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`Case 1:19-cv-11586-IT Document 63 Filed 05/14/20 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`v.
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`FITBIT, INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-IT
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`FITBIT’S PETITION FOR LEAVE TO CONSTRUE ADDITIONAL CLAIM TERMS
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`Pursuant to Local Rule 16.6(e)(1)(C), Fitbit, Inc. (“Fitbit” or “Defendant”) respectfully
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`submits that good cause exists for submission of 14 claim terms for the Court’s construction.
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`Philips is asserting 31 claims with 59 limitations, against 21 different accused products, spread
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`across four patents-in-suit and three separate patent families. The parties have met and conferred
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`to limit the number of claim terms for the Court’s construction1, however the asserted claims
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`include four claim elements that the parties agree are means-plus-function (MPF) terms governed
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`by 35 U.S.C. § 112. ¶ 6. Because the claim elements are construed under MPF rules, the function
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`and corresponding structure of each element must be determined as part of claim construction—
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`these claim elements cannot be left without construction. See e.g. Federal Circuit Bar association
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`Model Jury Instruction for MPF claim, attached. Unfortunately, the parties cannot reach agreement
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`on how these four MPF terms should be addressed, or even if construction is necessary.
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`On April 30, 2020, the parties were required to exchange their initial identification of claim
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`terms for construction. Philips failed to identify the function and corresponding structure for any
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`1 All terms identified for construction by Fitbit are directly relevant to Philips’ claims of infringement. Philips
`informed Fitbit that the claim terms it was identifying were relevant to issues of invalidity.
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`Case 1:19-cv-11586-IT Document 63 Filed 05/14/20 Page 2 of 6
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`of the MPF claim terms. It was only after a week of discussion with Fitbit that Philips was willing
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`to revisit its initial position that the MPF terms did not require any separate identification of
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`function or structure.
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`Fitbit’s approach to construing the MPF terms follows well-settled Federal Circuit law.
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`The Court construes the function of the claim term, then the specification is analyzed to identify
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`all of the corresponding structure that is clearly linked by the specification to the performance of
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`the full scope of the claimed function. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339,
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`1347 (Fed. Cir. 1999); see also Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1458 (Fed.
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`Cir. 1998) (en banc); Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1209 (Fed. Cir.
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`2002). Only after the Court has completed this claim construction process is the identified
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`corresponding structure compared to the accused product to determine if an identical structure, or
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`structural equivalent, is present in the accused device. If the structure is present, it must also
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`perform the identical function as that identified in the claim construction for infringement to exist.
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`Id. Philips’ approach to MPF claim construction does not follow these basic rules.
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`Philips first contends that a MPF limitation may not even require a determination of
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`function and structure, but could instead be simply “plain and ordinary meaning.” Such an
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`approach fails to follow the Federal Circuit’s multi-step approach outlined above.
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`Philips’ late identification of proposed function and structure for the MPF terms
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`impermissibly edits the claimed function, ignoring express statements in the specification of the
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`scope of the function, in an effort to avoid invalidity. See Fitbit’s Motion for Partial Summary
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`Judgement, D.I. 44. Philips then fails to identify all of the corresponding structure required to
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`perform the full range of the claimed function, instead only pointing to one or two components,
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`rather than all of the structural components required to perform the claimed function. Philips caps
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`Case 1:19-cv-11586-IT Document 63 Filed 05/14/20 Page 3 of 6
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`off its proposed approach to these MPF terms with a separate hybrid combination of function and
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`structure as a resulting summary “construction” of the overall MPF term, rather than simply
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`identifying the proper function and structure. This hybrid “construction” is improper and blurs the
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`distinction between structure and function, rendering a proper step-by-step infringement analysis
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`impossible.
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`Good cause exists to expand the number of claim terms to be construed from 10 to 14. This
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`increase is necessary to address the disputed claim limitations that are all relevant to claims of
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`infringement and invalidity for the 31 asserted claims and therefore must be construed under O2
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`Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008).
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`In addition, all of the MPF claim terms must be construed to provide a court-approved function
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`and structure for each term, separate and apart from the reasoning of O2 Micro.
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`The parties meet and conferred and Philips objects to construction of more than 10 terms,
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`and disagrees that construction of MPF terms to identify function and corresponding structure is
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`required.
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`Case 1:19-cv-11586-IT Document 63 Filed 05/14/20 Page 4 of 6
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`Dated: May 14, 2020
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`FITBIT, INC.
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`By Its Attorneys,
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`/s/ Yar R. Chaikovsky
`Yar R. Chaikovsky
`yarchaikovsky@paulhastings.com
`Chad Peterman
`chadpeterman@paulhastings.com
`Dave Beckwith
`davidbeckwith@paulhastings.com
`David Okano
`davidokano@paulhastings.com
`Radhesh Devendran
`radheshdevendran@paulhastings.com
`Berkeley Fife
`berkeleyfife@paulhastings.com
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`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone: 1(650) 320-1800
`Facsimile:
`1(650) 320-1900
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`Jennifer B. Furey (BBO # 634174)
`Andrew T. O’Connor (BBO # 664811)
`GOULSTON & STORRS PC
`400 Atlantic Avenue
`Boston, MA 02110
`Telephone: (617) 482-1776
`Facsimile: (617) 574-4112
`E-mail: jfurey@goulstonstorrs.com
`aoconnor@goulstonstorrs.com
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`Case 1:19-cv-11586-IT Document 63 Filed 05/14/20 Page 5 of 6
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`LOCAL RULE 7.1 CERTIFICATION
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`I, Yar Chaikovsky, counsel for Defendant Fitbit, Inc., hereby certify that we have
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`conferred with counsel for Philips North America, LLC to resolve the issues presented in this
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`petition, but after a good faith attempt to reach agreement, the parties did not do so.
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`Dated: May 14, 2020
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`By: /s/ Yar R. Chaikovsky
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`Yar Chaikovsky (pro hac vice)
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`Case 1:19-cv-11586-IT Document 63 Filed 05/14/20 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I certify that a true copy of the above document was served on the attorney of record for
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`each party via the Court’s CM/ECF system, which will send notification of this filing (NEF) to
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`all registered participants, and paper copies will be sent to those indicated as nonregistered
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`participants.
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`Dated: May 14, 2020
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`By: /s/ Yar R. Chaikovsky
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`Yar R. Chaikovsky (Pro Hac Vice)
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