Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 1 of 29
`
`Philips v. Fitbit
`Case No. 1:19-cv-11586 (D. Mass)
`Hon. Judge Talwani
`
`Plaintiff’s Opposition to Rule 12(b)(6) Motion to Dismiss
`August 20, 2020
`
`1
`
`
`
`Philips v. Fitbit
`Case No. 1:19-cv-11586 (D. Mass)
`Hon. Judge Talwani
`
`Plaintiff’s Opposition to Rule 12(b)(6) Motion to Dismiss
`August 20, 2020
`
`1
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 2 of 29
`
`U.S. Patent No.
`6,013,007
`(Root)
`
`2
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 3 of 29
`
`‘007: Structure – Claim Recites Algorithm
`
`‘007: 7:40-43
`
`3
`
`
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`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 4 of 29
`
`‘007: Multiple Distinct Asserted Claims
`Asserted Claims: 7, 21, 23, 24, 25, 26, 28, 29
`
`Amended Complaint DI 25
`
`35 USC 282(a): A patent shall be presumed valid. Each claim of a patent
`(whether in independent, dependent, or multiple dependent form) shall be
`presumed valid independently of the validity of other claims; dependent or
`multiple dependent claims shall be presumed valid even though dependent
`upon an invalid claim.
`
`4
`
`
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`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 5 of 29
`
`‘007: Claim comparison example
`Asserted Claims: 7, 21, 23, 24, 25, 26, 28, 29
`
`Claim 23
`
`Claim 7
`
`5
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 6 of 29
`
`‘007: Alice Step 1
`What is the improvement over the prior art set forth in the claims?
`
`Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1302 (Fed. Cir. 2018)
`(“Starting at step one, we must first examine the '844 patent's ‘claimed
`advance’ to determine whether the claims are directed to an abstract idea.”)
`
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362-63 (Fed.
`Cir. 2018)(“these claims recite a specific improvement over prior art systems”)
`
`Thales Visionix, Inc. v. United States, 850 F.3d 1343, 1349 (Fed Cir. 2017)(“Just as
`claims directed to a new and useful technique for defining a database that runs
`on general-purpose computer equipment are patent eligible, Enfish, 822 F.3d at
`1337-38, so too are claims directed to a new and useful technique for using
`sensors to more efficiently track an object on a moving platform”)
`
`Enfish, LLC v. Microsoft Corp., 822 F3d 1327, 1362 (Fed. Cir. 2016)(recognizing
`that improvements in computer-related technology are not abstract and that
`Alice did not address this because it did not need to based on admissions).
`
`6
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 7 of 29
`
`‘007: Claims Directed to Advancement in Art
`
`Amended Complaint DI 25 : ¶¶ 59-69, including 60-63
`
`61.
`
`7
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 8 of 29
`
`‘007: Claims Directed to Advancement in Art
`
`Amended Complaint DI 25 : ¶¶ 59-69, including 60-63
`
`8
`
`
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`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 9 of 29
`
`‘007: Claims Directed to Advancement in Art
`
`Amended Complaint DI 25 : ¶¶ 59-69, including 60-63
`
`9
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 10 of 29
`
`‘007: Pleadings Establish no Abstract Idea
`
`Berkheimer and Aatrix stand for the unremarkable proposition that
`whether a claim element or combination of elements would have been
`well-understood, routine, and conventional to a skilled artisan in the
`relevant field at a particular point in time is a question of fact.
`
`Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018)(en banc
`denial of rehearing)(emphasis supplied); Cellspin Soft, Inc. v. Fitbit, Inc.,
`927 F.3d 1306 (Fed. Cir. 2019); Koninklijke KPN N.V. v. Gemalto MSM
`GmbH, 942 F.3d 1143 (Fed. Cir. 2019); Aatrix Software, Inc. v. Green
`Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018).
`
`Fitbit is unable to both accept the pleadings and all favorable
`inferences to Philips, and demonstrate ineligibility.
`
`The claims do not include Fitbit’s language, and Fitbit’s
`characterizations are no substitute for the claimed inventions.
`
`10
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 11 of 29
`
`‘007: Claims Directed to Advancement in Art
`
`Amended Complaint DI 25 : ¶¶ 59-69, including 60-63
`
`Summary
`64: Claims do not pre-empt. Do not relate to implementation of a
`prior practice on a computer.
`65: Improve personal performance devices. Various advancements are
`identified in the claims.
`66. Provides improvements and advancements in electronics.
`67: Provides improvements over prior art as meaningful limitations.
`The claimed advancements did not exist before.
`68: Nonconventional arrangement of components.
`69: Claimed advancements are rooted in computers.
`
`11
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 12 of 29
`
`U.S. Patent No.
`7,088,233
`(Menard)
`
`12
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 13 of 29
`
`The Claimed Invention(s) of the ’233 Patent
`
`• Asserted Claims: 1, 7, 8, 9, 10, 13, 14, 15, 16, 22, 24, 25, 26
`
`13
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 14 of 29
`
`The Claimed Invention(s) of the ’233 Patent
`
`14
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 15 of 29
`
`‘233: “governing information transmitted…”
`
`• Encryption alone does not govern information transmitted.
`– While a form of “security,” does not involve control over the transmission of
`information.
`• Notice of Allowance:
`
`Dkt. 73-6 at 165:3-18
`
`15
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 16 of 29
`
`’233 Patent: Not Abstract
`
`16
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 17 of 29
`
`’233 Patent: Not Abstract
`
`17
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 18 of 29
`
`’233 Patent: Not Abstract
`
`• Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303-04
`(Fed. Cir. 2018)
`– Use of “security profile” to identify malware not abstract.
`
`• Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d
`1128-29 (Fed. Cir. 2018)
`– Factual dispute as to whether “data file” constituted an
`inventive concept precluded finding of ineligibility.
`
`18
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 19 of 29
`
`U.S. Patent No.
`8,277,377
`(Quy)
`
`19
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 20 of 29
`
`‘377: Multiple Distinct Asserted Claims
`Asserted Claims: 1, 4, 5, 6, 9, 12
`Amended Complaint DI 25
`
`35 USC 282(a): A patent shall be presumed valid. Each claim of a patent
`(whether in independent, dependent, or multiple dependent form) shall be
`presumed valid independently of the validity of other claims; dependent or
`multiple dependent claims shall be presumed valid even though dependent
`upon an invalid claim.
`
`20
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 21 of 29
`
`‘377: Claim comparison example
`Asserted Claims: 1, 4, 5, 6, 9, 12
`
`Claim 1
`
`Claim 6
`
`21
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 22 of 29
`
`‘377: Alice Step 1
`What is the improvement over the prior art set forth in the claims?
`
`Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1302 (Fed. Cir. 2018)
`(“Starting at step one, we must first examine the '844 patent's ‘claimed
`advance’ to determine whether the claims are directed to an abstract idea.”)
`
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362-63 (Fed.
`Cir. 2018)(“these claims recite a specific improvement over prior art systems”)
`
`Thales Visionix, Inc. v. United States, 850 F.3d 1343, 1349 (Fed Cir. 2017)(“Just as
`claims directed to a new and useful technique for defining a database that runs
`on general-purpose computer equipment are patent eligible, Enfish, 822 F.3d at
`1337-38, so too are claims directed to a new and useful technique for using
`sensors to more efficiently track an object on a moving platform”)
`
`Enfish, LLC v. Microsoft Corp., 822 F3d 1327, 1362 (Fed. Cir. 2016)(recognizing
`that improvements in computer-related technology are not abstract and that
`Alice did not address this because it did not need to based on admissions).
`
`22
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 23 of 29
`
`‘377: Claims Directed to Advancement in Art
`Amended Complaint DI 25 : ¶¶ 107-118, including 108-112
`
`109.
`
`23
`
`* * *
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 24 of 29
`
`‘377: Claims Directed to Advancement in Art
`Amended Complaint DI 25 : ¶¶ 107-118, including 108-112
`
`24
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 25 of 29
`
`‘377: Claims Directed to Advancement in Art
`Amended Complaint DI 25 : ¶¶ 107-118, including 108-112
`
`111 (file history of 377 patent).
`
`25
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 26 of 29
`
`‘377: Claims Directed to Advancement in Art
`Amended Complaint DI 25 : ¶¶ 107-118, including 108-112
`
`26
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 27 of 29
`
`‘007: Pleadings Establish no Abstract Idea
`
`Berkheimer and Aatrix stand for the unremarkable proposition that
`whether a claim element or combination of elements would have been
`well-understood, routine, and conventional to a skilled artisan in the
`relevant field at a particular point in time is a question of fact.
`
`Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018)(en banc
`denial of rehearing)(emphasis supplied); Cellspin Soft, Inc. v. Fitbit, Inc.,
`927 F.3d 1306 (Fed. Cir. 2019); Koninklijke KPN N.V. v. Gemalto MSM
`GmbH, 942 F.3d 1143 (Fed. Cir. 2019); Aatrix Software, Inc. v. Green
`Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018).
`
`Fitbit is unable to both accept the pleadings and all favorable
`inferences to Philips, and demonstrate ineligibility.
`
`The claims do not include Fitbit’s language, and Fitbit’s
`characterizations are no substitute for the claimed inventions.
`
`27
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 28 of 29
`
`‘377: Claims Directed to Advancement in Art
`Amended Complaint DI 25 : ¶¶ 107-118, including 108-112
`
`Summary
`114: Specific improvements identified, e.g., “downloading an
`application from a remote server to a wireless device to improve
`functionality of health monitoring devices by enabling coupling to
`monitoring of data indicating the physiologic status of a subject and/or
`exercise-related information, and allowing for the calculation of
`responses to that information from the server.”
`115: Network efficiency, data analysis and sharing improved.
`116: Meaningful improvements; not previously understood.
`117: Nonconventional arrangement of components.
`118 : Inventive concept rooted in computer technology.
`
`28
`
`
`
`Case 1:19-cv-11586-IT Document 93-1 Filed 08/20/20 Page 29 of 29
`
`PH I ll PS
`
`A.’
`J;
`It
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`29
`29
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