. 1:19-cv-11586
`
`JURY TRIAL DEMANDED
`
`
`
`The Parties respectfully submit this Joint Statement to provide information in advance of
`
`the March 24th, 2020 Scheduling Conference, which was set by the Court’s order of December 2,
`
`2019. (D.I. 31.).
`
`Philips’ statement requesting a Telephonic Hearing
`
`Due to the situation with COVID-19, the Philips requests that the court hold the March 24th
`
`Scheduling Hearing by telephonic means only. Unlike Fitbit, who is requesting the conference
`
`be cancelled, Philips believes that the scheduling conference would be useful to get the case
`
`moving again after the partial stay of discovery that Fitbit was already provided. Fitbit’s strategy
`
`to date has focused on maximizing delay, and filing serial dispositive motions as pretext for that
`
`delay.
`
`Philips strongly opposes Fitbit’s request to continue the scheduling conference for 60 days.
`
`Under the schedule that Philips proposes, all the deadlines through the end of June relate to
`
`claim construction, and involve exchanges between the parties and electronic filings with the
`1
`
`4819-6916-7543.2
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 2 of 21
`
`
`
`Court—activities that can take place while working from home. The parties have already
`
`exchange infringement, non-infringement, and invalidity contentions—and there is no reason to
`
`further delay claim construction proceedings. To the extent accommodations need to be made on
`
`an item by item basis, the parties can handle them in the context of the overall schedule, but
`
`putting everything off for 60 more days is unwarranted.
`
`That the parties can be productive during the work from home procedures temporarily in
`
`place is evidenced by Fitbit’s ability to prepare and file a Motion for Partial Summary Judgment
`
`seeking to invalidate the asserted ’007 Patent for indefiniteness. (See Dkt. 44, filed March 19,
`
`2020.) If Fitbit can prepare a motion for summary judgment during the COVID-19 situation, it
`
`stands to reason that it can engage in exchanging claim terms for construction and claim
`
`construction briefing. To the extent any claim construction experts are relied on necessitating
`
`expert depositions in May, the parties can evaluate the situation then, and could always conduct
`
`those depositions by video if travel restrictions remain in place—though hopefully the situation
`
`will have improved significantly or passed by then.
`
`Fitbit’s Motion for Partial Summary Judgment itself demonstrates the need to get through
`
`claim construction sooner than later—and surely not in February of 2021 as proposed in Fitbit’s
`
`schedule. Absent in Fitbit’s Motion is any discussion of how the term “athletic performance
`
`feedback data” should be construed in isolation or in the context of the claim—yet interpretation
`
`of the claim is a predicate to any determination as to whether support under 35 U.S.C. § 112 ¶ 6
`
`is required or provided in the patent specification. See Lockheed Martin Corp. v. Space
`
`Systems/Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003) (“Once a court establishes that a
`
`means-plus-function limitation is at issue, it must identify and construe that limitation, thereby
`
`4819-6916-7543.2
`
`2
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 3 of 21
`
`
`
`determining what the claimed function is, and what structures disclosed in the written description
`
`correspond to the ‘means’ for performing that function.”
`
` Prior to Fitbit filing the motion, Philips explained to Fitbit that, if Fitbit sought to raise the
`
`issue of indefiniteness of the ‘007 Patent, then Fitbit should do so during claim construction,
`
`when the Court would already be evaluating the specification and other claim terms. This is
`
`commonly how such issues are addressed at least in the first instance. Under Philips’s schedule,
`
`that process would be completed in a few months. Instead, Fitbit filed its motion. Philips
`
`therefore suggests that the interpretation and alleged indefiniteness of the ‘007 patent should be
`
`addressed firstly in the context of claim interpretation and, to the extent that any issues remain,
`
`Fitbit could renew its motion accordingly.
`
`A further stay of discovery would be highly prejudicial to Philips. To date, relying on the
`
`temporary stay of discovery imposed at the scheduling conference in December of 2019, Fitbit
`
`has chosen to only produced prior art in this case. Philips has not received any technical
`
`documentation describing how the accused products function, despite the parties’ agreement to
`
`comply with L.R. 16.6(d) by the dates agreed to in the original proposed schedule.
`
`Fitbit’s statement
`
`As to Philips’ request for a telephonic hearing, Fitbit agrees that if the Court should
`
`decide to proceed with the March 24 conference, it should be held by telephonic means only.
`
`Fitbit’s counsel may not be able to travel to Boston given the “shelter-in-place” order in
`
`California, where counsel is located. Fitbit also notes that the Boston Harbor hotel its counsel
`
`had booked for this hearing has just now closed until May.
`
`As to the overall schedule, Fitbit requests that the Court wait 60 days prior to
`
`implementing a case schedule. At the last scheduling conference this Court entered a partial stay
`
`4819-6916-7543.2
`
`3
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 4 of 21
`
`
`
`on discovery, pending the Court’s ruling on Fitbit’s case-dispositive motion to dismiss all
`
`asserted claims based on patent ineligibility. This motion is pending, and thus the rationale for
`
`the current discovery stay remains irrespective of any considerations brought on by the COVID-
`
`19 virus.
`
`In addition, the current posture of this case supports an extension of the current discovery
`
`stay. The pleadings are still open and no answer has been filed, with Fitbit’s Rule 12(b)(6)
`
`motion to dismiss all Philips’ asserted patents fully briefed and pending. As the Court stated at
`
`the Rule 26(f) conference, “I don’t want the unnecessary expenses [of full discovery] if there
`
`seems to be a solid reason to hold this thing off.” Dec. 2 Hrg. Tr. 23:2–3. And in response to
`
`Philips’ counsel’s statement that “an exploration of damages” was required, the Court responded
`
`that “[w]hy not hold off on this [damages discovery] until I get this first issue [of Fitbit’s motion
`
`to dismiss] dealt with?” Id. at 9:3, 10:11–12. Again, even irrespective of any reasons to extend
`
`the current stay due to the COVID-19 outbreak, the rationale relied on by the Court at the
`
`December 2 hearing to support the current discovery stay remains.
`
`Extending the current discovery stay does not prejudice Philips. Philips filed the
`
`Complaint on July 22, 2019, but waited until October 2, 2019 to serve the complaint on Fitbit.
`
`By the time Philips had served complaint two of the four asserted patents in suit had expired. A
`
`third asserted patent expired in January 2020 and the fourth patent is either already expired or at
`
`best will expire in less than a year, well before any trial in this action. Philips did not seek a
`
`preliminary injunction and, according to its interrogatory responses, does not seek lost profits
`
`damages, and “is presently unaware of any Philips products that would have imposed a requirement
`
`to mark pursuant to 35 U.S.C. § 287.” The early procedural posture of the case, together with
`
`Philips’ delay in bringing suit, suggests that an additional 60-day delay will result in no undue
`
`4819-6916-7543.2
`
`4
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 5 of 21
`
`
`
`prejudice, again irrespective of any considerations due to the COVID-19 outbreak.
`
`In addition, Fitbit asserts that the rationale for extending the existing stay is further
`
`supported by the COVID-19 travel restrictions and public facility closings. Philips proposes the
`
`same pretrial and discovery schedule it urged and the Court rejected in early December, with no
`
`consideration of any accommodations or mechanics for addressing the COVID-19 virus. Fitbit
`
`respectfully submits that a reassement of the case schedule in 60 days would allow the parties
`
`and the Court to determine a realistic schedule for discovery with the benefit of additional facts
`
`indicating what is prudent at that time to address the safety of the parties’ employees, Court staff,
`
`employees of third-party vendors like court reporters, and the parties’ counsel.
`
`Currently, local governments in the San Francisco Bay area have ordered all citizens to
`
`“shelter-in-place,” and for all “non-essential” businesses to close at least until April 7. See
`
`https://www.sfdph.org/dph/alerts/files/HealthOrderC19-07-%20Shelter-in-Place.pdf. Both Fitbit
`
`and its counsel in this action are currently subject to these orders from the San Francisco, San
`
`Mateo, and Santa Clara County governments. Fitbit and its counsel’s offices are closed.
`
`California’s governor has just imposed a “stay at home” order. All schools are closed, placing
`
`additional child care burdens on Fitbit employees and its legal counsel. With shelter-in-place and
`
`stay at home restrictions the ability to respond to discovery is negatively impacted. Travel
`
`restrictions and social distancing requirements would prevent Fitbit’s witnesses from being
`
`available for depositions. Given the restrictions, complying with discovery obligations at this
`
`time would be challenging. The current restrictions, and the fact that new infections in the U.S.
`
`continue to increase every day (confirmed infections in the U.S. doubled in the past two days
`
`ending March 19), also supports at least a 60 day continuance of the existing stay on discovery,
`
`in addition to the rationale relied on by the Court in December to impose the stay of discovery in
`
`4819-6916-7543.2
`
`5
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 6 of 21
`
`
`
`the first instance.
`
`Philips argues that the filing of the motion for partial summary judgment of
`
`indefiniteness demonstrates that work during the COVID-19 pandemic can proceed as normal.
`
`This motion was prepared long ago. Indeed Fitbit informed Philips of the legal defect before the
`
`Complaint was even served, and later spelled out the legal defect in a Rule 11 letter. The ‘007
`
`motion for partial summary judgment is narrowly tailored, directed to a discrete legal issue, and
`
`was filed now in response to recent Federal Circuit law, as explained below in the section
`
`concerning pending motions.
`
`A. Proposed Schedule:
`
`Leading up to the Scheduling Conference, in November 2019 the Parties submitted a
`
`proposed scheduled. (D.I. 22.) The parties had agreed to the items through March 24, 2020, and
`
`the Court adopted those items at the hearing on December 2, 2019 including deadlines for the
`
`exchange of L.R. 16.6(d)(1) and 16.6(d)(2) disclosures. The Parties have operated under that
`
`schedule since the hearing including the exchanged initial infringement and validity contentions.
`
`The parties have also exchanged written discovery and preliminary responses except for full
`
`documentary and deposition discovery, consistent with this Court’s instructions.
`
`Philips’s statement:
`
`Philips suggests that the Court should enter the schedule as Philips proposes in Exhibit 1.
`
`The schedule as Philips proposes generally follows the schedule contemplated by the local rules.
`
`As before, Philips contends that the case should not be stayed pending the resolution of
`
`Fitbit’s motion to dismiss under Section 101 and that the motion should be denied. Philips
`
`understands that Fitbit intends as a back-up position to ask for further delay by bifurcating and
`
`staying damages in the case. Fitbit has not revealed wether it intends to argue that damages
`
`should be bifurcated to an entirely separate trial, or whether Fitbit seeks to argue that damages
`6
`
`4819-6916-7543.2
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 7 of 21
`
`
`
`discovery should simply be delayed until the end of discovery. Either way, there is no reasoned
`
`basis for delaying or bifurcating this case, as that would only serve to complicate and lengthen
`
`the proceedings. The proposal by Fitbit would permit less days to complete all of damages
`
`discovery including dealing with objections to all forms of written discovery (interrogatories,
`
`requests for production and any RFAs), conduct depositions and follow-up discovery. Fitbit
`
`witnesses would have to be re-deposed with late-produced documents and damages-specific
`
`questions, this would encourage motion practice to prevent depositions and other discovery that
`
`could be handled orderly through the regular course of discovery. Also, because Philips is
`
`alleging that Fitbit induces its customers to infringe, documents that relate to sales of the accused
`
`products may also relate to demonstrating induced infringement. If the Court intends to entertain
`
`a motion from Fitbit to bifurcate and stay the case, Philips requests the opportunity to brief the
`
`request.
`
`Relative to the production of electronic documents, which is most of the production, there in
`
`no reason that the parties cannot get started. The collection can be processed largely on
`
`computers while people are working remotely. Work in this nation needs to continue. There is
`
`plenty of time for depositions that ususally occur after document production anyway.
`
`Fitbit’s statement:
`
`As discussed above, Philips re-urges the same schedule it proposed in December of last
`
`year. Philips does not provide any new reasoning or justification for adopting the schedule the
`
`Court rejected in December. Indeed, Philips’ proposal does not include any consideration of the
`
`current travel and work restrictions, including no discussion on how the parties would complete
`
`discovery such as depositions in Europe and throughout the United States given the current travel
`
`restrictions. At the case management conference on December 2, this Court rejected Philips’
`
`4819-6916-7543.2
`
`7
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 8 of 21
`
`
`
`proposed schedule and entered a partial stay on discovery, pending resolution of Fitbit’s Rule
`
`12(b)(6) motion to dismiss all asserted claims for lack of patentability under 35 U.S.C. § 101.
`
`The existing stay of discovery should be extended until the Court has ruled on Fitbit’s Rule
`
`12(b)(6) motion to dismiss under 35 U.S.C. § 101, as the Court’s ruling in that motion may
`
`remove all or some of the asserted patents from this case.
`
`The existing uncertainty in emerging restrictions on public interaction cautions against
`
`setting future case deadlines under dates proposed by Philips. Responding to discovery and
`
`gathering materials for production is hampered by the inability to access the office and meet with
`
`necessary employees. Travel restrictions and social distancing requirements advise against, or
`
`outright prohibit, conducting depositions. Both Philips and Fitbit have identified witnesses in
`
`their initial disclosures that reside in Europe. At present there is a strict travel ban on flights to
`
`and from the United States and Europe. Many third-party witnesses are located throughout the
`
`United States. The current shelter-in-place order and the California-wide “stay at home” order
`
`governing Fitbit and its counsel also “order[s] cessation of all non-essential travel.”
`
`B. Pending Motions:
`
`Fitbit’s Rule 12(b)(6) motion to dismiss under 35 U.S.C. § 101
`
`Fitbit filed a Rule 12(b)(6) motion to dismiss Philips’ complaint under 35 U.S.C. § 101
`
`on November 13, 2019, asserting that the claims of the asserted patents were invalid as patent-
`
`ineligible. On November 27, 2019, Philips’ filed an amended complaint. On December 10, Fitbit
`
`filed a renewed motion to dismiss (D.I. 33). Philips opposed the motion (D.I. 36), Fitbit
`
`requested, and was granted, leave to file a reply brief (D.I. 37 and 38). Philips then filed a
`
`motion for leave to file a sur-reply brief (D.I. 40), which was not opposed and remains pending.
`
`This motion remains pending.
`
`4819-6916-7543.2
`
`8
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 9 of 21
`
`
`
`Fitbit’s motion for summary judgment of invalidity of U.S. Patent No. 6,013,007 under
`
`35 U.S.C. § 112
`
`On March 19, 2020, Fitbit filed a motion for summary judgment of invalidity of the
`
`asserted claims of U.S. Patent No. 6, 013,007 (“the ’007 patent”) under 35 U.S.C. § 112.
`
`Philips’s Position on Fitbit’s Motions
`
`The Court has already considered the merits of Fitbit’s argument that the case should be
`
`stayed pending resolution of the Motion to Dismiss, and granted a limited stay of discovery
`
`through March 24, 2020. As the Court stressed at the scheduling conference in December of
`
`2019, even if it had not ruled on the motion by now, it would be “time to get the discovery
`
`moving for real.” (See 12/2/2019 Hearing Tr. at 23:9-13.) There is no justification for further
`
`continuing a stay in light of the fact that no ruling has occurred on the motion.
`
`Fitbit’s claim that its motion under 35 U.S.C. § 112 was “necessitated” by the Court’s
`
`decision in Samsung is preposterous. Samsung did not substantively change the law surrounding
`
`indefiniteness, it simply clarified that the PTAB lacks the ability invalidate claims on that basis.
`
`There is absolutely no reason, and Fitbit does not articulate one, why the Motion needed to be
`
`filed days before the scheduled status conference. Because of the relatedness of indefiniteness
`
`issues and claim constructions, courts typically take up indefiniteness issues in the context of
`
`claim construction—which is how Philips proposed tackling the issue in this case. Fitbit refused.
`
`The notion that Fitbit’s allegedly imminent filing of IPR petitions also justifies a stay
`
`strains credulity. No IPRs have been filed, let alone instituted. The case has been pending for
`
`many months. Had Fitbit wanted to stay the case pending IPRs, it could have filed them long
`
`ago. A stay for IPRs is without merit given Fitbit’s delay. Hypothetical IPRs, which may never
`
`even be instituted, provide no basis to refuse to enter a case schedule.
`
`4819-6916-7543.2
`
`9
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 10 of 21
`
`
`
`Fitbit’s Position on its Motions
`
`This motion raises a question of law dispositive to all asserted claims of the ‘007 patent.
`
`No discovery is necessary to address the narrow legal issue presented by the motion. Filing of
`
`this motion was necessitated by the Federal Circuit’s opinion in Samsung Elecs. Am., Inc. v.
`
`Prisua Eng’g Corp., 948 F.3d 1342, 1351 (Fed. Cir. 2020), which was issued on February 5,
`
`2020. In this opinion, the Federal Circuit limited the statutory authority of the Patent Office in
`
`the conduct of inter partes review and held that petitioners are “not permitted to request that the
`
`Board cancel claims [] on the ground that they [a]re indefinite.” The Federal Circuit held that
`
`indefiniteness is properly presented and decided in other forums, not the Patent Trial and Appeal
`
`Board. See, e.g., id. at n.5 (“our ruling in this case does not affect the disposition of cases in
`
`forums that are authorized to consider indefiniteness as a basis for invalidating a claim”). This
`
`Court is such a forum, and therefore Fitbit has filed its motion for summary judgment here
`
`because the claims of the ’007 patent are indefinite as a matter of law.
`
`Fitbit believes that all other Philips’ asserted patents, in addition to being invalid as
`
`patent-ineligible, are also invalid as anticipated or rendered obvious by prior art. Fitbit will soon
`
`file IPR petitions, previously prepared before the pandemic outbreak, for three asserted patents:
`
`U.S. Patent Nos. 6,976,958, 7,088,233, and 8,277,377. If the Court has not already disposed of
`
`this case based on Fitbit’s Rule 12(b)(6) motion to dismiss, Fitbit intends to seek a stay after
`
`these IPRs are instituted. Fitbit will also file an IPR petition for the ’007 patent in the event the
`
`Court denies the motion for summary judgment based on indefiniteness. Fitbit requests the Court
`
`to rule on this pending summary judgement motion once briefing has been completed should it
`
`decide not to grant Fitbit’s Rule 12(b)(6) motion that all the asserted patents are invalid as
`
`patent-ineligible.
`
`4819-6916-7543.2
`
`10
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 11 of 21
`
`
`
`C. Discovery disputes:
`
`General Comment on Discovery Disputes by Philips:
`
`Upon the Court requesting an updated Joint Statement, counsel for Philips prepare a draft
`
`Joint Statement and Case Schedule and provided it to Counsel for Fitbit the morning of
`
`Thursday, March 19th. Instead of diligently working on the joint statement as the Court
`
`requested, Fitbit’s counsel apparently spent the day finalizing and filing their Motion for Partial
`
`Summary Judgment under 35 U.S.C. § 112, and only provided a revised draft that included
`
`discovery disputes hours before the close of business on Friday March 20th. Since the Court has
`
`reached out again on the afternoon of March 20th requesting the joint statement, which Philips
`
`desires to have filed by close of business, Philips is providing short responses below but may
`
`supplement its response prior to the hearing.
`
`Additionaly, Philips notes that Fibtit has only produced prior art documents in this case—
`
`taking the position that it need not produce other materials until after the conference on March
`
`24th.
`
`1. Conception and Reduction to Practice Disclosures
`
`Fitbit’s Position:
`
`“A patent holder’s asserted priority and conception date is pivotal to the accused
`
`infringer’s assessment of relevant prior art.” OpenTV, Inc. v. Apple Inc., 2016 WL 3196643, *2-
`
`*3 (N.D. Cal. 2016). It is for this reason that the patent local rules require Philips to disclose
`
`information regarding conception and reduction to practice of the asserted claims. Fitbit’s
`
`interrogatory 1 seeks similar conception and reduction to practice information and Interrogatory
`
`5 seeks Philips’ contentions supporting its claim to an earlier priority date than the actual filing
`
`4819-6916-7543.2
`
`11
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 12 of 21
`
`
`
`date of the asserted patent application. Philips’ failure to provide this information in full has
`
`hampered Fitbit’s assessment of relevant prior art.
`
`All of the named inventors of the patents in suit are represented by Philips’ counsel, and
`
`patent assignment documents governing ownership transfer of the patents from certain inventors
`
`includes an obligation by the inventors to provide documents and to cooperate with any
`
`litigation. However, Philips contends it “has no obligation to collect documents from, and
`
`produce, materials from non-party inventors that Foley also represents.” Philips’ counsel
`
`confirmed during a meet and confer that Philips did not request conception and reduction to
`
`practice materials from the inventors.
`
`Two weeks after the meet and confer Philips produced, without explanation, two short
`
`documents relating to conception of one of the four patents in suit. When questioned regarding
`
`the source of the documents, or if other documents existed or if the inventors were questioned
`
`concerning the conception and reduction to practice of the asserted claims Philips responded that
`
`“We will not be getting into discussions with parties that we represent.” Philips has failed to
`
`comply with the Court’s patent local rules and has failed to provide good faith responses to
`
`Fitbit’s interrogatory on this topic.
`
`
`
`Philips’s Position
`
`Philips has responded to this interrogatory, and the requirements of the local rules, to the
`
`extent that it can. The local rules make explicitly clear that Philips need only produce “non-
`
`privileged documents in its possession, custody, or control concerning the conception and
`
`reduction to practice of the invention claimed in the asserted patents.” Local Rule 16.6(d)(1)(B)
`
`The asserted patents cover inventions that were not made at Philips and, unsurprisingly, Philips
`
`4819-6916-7543.2
`
`12
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 13 of 21
`
`
`
`does not have in its possession documents that would relate to conception or reduction to
`
`practice—if it had, it would have produced them already.
`
`Fitbit has maintained, without any authority, that counsel for Philips has a responsibility
`
`to reach out to third-party inventors and gather and produce documents from them—simply
`
`because counsel for Philips has agreed to represent the inventors in this case. Philips has
`
`repeatedly requested that Fitbit provide authority supporting this position, and Fitbit has not
`
`provided any. The reality is, there is no such obligation. Fitbit has threatened subpoenas against
`
`the inventors, and Philips has agreed that it would accept service of the subpoenas. But no
`
`subpoenas have been issued.
`
`Despite all this, during a meet and confer, counsel for Philips agreed that if it discovered
`
`any documents or materials relating to conception or reduction to practice it would produce
`
`them. Consistent with that, Philips obtained some materials from one inventor, Mr. Frank Van
`
`Hoorn, and produced them.
`
`At the end of the day, if Fitbit would like to subpoena the inventors and collect
`
`information from them, the inventors would respond to the subpoenas. Barring that, there is no
`
`basis on whicht to demand that counsel for Phillips collect information from third-parties to
`
`produce in response to the local rules or discovery requests to Philips.
`
`2. Written Description Support for Philips’ Claim to an Earlier Priority Date
`
`
`
`Fitbit’s Position:
`
`Philips seeks to claim the benefit of earlier filed provisional applications and
`
`continuation-in-part applications to establish an earlier priority date for the ‘233, ‘377 and ‘958
`
`patents. Federal Circuit law and 35 U.S.C. 120 are clear that in order for Philips to claim the
`
`benefit of an earlier priority date, it must demonstrate that the provisional applications or
`
`4819-6916-7543.2
`
`13
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 14 of 21
`
`
`
`continuations-in-part relied upon to establish an earlier priority date actually provide written
`
`description support for the claims of the asserted patents. See, e.g., PowerOasis, v. T-Mobile
`
`USA, 522 F.3d 1299, 1305 (Fed. Cir. 2008); Dynamic Drinkware, LLC v. National Graphics, 800
`
`F.3d 1375, 1380-81 (Fed. Cir. 2015).
`
`Fitbit served a contention interrogatory seeking Philips’ contentions concerning the
`
`written description support for the asserted claims in the provisional and continuation-in-part
`
`applications. The answer to this interrogatory drives the scope of the time period for Fitbit’s prior
`
`art search. For example, the ‘233 patent was filed on June 7, 2002, yet claims the benefit of a
`
`host of continuations-in-part and multiple provisionals filed over a time period ranging from
`
`1998, 1999, 2001 and early 2002.
`
`Philips opposes this interrogatory arguing that its patents are presumed valid, and until
`
`Fitbit provides its invalidity contentions Philips has no duty to support its claim for an earlier
`
`priority date. Philips’ interpretation of the relevant law is incorrect. In Dynamic Drinkware,
`
`supra at 1380-81, the Federal Circuit rejected the contention that there is a presumption that a
`
`patent is entitled to the benefit of the filing date of its provisional precursor. The Federal Circuit
`
`explained “because the PTO does not examine priority claims unless necessary, the Board has no
`
`basis to presume that a reference patent is necessarily entitled to the filing date of its provisional
`
`application.” Id. Philips’s disclosure obligation on this issue is triggered by its claim to priority
`
`dates earlier than that of the filing dates of the asserted patents. Philips bears the burden of
`
`establishing the written description support for its claim to priority.
`
`Moreover, the ultimate burden of invalidity does not dictate the scope of discovery.
`
`Indeed, “nowhere in the Federal Rules of Civil Procedure is it required that a party who carries
`
`the ultimate burden on an issue at trial must establish a prima facie case before it is entitled to
`
`4819-6916-7543.2
`
`14
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 15 of 21
`
`
`
`discover information the other party may use to rebut the prima facie case.” McKesson Info.
`
`Solutions LLC v. Epic Sys. Corp., 242 F.R.D. 689, 692 (N.D. Ga. 2007); SPH Am., LLC v.
`
`Research in Motion, Ltd., No. 13-cv-2320-CAB (KSC), 2016 U.S. Dist. LEXIS 171616, 2016
`
`WL 6305414, at *2 (S.D. Cal. Aug. 16, 2016) (granting motion to compel "contention
`
`interrogatory seek[ing] information concerning the validity of [the asserted] patents" and holding
`
`that "defendant is not required to establish a prima facie case of invalidity before it is entitled to
`
`obtain discovery on the validity of the patents"); see also Amgen Inc. v. Sandoz Inc., No. 14-cv-
`
`04741-RS (MEJ), 2017 U.S. Dist. LEXIS 57013, 2017 WL 1352052, at *2 (N.D. Cal. Apr. 13,
`
`2017) (compelling response to defendant's interrogatory seeking "the factual basis for Amgen's
`
`[validity] allegations" and rejecting argument that the interrogatory was more "properly within
`
`the scope of expert discovery"); Apple Inc. v. Wi-LAN Inc., No. 14CV2235-DMS(BLM), 2018
`
`U.S. Dist. LEXIS 19565, 2018 WL 733740, at *5 (S.D. Cal. Feb. 6, 2018) (ordering patent
`
`owner to provide comprehensive responses to interrogatories including the factual and legal
`
`bases supporting patent owner’s validity contentions).
`
`
`
`Philips’s Position
`
`Philips has not refused to respond to this interrogatory. Rather, it has stressed that it
`
`would be unduly burdensome, and potentially completely unnecessary, for Philips to engage in
`
`the requested exercise of demonstrating support in provisional applications until if and when
`
`Fitbit actually contends that intervening prior art renders the claims invalid. The Federal Circuit
`
`and other Court have acknowledged that patents are presumed valid, and that a patentee does not
`
`bear the burden of demonstrating support in a provisional until if and when a challenger asserts
`
`intervening prior art that would make that an issue. See Research Corp. Techs., Inc. v. Microsoft
`
`Corp., 627 F.3d 859, 870 (Fed. Cir. 2010). Philips also explained how one of ordinary skill in
`
`4819-6916-7543.2
`
`15
`
`

`

`Case 1:19-cv-11586-IT Document 47 Filed 03/20/20 Page 16 of 21
`
`
`
`the art may understand the disclosure of the provisional application may be a matter of expert
`
`testimony.
`
`Regardless, Fitbit has now actually identified intervening prior art in its contentions and
`
`Philips will be supplementing its response to the interrogatory, rendering this dispute moot.
`
`3. Objective indicia of nonobviousness
`
`
`
`Fitbit Position:
`
`Fitbit Interrogatory 8 seeks Philips evidence concerning objective indicia of non-
`
`obviousness (copying, long felt but unsolved need, failure of others, commercial success,
`
`unexpected results created by the claimed invention, licenses showing industry respect for the
`
`invention, and skepticism of skilled artisans before the invention) of the asserted patent claims.
`
`Philips refuses to provide the responsive information arguing evidence of non-obviousness can
`
`only be used to rebut a prima-facie case of obviousness and that Fitbit may not seek this relevant
`
`evidence until it first proves to Philips’ liking that a “prima facie case of obviousness” exists.
`
`Philips is wrong on the law. Consideration of the objective indicia is part of the whole
`
`obviousness analysis, not just an afterthought. See In re Cyclobenzaprine Hydrochloride
`
`Extended-Release Capsule Patent Litigation, 676 F.3d 1063, 1073, 1075-76 (Fed. Cir. 2012) (A
`
`fact finder "may not defer examination of the objective considerations 1358*1358 until after the
`
`fact finder makes an obviousness finding." (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
`
`1530 (Fed.Cir.1983). Objective indicia of nonobviousness must be considered together with all
`
`the evid