Case 1:19-cv-11586-IT Document 51 Filed 03/23/20 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC
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`Plaintiff,
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`v.
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`FITBIT, INC.,
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`Defendant.
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`C.A. No. 1:19-cv-11586-IT
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`JURY TRIAL DEMANDED
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`PLAINTIFF’S SUR-REPLY MEMORANDUM IN OPPOSITION
`TO DEFENDANT’S MOTION TO DISMISS
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`Fitbit argues in its Reply that the Court should substitute Fitbit’s legal arguments relating
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`to subject matter eligibility for the substantial facts pled in the First Amended Complaint. Of
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`course, the eligibility analysis under Section 101 involves much more than high-level
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`characterizations of the claims, or even claim construction. Indeed, given the level of detail in
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`Philips’ pleadings, it’s hard to see any pleading regarding subject matter eligibility passing legal
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`muster under Fitbit’s view.
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`Philips’ First Amended Complaint addresses at length the claimed inventions and how
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`they would be understood by a person of ordinary skill. See D.I. 25 at ¶¶ 59, 62-64 (as to
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`the’007 patent); ¶¶ 83, 86-88 (as to the ’233 patent); ¶¶ 107, 110-113 (as to the ’377 patent); ¶¶
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`130, 132-134 (as to the ’958 patent). It also explains how the different claims across four patents
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`pertain to advancements in electronics systems. (See, e.g., D.I. 25 at ¶¶ 66, 77, 90, 115, 135); c.f.
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`Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019) (“the [patent’s] specification
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`need not expressly list all the reasons why” a claim is patent eligible). It further explains that
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`many of the claims are directed to physical devices and systems, or operation of such devices
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`(see, e.g., D.I. 25 at ¶¶ 53, 68, 77, 92, 101, 114, 125, 137), that the inventions are not the
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`application of previously executed methods on general purpose computers or pre-existing
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`electronic systems, (¶¶ 64, 88, 113, 134), and that the inventions are novel as to the physical
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`devices and the methods performed using them (¶¶ 56, 63-69 (as to the ’007 patent), ¶¶ 80, 87-93
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`(as to the ’233 patent), ¶¶ 104, 112-118 (as to the ’377 patent), ¶¶ 129, 134-138 (as to the ’958
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`patent)).
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`These pleadings raise factual questions, as repeatedly recognized by the Federal Circuit
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`(e.g., Berkheimer, Cellspin, Gemalto, Aatrix) and recently affirmed as the law of the land by the
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`Supreme Court in denying certiorari in Berkheimer and Cellspin, which emphasized that:
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`[W]e expressly stated that “patentees who adequately allege their claims contain
`inventive concepts survive a § 101 eligibility analysis under Rule 12(b)(6).”
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`Cellspin, 927 F.3d at 1318 (quoting Aatrix). Fitbit’s attorney argument is not evidence and
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`cannot negate the pleadings, which are to be taken as true. See, e.g., Icon Health & Fitness, Inc.
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`v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”).
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`I.
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`ARGUMENT
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`a. Philips’ Allegations Should Be Taken As True At The Pleading Stage, Not
`Disregarded In Favor Of Fitbit’s Characterizations Of The Patented
`Technology
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`In its opening brief, Fitbit largely ignores Philips’ detailed pleadings in favor of its own
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`broad characterizations of the claimed innovations as directed to “secure data transfer between
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`devices” (D.I. 34 at 4 (relative to ’233 patent)), “collecting and analyzing exercise data, and
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`presenting that data to a user” (id. at 11 (relative to the ’377 patent)), “collecting and storing
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`health data so it is not lost during a wireless connection interruption” (id. at 17 (relative to the
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`’958 paten)), and “collecting and analyzing exercise data to track an athlete’s performance” (id.
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`2
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`Case 1:19-cv-11586-IT Document 51 Filed 03/23/20 Page 3 of 8
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`at 21 (relative to the ’007 patent)). The claims do not include Fitbit’s language, and Fitbit’s
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`characterizations are no substitute for the claimed inventions. The language of the separate
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`claims captures the advancements over the prior art as recognized by the USPTO. (See, e.g., D.I.
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`25 ¶¶ 83-91 (relative to the ’233 patent); ¶¶ 107-116 (relative to the ’377 patent); ¶¶ 130-136
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`(relative to the ’958 patent); ¶¶ 59-67 (relative to the ’007 patent).)1
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`In its Reply, Fitbit asserts that the Court should simply ignore Philips’ pleadings because
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`they are “wholly divorced from” and “contradict” the patents’ claims and specifications. This is
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`incorrect. Philips’ First Amended Complaint extensively cites and quotes the claims, the
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`specifications and the prosecution histories of the patents-in-suit. (See D.I. 25 ¶¶ 53, 56-69 (as to
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`the ’007 patent); ¶¶ 77, 80-93 (as to the ’233 patent); ¶¶ 101, 104-118 (as to the ’377 patent); ¶¶
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`125, 128-138 (as to the ’958 patent).) Philips’ First Amended Complaint also includes numerous
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`pleadings explaining how the claimed inventions would be understood to a person of ordinary
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`skill. (See D.I. 25 at ¶¶ 59, 62-64 (as to the’007 patent); ¶¶ 83, 86-88 (as to the ’233 patent); ¶¶
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`107, 110-113 (as to the ’377 patent); ¶¶ 130, 132-134 (as to the ’958 patent).) Taken together,
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`Philips pleadings go far beyond what is required.
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`1 As an example, claim 9 of the ’233 patent provides a novel “bi-directional wireless system” (a
`physical thing) with a security mechanism “governing information transmitted between the first
`personal device and the second personal device,” and the specification explains that the invention
`enables “various entities spread around a network to receive and/or transmit to and control the
`personal device 100” where “[o]nly authorized agents should be allowed access to the device
`100.” (See claim 9 and col. 13, ll. 24-40.) The patent also provides an example application of
`the claimed invention wherein “only responding personal RP (such as trained paramedics) who
`are on the scene of the event may be allowed to send a command to the personal device 100
`causing the personal device 100 to dispense medication to the victim.” Id. This system is
`different from and patentable over Bluetooth as found by the USPTO. (See D.I. 25 ¶ 84.)
`Concerning this patent, Fitbit attempts to distinguish Finjan, but Finjan upheld claim language to
`a “downloadable security profile that identifies suspicious code.” Finjan, 879 F.3d at 1303-
`1306. The Ancora court similarly upheld a method claim on the basis of “verifying the program
`using at least the verification structure.” Ancora, 908 F.3d at 1346, 1349.
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`3
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`These pleadings are highly relevant to the Section 101 inquiry; far from ignoring them (as
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`Fitbit urges), the Court must take them as true at this stage. Cellspin Soft, Inc. v. Fitbit, Inc. et al.,
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`927 F.3d 1306, 1314 and 1318 (Fed. Cir. 2019) (“we determine whether the facts alleged in the
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`complaint, taken as true, entitle the plaintiff to a legal remedy”) (quotations omitted).
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`Moreover, Fitbit’s support for its argument is unhelpful. For the proposition that Philips’
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`pleadings should be ignored, Fitbit cites Secure Mail Sols. LLC v. Universal Wilde, Inc., 873
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`F.3d 905, 913 (Fed. Cir. 2017).2 In that case, the complaint did not include any pleadings
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`supporting eligibility and no amended complaint was filed; the court was left with attorney
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`argument on both sides. (See Complaint from underlying case; Ex. A.) Furthermore, the
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`decision pre-dates Aatrix, Berkheimer and subsequent cases in which the Federal Circuit
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`recognized that the 101 analysis is based on underlying facts. Aatrix Software, Inc. v. Green
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`Shades Software, Inc., 882 F.3d 1121, 1126-27 (Fed. Cir. 2018) (“allegations at a minimum raise
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`factual disputes underlying the §101 analysis”);
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`Unable to confront Philips’ well-plead allegations, Fitbit resorts to pulling soundbites
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`from Federal Circuit cases that bear little resemblance to the issues here. Philips’ allegations do
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`not “contradict” the claims or specifications; they are consistent with the findings of the PTO and
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`2 Fitbit also cites Berkheimer for the proposition that the court need not accept certain allegations
`as true. (D.I. 39 at 2.) But, Fitbit ignores that the Federal Circuit overturned the trial court for
`failing to credit allegations such as that the patents “improve the functioning of the data
`processing systems, computers and other hardware” because the “allegations suggest[ed] that the
`claimed invention is directed to an improvement in the computer technology and not directed to
`generic components performing conventional activities.” Id. at 1372. The court went on to note
`that “[w]e cannot adopt a result-oriented approach … that would fail to accept as true the
`complaint’s factual allegations.” Id. at 1373. Read in context, the discussion of how motions to
`dismiss should be resolved actually supports denying Fitbit’s motion. Fitbit’s additional citation
`of Athena is inapposite as the court was only deciding whether to consider a declaration on a
`Rule 12(b)(6) motion; it was not a situation where a defendant bearing the burden of proof
`argues that pleadings should be ignored. Athena Diagnostics v. Mayo Collaborative, 915 F.3d
`743, 755 (Fed. Cir. 2019) (“the district court did not consider the declaration”).
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`4
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`what will be established through fact and expert discovery per the pleadings. These allegations
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`must be taken as true at the pleading stage, and when they are, Fitbit’s motion must be DENIED.
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`b. The Supreme Court’s Recent Denials Of Certiorari In Berkheimer And
`Cellspin Support Denying Fitbit’s Motion To Dismiss.
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`The other argument that Philips wishes to address relates to the application of the
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`Supreme Court’s recent decision to deny certiorari in several Section 101 cases. Fitbit asserts
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`that the Supreme Court “reject[ed] the same types of arguments Philips raises” in this case by
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`denying review in Berkheimer and Athena. (D.I. 39 at 3.) Fitbit wills this interpretation into
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`existence but can offer no support, other than a link to a list of orders on the Supreme Court’s
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`website. (See id. (citing www.supremecourt.gov/orders/ordersofthecourt/19).)
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`In reality, the Supreme Court’s recent decision to deny review in these cases (including a
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`petition filed by Fitbit) was a direct blow to Fitbit’s arguments here. Fitbit’s statement is
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`factually incorrect and its cited “support” is nonexistent.
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`In Berkheimer, the petitioner argued that “the Federal Circuit has replaced this Court’s
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`test for patent eligibility – in which a court must determine as a matter of law whether a patent
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`covers eligible subject matter by examining the elements of the claim – with a fact-intensive test
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`based on the state of the prior art at the time of the patent.”3 In other words, the petitioner made
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`the exact same argument that Fitbit is making here – that the patent should control the Section
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`101 inquiry and factual pleadings should be ignored. The Federal Circuit rejected it. By denying
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`review, the Supreme Court saw fit to leave what the petitioner characterized as the Federal
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`Circuit’s “fact intensive test” for patent eligibility undisturbed.
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`3 See https://www.supremecourt.gov/DocketPDF/18/18-
`415/65216/20180928162630738_36823%20pdf%20Hong%20I%20br.pdf at Introduction.
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`Fitbit also argues that the Supreme Court’s decision denying certiorari in Athena
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`Diagnostics rejected the same types of arguments Philips makes in opposing Fitbit’s motion.
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`(D.I. 39 at 3.) Not so. Athena involved claims to methods for diagnosing a medical condition,
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`and accordingly the case concerned the exception to patent eligibility for laws of nature, not
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`abstract ideas.
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`In the Cellspin petition for certiorari, Fitbit complained that the Federal Circuit had held
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`that “allegations in a complaint that aspects of the claim are inventive are sufficient to defeat a
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`motion to dismiss.”4 That is still the law because the Supreme Court denied cert and left the
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`Federal Circuit’s decision undisturbed. It is certainly not, as Fitbit argues, a “reject[ion] of the
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`same types of arguments that Philips raises” in this case, and Fitbit makes no effort to explain
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`how it was.
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`These decisions confirm that allegations like those in Philips’ First Amended Complaint
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`are sufficient at the pleading stage. Fitbit does not, and cannot, cite a single Federal Circuit case
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`affirming dismissal in the face of well-pled allegations similar to Philips’ First Amended
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`Complaint. The Court should decline Fitbit’s invitation to ignore Philips’ pleadings, and the
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`Court should reject Fitbit’s characterization of the Supreme Court’s recent decision denying
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`certiorari in these Section 101 cases.
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`II.
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`CONCLUSION
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`The Court should not declare any claim invalid in the face of Philips’ well plead and
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`highly detailed allegations. Fitbit’s Motion to Dismiss should be DENIED.
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`4 See https://www.supremecourt.gov/DocketPDF/19/19-
`400/116708/20190923153010855_Garmin%20Cert%20Petition%209.23%20Final.pdf at 4.
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`Case 1:19-cv-11586-IT Document 51 Filed 03/23/20 Page 7 of 8
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`Dated: March 23, 2020
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`Respectfully Submitted,
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` /s/ Lucas I. Silva
`Lucas I. Silva (BBO 673,935)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Boston, MA 02199
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`lsilva@foley.com
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`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
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`Counsel for Philips North America LLC
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on March 23, 2020, 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.
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`By:
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` /s/ Ruben J. Rodrigues
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