Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 1 of 24
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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 RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`i
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`I. 
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`II. 
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 2 of 24
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1 
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`PHILIPS’S POSITIONS ON CLAIM CONSTRUCTION SHOULD BE ADOPTED ......1 
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`A. 
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`’007 Patent: “means for computing athletic performance feedback data from the
`series of time-stamped waypoints obtained by said GPS receiver” .........................1 
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`i. 
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`ii. 
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`“Athletic performance feedback data” does not include calories burned ..........1 
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`The claim does not require that all items that would constitute “athletic
`performance feedback data” be computed to infringe .......................................3 
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`iii. 
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`The term is not indefinite. ..................................................................................4 
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`B. 
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`C. 
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`D. 
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`E. 
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`F. 
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`G. 
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`H. 
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`I. 
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`J. 
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`’007 Patent: “means for suspending and resuming operation of said means for
`computing when a speed of the athlete falls below a predetermined threshold”
`(Claim 7) ..................................................................................................................8 
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`’958 Patent: “in the event of an interruption of the wireless connection . . .
`configured to store the health parameter [or visual data] … in a memory or on
`[a/the] removable memory device” ..........................................................................9 
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`’958 Patent: “memory” ..........................................................................................10 
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`’958 Patent: “internet-enabled wireless web device” ............................................11 
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`’958 Patent: “health parameter [or visual data] [indicative/corresponding to] of a
`disease state or condition of a patient” ..................................................................12 
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`’233 Patent: “governing information transmitted between the first personal device
`and the second device” ...........................................................................................13 
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`’233 Patent: “first personal device” .......................................................................15 
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`’233 Patent: “wireless communication” .................................................................17 
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`’377 Patent: “indicating a physiological status of a subject” (Claims 1, 12) .........18 
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`III. 
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`CONCLUSION ..................................................................................................................19 
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`ii
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 3 of 24
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`TABLE OF AUTHORITIES
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`Alfred E. Mann Found. for Sci. Research v. Cochlear Corp.,
` 841 F.3d 1334, 1345 (Fed. Cir. 2016) ....................................................................................... 6
`
`Am. Calcar, Inc. v. Am. Honda Motor Co.,
` 651 F.3d 1318, 1329, 1339-40 (Fed. Cir. 2011) ....................................................................... 9
`
`Asyst Tech., Inc. v. Empak, Inc.,
` 268 F.3d 1364, 1370 (Fed. Cir. 2001) ....................................................................................... 7
`
`Chiuminatta Concrete Concepts, Inc v. Cardinal Indus., Inc.,
` 145 F.3d 1303, 1308-09 (Fed. Cir. 1998) .................................................................................. 7
`
`Ecolab USA Inc. v. Diversey, Inc.,
`No. 12-CV-1984 (SRN/JJG), 2014 WL 258570 at *21 (D. Minn. January 23, 2014) ................. 13
`
`Finisair Corp. v. DirecTV Grp., Inc.,
` 523 F.3d 1323, 1340 (Fed. Cir. 2008) ....................................................................................... 6
`
`Gemalto S.A. v. HTC Corp.,
` No. 6:10-CV-561 LED-JDL, 2012 WL 2505745 at *23-24 (E.D. Tex. June 28, 2012) ........... 5
`
`In re Schreiber,
`128 F.3d 1473, 1477 (Fed. Cir. 1997)..................................................................................... 16
`
`
`JVW Enters., Inc. v. Interact Accessories, Inc.,
` 424 F.3d 1324, 1330 (Fed. Cir. 2005) ....................................................................................... 4
`
`Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
` 324 F.3d 1308, 1318-19 (Fed. Cir. 2003) .................................................................................. 4
`
`Signal IP v. Am. Honda Motor Co.,
` No. LA CV14-02454 JAK (JEMx), 2015 WL 5768344 ........................................................... 5
`
`Typemock, Ltd. v. Telerik, Inc.,
` No. 17-10274-RGS, 2018 WL 4189692 at *8 (D. Mass. Aug. 31, 2018) ................................. 5
`
`Ventana Med. Sys., Inc. v. Biogenex Labs., Inc.,
` 473 F.3d 1173, 1182 (Fed. Cir. 2006) ..................................................................................... 13
`
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`iii
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 4 of 24
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`I.
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`INTRODUCTION
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`Plaintiff Philips North America, LLC (“Philips”) submits its responsive claim
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`construction brief. As demonstrated below, Fitbit’s opening claim construction brief (Dkt. 73)
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`fails to demonstrate, by clear and convincing evidence, the indefiniteness of any asserted claims.
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`Fitbit further fails to justify why any of its proposed constructions—which not only lack support
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`in the specifications but often contradict them—should be adopted by this Court. Philips’s
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`proposed constructions are grounded in the intrinsic record and the plain meaning of various
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`terms to a person of ordinary skill in the art and should be adopted.
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`II.
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`PHILIPS’S POSITIONS ON CLAIM CONSTRUCTION SHOULD BE ADOPTED
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`A.
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`’007 Patent: “means for computing athletic performance feedback data from
`the series of time-stamped waypoints obtained by said GPS receiver”
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`As explained in Philips’s opening claim construction brief, and confirmed in Fitbit’s own
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`brief, the structure and function for this claim element is largely undisputed. What is disputed is
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`the construction of “athletic performance feedback data” and whether the specification supports
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`the recited function. The claim construction dispute is summarized as follows:
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`Philips’s Proposal
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`Fitbit’s Proposed Construction
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`“athletic performance feedback data” means
`elapsed distance, current and average speeds and
`paces, calories burned, miles remaining and time
`remaining.
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`Determining any of the following from a
`series of time-stamped waypoints obtained by
`said GPS receiver during an exercise session:
`elapsed distance of an athlete; current or
`average speed of an athlete; current or
`average pace of an athlete.
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`i.
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`“Athletic performance feedback data” does not include calories
`burned
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`The dispute as to this term boils down to one primary issue: whether the construction of
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`“athletic performance feedback data” should include “calories burned.” Fitbit attempts to
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`include “calories burned” in the construction of “athletic performance feedback data” in order to
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`1
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 5 of 24
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`buttress its indefiniteness argument because every other type of athletic performance feedback
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`data simply utilize high school level math to determine some form of distance or speed from a
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`series of time-stamped GPS waypoints, and comply with the requirements of Section 112, ¶¶2
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`and 6. (See Dkt. 73 at 7-10 and Dkt. 73-5, Martin Decl. ¶¶ 13-27.)
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`The written description of the specification only mentions calories twice. Once in
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`describing how prior art treadmills displayed a measure of calories burned (see Dkt. 73-1 at 1:22-
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`24), and again in characterizing how a number of items can constitute “athletic performance
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`data” but never referring to calories burned as “athletic performance feedback data” (see Dkt. 73-
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`1 at 7:44-47). Fitbit has failed to explain how or why “calories burned” should be included in
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`the construction of “athletic performance feedback data” given such a limited and ambiguous
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`disclosure, nor why or how one of ordinary skill in the art would have understood “athletic
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`performance feedback data” as including calories burned. They would not have. To the
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`contrary, and as explained in Philips’s opening brief the specification unambiguously confirms
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`that elapsed distance of an athlete, current or average speed of an athlete, or current or average
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`pace of an athlete, all constitute athletic performance feedback data determined from a series of
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`time-stamped GPS waypoints. (See Dkt. 73-0 at 6-7.).
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`Philips’s original proposed construction did not include “miles remaining” and “time
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`remaining” because those measures are not necessarily determined from a “series of time-
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`stamped waypoints obtained by said GPS receiver” (as required by the claim language itself).
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`Philips would not dispute that determinations of “miles remaining” and “time remaining” for an
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`athlete that actually did rely on a “series of time-stamped waypoints obtained by said GPS
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`receiver” would constitute “athletic performance feedback data” in the claim, as those items
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`2
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 6 of 24
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`would be derivative of calculating elapsed distance and speed.1 Accordingly, Philips would not
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`object to including “miles remaining” and “time remaining” to its proposed construction.
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`ii.
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`The claim does not require that all items that would constitute
`“athletic performance feedback data” be computed to infringe
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`Philips’s proposed construction is focused on identifying the set of items that, consistent
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`with the specification, constitute “athletic performance feedback data.”2 Philips has never
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`suggested that all of the items, any one of which could constitute athletic performance feedback
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`data, must all actually be determined in order to meet the limitations of the claim. Indeed, what
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`would have been the purpose of reciting a broader class (“athletic performance feedback data”) if
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`the interpretation was to require that every single type of “athletic performance feedback data”
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`be provided in order to meet the limitation? Yet, Fitbit’s opening brief seems to argue—for the
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`first time—that any construction of “athletic performance feedback data” would require that all
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`types of athletic performance feedback data be determined and provided to a user in order to
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`1 For example, if one were to calculate distance remaining from a single recent waypoint (as
`opposed to a series of them) as discussed in Philips’s Opening Brief and the declaration of Dr.
`Thomas Martin, Ph.D. (See Dkt. 73 at 7 and Dkt. 73-5 at ¶ 26) that would not meet the claim
`limitation. If, however, one were to determine miles remaining based on subtracting elapsed
`distance from a target number of miles, then that would indeed constitute athletic performance
`feedback data determined from a series of time stamped waypoints since the calculation of
`elapsed distance is itself determined from a series of time-stamped waypoints (as explained in
`Philips’s Opening Brief (Dkt. 73 at 6-7) and the supporting declaration of Dr. Martin, (Dkt. 73-5
`at ¶¶ 19-21)).
`2 Fitbit objects to Philips’s proposal to construe the entirety of the disputed term as “a processor
`(and equivalents thereof) [structure] that determines any of the following from a series of time
`stamped waypoints obtained by said GPS receiver during an exercise session: elapsed distance of
`an athlete, current or average speed of an athlete, current or average pace of an athlete
`[function].” Philips’s proposal incorporates the structure and function consistent with the
`requirements of construing means-plus-function terms. It is unclear why Fitbit insists that any
`proposed construction adopted by the court separately identify “Function” and “Structure” on
`separate lines instead of a simple sentence that can then be easily understood by a future jury,
`expert, or anyone else who may need to rely on the construction. This is not a “new construct for
`the MPF” claims, it is the mere application of the English language. However, Philips defers to
`the Court’s preference on how to present means plus function claims in its ruling.
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`3
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 7 of 24
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`infringe. (See Dkt. 72 at 3 (alleging that Philips is attempting to “broaden the scope of the claims
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`by including less required claim elements in them”).)
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`There is no basis for Fitbit’s argument. Indeed, it appears to solely be based on Fitbit’s
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`misrepresentation of Philips’s actual proposed construction as simply an interpretation of
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`“athletic performance feedback data” as reciting a list of items joined with an “and.” (See Dkt. 72
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`at 2.) Philips has never framed the issue in that manner. To the contrary, Philips’s proposal (as
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`recited above) has repeatedly stressed that any one of the types of data that qualify as “athletic
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`performance feedback data” would meet the limitation of the claim. (See Dkt. 73 at 5 and Dkt.
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`68-1 at 1.)
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`iii.
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`The term is not indefinite.
`a)
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`Indefiniteness does not render claim construction moot.
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`As an initial matter, Fitbit is wrong in arguing that indefiniteness renders the claim
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`construction moot. (See Dkt. 72 at 2, n. 1.) Fitbit solely argues that the claim is indefinite
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`because the specification lacks algorithmic structure for the recited function. The parties dispute
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`the proper construction of that function (e.g. “athletic performance feedback data” as discussed
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`above). Federal Circuit precedent is manifest that, prior to evaluating the structural support for a
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`means-plus-function term first the function must be determined. See JVW Enters., Inc. v.
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`Interact Accessories, Inc., 424 F.3d 1324, 1330 (Fed. Cir. 2005) (“Determining a claimed
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`function and identifying structure corresponding to that function involve distinct, albeit related,
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`steps that must occur in a particular order. In short, function must be determined before
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`corresponding structure can be identified.”); Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
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`324 F.3d 1308, 1318-19 (Fed. Cir. 2003) (“After identifying the function of the means-plus-
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`function limitation and construing the meaning of the claim language, we look next to the written
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`description to identify the structure corresponding to the function.”))
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`4
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 8 of 24
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`b)
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`No algorithm beyond the claims themselves is required.
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`As explained in Philips’s opening brief, no algorithm beyond what is already recited in
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`the claim is required. (See Dkt. 73 at 7-10.)
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`First, Fitbit completely ignores the fact that the claims themselves recite the requisite
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`algorithm. The claims don’t simply say “means for calculating athletic performance feedback
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`data” in the abstract as Fitbit appears to assume. Rather, they require that athletic performance
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`feedback data be calculated from a series of time-stamped waypoints obtained from a GPS
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`receiver. (See Dkt. 73-1 at Claim 1.) Where, as here, a means-plus-function term recites its own
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`underlying structure, no further analysis into support in the specification is necessary. See
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`Typemock, Ltd. v. Telerik, Inc., No. 17-10274-RGS, 2018 WL 4189692 at *8 (D. Mass. Aug. 31,
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`2018) (“Because the claim language discloses the algorithm to perform the stated function, the
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`court finds that the [disputed] terms are not subject to analysis under 35 U.S.C. § 112, para. 6,
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`and are therefore not indefinite.”); Gemalto S.A. v. HTC Corp., No. 6:10-CV-561 LED-JDL,
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`2012 WL 2505745 at *23-24 (E.D. Tex. June 28, 2012) (finding that because the claims “include
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`all the necessary algorithmic steps to perform the ‘means for translating’ function,” “the claim
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`term cannot fall under § 112 ¶ 6”); Signal IP v. Am. Honda Motor Co., No. LA CV14-02454
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`JAK (JEMx), 2015 WL 5768344 at *40 (C.D. Cal. Apr. 17, 2015) (finding that though unusual,
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`the algorithm required under § 112 ¶ 6 “is disclosed in the claim itself”).
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`Second, the specific structure recited in the specification (a processor in communication
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`with a GPS receiver and a memory) is more specific than a general purpose computer and also
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`suffices to provide the requisite structure for determining athletic performance feedback data
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`from a series of time-stamped GPS waypoints obtained from said GPS receiver. (See Dkt. 73 at
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`9-10.)
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`5
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 9 of 24
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`c)
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`To the extent an algorithm is required, a person of ordinary
`skill would understand the specification as disclosing one.
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`In an effort analogize this dispute to cases that Fitbit would like to rely on, Fitbit alleges
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`that during the meet and confer “Philips stated that one skilled in the art would know how to use
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`the processor to perform the claimed function.” (Dkt. 72 at 5.) That has never been Philips’s
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`contention and Fitbit’s use of a full page in its brief to describe cases where such an argument
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`failed is a red herring. (See Dkt. 72 at 5.)
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`Rather, as explained in Philips’s opening brief, a person of ordinary skill in the art would
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`understand that an algorithm is disclosed in the specification—namely, calculating athletic
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`performance feedback data (elapsed distance, average or current speed, or current or average
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`pace) from a series of GPS waypoints obtained from a GPS receiver. (See Dkt. 73 at 7-10
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`(explaining the applicable legal standards, and how well-known and basic formulas—even when
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`forming part of algorithm—need not be expressly disclosed if a person or ordinary skill in the art
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`would understand them from the disclosure).) This is consistent with the Federal Circuit’s
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`instruction that a specification need only “disclose, at least to the satisfaction of one of ordinary
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`skill in the art, enough of an algorithm to provide the necessary structure under § 112 ¶ 6,” and
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`that the algorithm can be expressed “in any understandable terms including as a mathematical
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`formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.”
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`Finisair Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation
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`omitted).
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`Here, the formulas for calculating distance, speed, and pace from a series of points—all
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`of which involves high school level math—are not expressly disclosed in the specification, but
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`are aspects of the algorithm that a POSITA would nevertheless be well aware of. See Alfred E.
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`Mann Found. for Sci. Research v. Cochlear Corp., 841 F.3d 1334, 1345 (Fed. Cir. 2016) (finding
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`6
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 10 of 24
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`sufficient disclosure of an algorithm for calculating impedance since a person of ordinary skill
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`would know to apply Ohm’s law, even though it was not expressly disclosed in the
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`specification).
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`d)
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`Corresponding structure must be tied to the claimed function.
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`During the deposition of Dr. Martin, Philips’s expert, counsel for Fitbit hypothesized on
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`various schemes for correcting GPS signals that are not claimed in the ’007 Patent. Presumably
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`Fitbit intends to now argue that the claims are indefinite because the specification fails to
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`disclose algorithms for correcting errors in GPS signals (and perhaps other items as well).
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`However, it would be error to require structural elements (such as an algorithm for error
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`correction) that do not correspond to what the parties agree is the recited function. See
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`Chiuminatta Concrete Concepts, Inc v. Cardinal Indus., Inc., 145 F.3d 1303, 1308-09 (Fed. Cir.
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`1998) (reversing district court for identifying structure that did not correspond to the recited
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`function); Asyst Tech., Inc. v. Empak, Inc., 268 F.3d 1364, 1370 (Fed. Cir. 2001) (limiting the
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`structure to be included in claim construction because “[s]tructural features that do not actually
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`perform the recited function do not constitute corresponding structure and thus do not serve as
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`claim limitations.”) Accordingly, algorithms for correcting errors in GPS signals are not
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`required because the claims are not directed to a “means for GPS error correction”—rather, the
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`agreed function is simply “computing athletic performance feedback data from the series of
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`time-stamped waypoints obtained by said GPS receiver.” Any discussion in the specification
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`about GPS error correction therefore cannot correspond to the function that is actually claimed.
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`Were Fitbit’s argument adopted then every ancillary function to the actually claimed function
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`could be read into the claim, which would be improper.
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`7
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 11 of 24
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`B.
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`’007 Patent: “means for suspending and resuming operation of said means
`for computing when a speed of the athlete falls below a predetermined
`threshold” (Claim 7)
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`Philips’s Proposed Construction
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`Fitbit’s Proposed Construction
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`that
`thereof)
`a processor (and equivalents
`suspends said computing when a speed of the
`athlete is below a predetermined threshold and
`resumes said computing when a speed of the
`athlete is not below said predetermined threshold
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`Indefinite
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`The specification describes how the invention may suspend or resume activities
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`depending on the speed of an athlete. (See Dkt. 73-1 at 8:5-13.) That is what the agreed function
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`covers, and Fitbit does not dispute this. The only conceivable structure in the specification for
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`accomplishing that function is a processor, yet Fitbit argues that because the specification does
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`not literally use the words “a processor for suspending and resuming operation…” the processor
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`is not “clearly linked” to the claimed function. That cannot be. A person of ordinary skill would
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`plainly recognize that the processor would be responsible for the actions of suspending and
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`resuming operation as recited in both the specification and the claims; and as explained in
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`Philips’s opening brief (and not actually dispute by Fitbit) no algorithm is necessary.3
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`Fitbit also argues that the specification does not use the term “predetermined threshold.”
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`However the specification explains how the invention may “determine if the athlete has
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`temporarily suspended exercising and temporarily pauses monitoring until exercise is resumed”
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`based on a variety of parameters. These include speed, pace, and heart rate—all of which would
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`at a minimum necessarily implicate a threshold of some sort, which a person of ordinary skill in
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`the art would appreciate.
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`3 Fitbit had previously argued that this term was indefinite for lack of algorithmic support.
`Perhaps after realizing that no additional algorithm is required to support turning something on
`or off based on a threshold, Fitbit has changed its argument.
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`8
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 12 of 24
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`C.
`’958 Patent: “in the event of an interruption of the wireless connection . . .
`configured to store the health parameter [or visual data] … in a memory or on
`[a/the] removable memory device”
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`Philips’s Proposed Construction
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`No construction necessary.
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`Fitbit’s Proposed Construction
`Claim 16: stores the health parameter or visual data
`in a memory or on the removable memory device in
`response to the event
`Claim 15: stores the health parameter from the
`health monitoring device in a memory or on a
`removable memory device in response to the event
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`The crux of the dispute on this term is Fitbit’s improper attempt to replace “in the event
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`of” in the claim language with “in response to.” Philips does not intend to argue that “configured
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`to” means merely “capable of”. Philips however does disagree that there must be a “cause and
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`effect” relationship as Fitbit contends. As explained in Philips’s opening claim construction
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`brief, the specification simply describes storing data in a memory in a time period after an
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`interruption of the wireless connection, whether or not that occurs specifically because of the
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`interruption (e.g. “in response to”) or because the device was already configured to store said
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`data after the interruption. (See Dkt. 73 at 12-13; Dkt. 73-2 at 14:24-27 and Fig. 11, including
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`step 218.) To adopt Fitbit’s construction would be to improperly exclude the embodiments
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`configured to store data “in the event of an interruption” where said configuration occurred
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`before an interruption, but data nonetheless was stored afterwards.
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`Fitbit’s reliance on Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1329,
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`1339-40 (Fed. Cir. 2011) is inapposite. (See Dkt. 72 at 9.) There, the court was construing a term
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`that recited “in response to” as (uncontroversially) requiring “in response to.”
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`9
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 13 of 24
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`D.
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`’958 Patent: “memory”
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`Philips’s Proposed Construction
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`Fitbit’s Proposed Construction
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`No construction necessary.
`Alternatively: “any device capable of storing
`information, including temporary storage”
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`Fitbit admits that its goal is to exclude any form of temporary storage from what would
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`persistent data storage
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`otherwise be the plain and ordinary meaning of “memory” by requiring that the memory be
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`“persistent”. (See Dkt. 72 at 10-11.) Fitbit takes issue with Philips’s use of the word
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`“temporary” in its alternative proposed construction—but fails to explain what exactly it means
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`by “persistent data storage.” Indeed, it identifies “cards, sticks, and drives” as exemplary
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`“persistent” data storage devices—but never explains why that is so. Any of those devices could
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`be used in a temporary rather than persistent fashion. That storage may be temporary is
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`reinforced by the specification’s discussion of how wireless web devices tend to have limited
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`memory—they would not be suitable as the location for permanent storage or archiving of health
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`information. (Dkt. 73-2 at 4:16-24, 8:42-45, 12:47-49.) This is not inconsistent with the fact
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`that an overall goal of the invention is the “preservation and storage of health information” as
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`Fitbit points out. (See Dkt. 72 at 11.) By temporarily storing health data on a wireless web
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`device one can then archive that data to a more permanent storage solution when a connection to
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`the internet resumes. Indeed, even Fitbit acknowledges such an embodiment in its brief. (See
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`Dkt. 72 at 10 (quoting the following embodiment from the specification: “as the data has been
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`stored on the memory device and may be wirelessly transmitted at a later time when cellular or
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`mobile service is again available. . .”).) There is no basis for Fitbit’s construction.
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`10
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 14 of 24
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`E.
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`’958 Patent: “internet-enabled wireless web device”
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`Philips’s Proposed Construction
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`Fitbit’s Proposed Construction
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`a device designed to display interactive
`information through a connection to the
`Internet
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`As explained in Philips’s opening brief, the specification overwhelming demonstrates
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`No construction necessary.
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`that “internet-enabled wireless web devices” are those that are designed to display interactive
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`information through a connection to the Internet and not simply “dumb” devices that might send
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`a signal over the internet (e.g a sensor, as Fitbit contends). (See Dkt. 73 at 14-15.) That, as Fitbit
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`points out, related patents have focused on the interactive nature of an internet-enabled wireless
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`web device only bolsters this conclusion. (See Dkt. 72 at 11.) Fitbit points out that the
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`specification’s exemplary “WWDs” are all off-the shelf wireless devices—but fails to point out
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`that they are also all interactive devices (e.g. phone, PDA, or laptop computer). (See Dkt. 72 at
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`12 and Dkt 73-2 at 3:40-50.)
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`Fitbit’s reliance on an office action response in related Patent Application No. 13/632,771
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`is misplaced. (See Dkt. 72 at 12.) The cited amendment did not actually modify what constituted
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`a “web-enabled wireless mobile device” in the claim. Rather, the amendment focused on
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`specific aspects of “an interactive application program for measurement an [sic.] exercise
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`parameter and an interactive user interface.” (See Dkt. 72-1 at 2.) That these claims were
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`amended to claim a specific application with specific interactive user interface features has no
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`bearing on what one of ordinary skill would nonetheless understand the scope of “internet
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`enabled wireless-web device” to be in view of the specification.
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`11
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 15 of 24
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`
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`F.
`’958 Patent: “health parameter [or visual data] [indicative/corresponding to]
`of a disease state or condition of a patient”
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`Philips’s Proposed Construction
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`Fitbit’s Proposed Construction
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`No construction necessary.
`Alternatively: “the health parameter indicative
`of [or visual data corresponding to] a disease
`state or condition of a person under the care of
`a physician or a healthy individual interested in
`maintaining a healthy physiologic balance”
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`information used by health care professionals
`in medically diagnosing / treating a patient
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`Fitbit’s entire argument for this term is based on a false dichotomy between exemplary
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`embodiments for “disease management” and “health management” as described in the
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`specification. That the specification refers to these as “complementary” does not mean that they
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`are mutually exclusive as Fitbit appears to assume. The invention is directed to both, and the
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`plain meaning of the claim language covers both—especially when one considers that the
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`specification itself described how “[t]he term ‘patient’ is used, in addition to a person under the
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`care of a physician, to also refer to a ‘normal’ or healthy individual interested in maintaining a
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`healthy physiologic balance.” (Dkt. 73-2 at 6:7-11.)
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` Were there any doubt, the specification explains how “[e]mbodiments of the invention
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`provide a method and apparatus for a wireless health monitoring system for interactively
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`monitoring a disease or health condition of a patient,” e.g. both the “disease management”
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`and “health management” embodiments. (Dkt. 73-2 at Abstract.) The term “health parameter”
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`is also specifically use to describe information obtained in the “health management”
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`embodiments that Fitbit seeks to exclude from the claims. (See Dkt. 73-2 at 2:58-65.) Indeed,
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`the preamble of claim 16 actually recites “[a] internet-enabled wireless web device for
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`monitoring health,” which completely contradicts Fitbit’s assertion that the claim must be
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`limited to disease management as oppose to, more broadly, health monitoring.
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`12
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`Case 1:19-cv-11586-IT Document 77 Filed 07/08/20 Page 16 of 24
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`Fitbit’s reliance on an office action in related application No. 12/692,080 is misplaced.
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`First, the related application is a continuation-in-part application of the ’958 patent and neither
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`shares the same specification as the ’958 patent nor the same disputed claim language. Ventana
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`Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006) (“But the doctrine
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`of prosecution disclaimer generally does not apply when the claim term in the descendant patent
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`uses different language.”). The claims at issue in the cited office action are focused on the claim
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`language “exercise parameters”—a term that does not even appear in the specification of the
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`’958 patent. Accordingly, the office action has no bearing on the claim construction issue before
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`the court and certainly does not rise to the level of a disclaimer that should bind the meaning of
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`different claim language here. See, e.g., Ecolab USA Inc. v. Diversey, Inc., No. 12-CV-1984
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`(SRN/JJG), 2014 WL 258570 at *21 (D. Minn. January 23, 2014) (statements made in
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`subsequent prosecution were “not a reliable indicator of the proper scope of the Patents-in-Suit”
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`as those statements may have been relevant but not binding when different claim language was at
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`issue