Case 1:19-cv-11586-IT Document 64 Filed 05/14/20 Page 1 of 6
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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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`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 OPPOSITION TO DEFENDANT’S PETITION FOR LEAVE TO
`CONSTRUE ADDITIONAL CLAIM TERMS
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`Plaintiff Philips North America, LLC (“Philips”) opposes Fitbit, Inc.’s (“Fitbit”) Petition
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`for Leave to Construe Additional Claim Terms because Fitbit has failed to demonstrate good
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`cause necessitating the construction of the four additional terms—particularly when opening
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`claim construction briefs are due in two weeks under a schedule that contemplated construction
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`of no more than 10 claim terms (See Scheduling Order, Dkt. 54).
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`I. Procedural Background
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`When the parties originally exchanged their list of proposed claim terms for construction
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`on April 30th, 2020 Philips identified four (4) terms while Fitbit identified fourteen (14). At that
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`time, Fitbit was already well aware that it alone sought construction of well more than 10 terms
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`but did not seek relief from the Court. During the meet and confer process, Philips agreed that
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`one of the terms proposed by Fitbit should be construed, and left it up to Fitbit to identify the
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`remaining five terms that would be included in the Joint Statement. During the meet and confer,
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`Fitbit also agreed to withdraw an asserted claim, mooting the need to construe one of the terms
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`Case 1:19-cv-11586-IT Document 64 Filed 05/14/20 Page 2 of 6
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`proposed by Fitbit. In preparing the Joint Statement, Fitbit demanded, over Philips’s objection,
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`that the additional four terms that it sought to construe be included in some form with the joint
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`statement—despite the fact that the Scheduling Order unequivocally states that “[t]he parties may
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`jointly present to the court no more than 10 claim terms for construction.” (See Dkt. 54 at 2.)
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`II. The Court is Not Required to Construe Every Means-Plus-Function Term.
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`Fitbit’s request to construe additional claim terms is based on the fundamentally flawed
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`premise that the court must construe every means-plus-function claim, regardless of whether
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`there is any real dispute that necessitates construction. Of course, Courts routinely decline to
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`formally construe means-plus-function claims where doing so is unnecessary. See Sunbeam
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`Prods., Inc. v. Homedics, Inc., No. 08-cv-0376-slc, 2008 WL 5423204 at *2 (W.D. Wis. Dec. 30,
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`2008) (declining to construe every means-plus-function term); Eon Corp. IP Holdings, LLC v.
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`Sensus USA Inc., 741 F.Supp.2d 783, 815, 818 (E.D. Tex. 2010) (declining to construe two
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`means-plus-function claims); In re Katz Interactive Call Processing Patent Litig., No. 07-ml-
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`01816-B RGK (FFMx), 2008 WL 4952454 at *11 (C.D. Cal. Feb. 21, 2008) (declining to
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`construe a means-plus-function term as it was not one of the 30 disputed terms the parties were
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`permitted to brief); Emergis Tech., Inc. v. PNM, No. CIV 06-100 LCS/LFG, 2007 WL 5685359
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`at *12 (D. N.M. Jan. 2, 2007) (declining to construe three means-plus-function claims as it
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`appeared there was no dispute between the parties).
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`The court in Sunbeam Products provided a helpful explanation of this issue when
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`rejecting Defendant’s contention there that all means-plus-function terms required construction:
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`With respect to the remaining terms, defendant has failed to
`establish that they are related to a dispute regarding invalidity or
`infringement. With respect to the means-plus-function terms […]
`defendant contends that claim construction of a ‘means-plus-
`function’ term always is required, citing Lockheed Martin Corp. v.
`Space Systems/Loral, Inc., 324 F.3d 1308, 1319 (Fed.Cir.2003).
`What
`the
`court
`actually
`said
`was
`that
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`2
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`“[o]nce a court establishes that a means-plus-function limitation
`is at issue, it must identify and construe that limitation.” Id. at
`1319 (emphasis added). Merely identifying a claim term as a
`“mean-plus-function” term does not require a court to construe the
`term. The moving party still bears the burden of showing that the
`term is relevant to a disputed issue of invalidity or infringement. In
`this case, defendant has failed to do so and therefore, defendant's
`motion for construction of these terms will be denied.
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`Sunbeam Prods., 2008 WL 5423204 at *1. In the present case, Fitbit has failed to make any
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`case that the additional means-plus-function terms that it seeks to construe have any bearing on
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`an issue related to infringement or invalidity. Rather, after initially identifying the terms, it
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`merely objected to the fact that Philips did not identify all means-plus-function terms for
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`construction. During the meet and confer, and in an effort to potentially narrow the issues,
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`Philips identified proposed constructions along with an identification of structure and function.
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`However, Fitbit did not agree to Philips’s proposals, and instead manufactured superficial
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`disputes as to the appropriate structure that have no bearing on infringement or invalidity
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`issues—and which demonstrate why the Court and the parties should not needlessly waste time
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`and resources on unnecessary claim constructions.
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`Fitbit’s Petition cites a handful of Federal Circuit cases that generally discuss the
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`standards for construing means-plus-function claims, but none stands for the proposition that a
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`court must construe every means-plus-function term. To the contrary, the Federal Circuit has
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`explained that “only those terms need be construed that are in controversy, and only to the extent
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`necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999). Even in O2 Micron, the Federal Circuit acknowledged that “district courts
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`are not (and should not be) required to construe every limitation present in a patent’s asserted
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`claim.” O2 Micro Int’l Ltd. v. Beyon Innovation Tech Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
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`(emphasis in original). Fitbit additionally cites the Federal Circuit Bar Association model jury
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`instructions, which have no binding authority, and which in any case would only be used as a
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`model for presenting means-plus-function claim constructions to a jury when such constructions
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`were actually necessary.
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`III. No Good Cause to Construe Fitbit’s Additional Non-Means-Plus-Function
`Terms
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`Despite exclusively focusing its arguments on the purported need to construe all means-
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`plus-function terms, two (2) of the four (4) additional terms that Fitbit seeks to construe are not
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`means-plus-function terms. Fitbit has made absolutely no showing as to why good cause exists
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`to construe these additional terms. Of note with respect to these terms, Fitbit seeks to construe
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`the common term “memory” as limited to a particular way of using memory, without any
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`explanation as to why this is necessary; while further seeking to construe the term “powered-
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`down” such that it means “powered-off” (despite the specifications discussion or operating at a
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`“low” powered state).
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`IV. Conclusion
`For the reasons explained above, Fitbit’s petition should be denied. Fitbit has not made
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`the showing of good cause necessary to justify spending the Court’s, and the Parties’, time and
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`resources addressing four additional terms for construction beyond the ten provided for in the
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`scheduling order.
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`Case 1:19-cv-11586-IT Document 64 Filed 05/14/20 Page 5 of 6
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`Dated: May 14, 2020
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` Respectfully Submitted,
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` /s/ Ruben J. Rodrigues
`Ruben J. Rodrigues (BBO 676,573)
`Lucas I. Silva (BBO 673,935)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Boston, MA 02199
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`rrodrigues@foley.com
`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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`Case 1:19-cv-11586-IT Document 64 Filed 05/14/20 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on May 14, 2020, a copy of the foregoing
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`document was filed with the Court through the ECF system and that a copy will be electronically
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`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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