Case 1:19-cv-11586-FDS Document 232 Filed 09/03/21 Page 1 of 5
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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-FDS
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`PLAINTIFF’S SUPPLEMENTAL SUBMISSION WITH REGARD TO FITBIT’S
`MOTION TO COMPEL (Dkt. 198) IN ACCORDANCE WITH MAGISTRATE JUDGE J.
`DEIN’S INSTRUCTIONS (See Dkt. 229)
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`Case 1:19-cv-11586-FDS Document 232 Filed 09/03/21 Page 2 of 5
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`Pursuant to the Honorable Magistrate Judge Judith G. Dein’s instructions at the hearing
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`held on August, 24th, 2021 (See Dkt. 229), Plaintiff Philips North America LLC (“Philips”)
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`provides the following submission with regard to Fitbit’s Motion to Compel.
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`A.
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`Philips Agrees to Withdraw Work Product for Entries Nos. 3, 26, and 28 in
`favor of the Attorney-Client Privilege for such Entries.
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`On August 24th, Judge Dein heard argument on Defendant Fitbit, Inc.’s (“Fitbit”) Motion
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`to Compel. During this hearing, Judge Dein requested that Philips reevaluate its position as to
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`whether it would continue to maintain work product protection for certain communications on
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`Philips’s privilege log dated prior to the formal notices of infringement on February 17, 2016 for
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`Garmin (See Ex. 1-A to Philips’ opposition, Dkt. 210-02) and October 10, 2016 for Fitbit (See Ex.
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`1-B to Philips’ opposition, Dkt. 210-03). Accordingly, Philips carefully evaluated the logged
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`communications prior to those dates as well as well as prior to other litigations between Philips
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`and Fitbit/Garmin that were instituted beginning on September 27, 2017 in Europe. Having
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`carefully evaluated those, and despite Philips’s belief that its assertion of work product over these
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`communications was proper in light of Philips’s anticipation of litigation, in order to simplify the
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`review by the Court, Philips withdraws its assertion of work product protection for Privilege
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`Log Entry Nos. 3, 26, and 28 thereby relying on its proper assertion of Attorney Client Privilege
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`supported by Philips’s most recent privilege log, which is Ex. M to Fitbit’s original motion, and
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`the Declaration of A. Tol, which is Ex. 1 to Philips’ opposition (See Dkt. No. 210-01 ¶¶ 16, 20).
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`All the other communications for which work product has been asserted specifically
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`concern litigation preparation and planning as described in the declaration of Mr. Tol, including
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`communications relating to the preparation of the notice letter to Fitbit—the preparation of which
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`involved U.S. Attorney Elias Schilowitz from the very beginning, as described in Mr. Tol’s
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`declaration, even if Mr. Schilowitz was not CCed on all logged communications. (See, e.g., Dkt.
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`No. 210-01 at ¶¶ 18, 19, 21, 22)
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`1
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`Case 1:19-cv-11586-FDS Document 232 Filed 09/03/21 Page 3 of 5
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`Timeline of Notice and Litigations Against Fitbit and Garmin
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`B.
`In view of the discussion of the timing of various events at the hearing, including the timing
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`of Philips providing notice to Fitbit and Garmin and the filing of litigation in Europe, Philips has
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`prepared the below timeline supported by citations to the record for the Court’s benefit and
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`reference:
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`Date
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`Event
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`Feb. 17, 2016
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`Infringement Notice Letter sent to Garmin
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`Oct. 10, 2016
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`Infringement Notice Letter sent to Fitbit
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`Cite
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`Dkt. 210-02
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`Dkt. 210-03
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`Sept. 27, 2017 Philips files patent infringement suit against Garmin in
`Germany
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`Dkt. No. 201-01 ¶ 8
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`Oct. 20, 2017 Garmin initiates revocation proceeding in UK against
`Philips asserted patent
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`Dkt. No. 201-01 ¶ 9
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`Oct. 27, 2017 Philips files another patent infringement suit against
`Garmin in Germany
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`Dkt. No. 201-01 ¶ 8
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`Dec. 1, 2017
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`Philips files countersuit against Garmin in the UK for
`patent infringement
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`Dkt. No. 201-01 ¶ 9
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`Dec. 4, 2017
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`Philips files patent infringement suit against Fitbit in
`Germany
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`Dkt. No. 201-01 ¶ 8
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`Dec. 12, 2017 Philips files separate patent infringement suit against
`Fitbit in Germany
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`Dkt. No. 201-01 ¶ 8
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`Jan. 25, 2018 Garmin initiates nullity proceeding in Germany against
`Philips asserted patent
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`Dkt. No. 201-01 ¶ 9
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`July 22, 2019 Philips files patent infringement suit against Garmin in
`C.D. Cal.
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`Dkt. No. 201-01 ¶ 12
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`July 22, 2019 Philips files present patent infringement suit against
`Fitbit in D. Mass
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`Dkt. No. 201-01 ¶ 12
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`2
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`Case 1:19-cv-11586-FDS Document 232 Filed 09/03/21 Page 4 of 5
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`C.
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`Inadvertent Exclusion of Entry Nos 421, 424, and 433 from Mr. Tol’s
`Declaration.
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`Upon its further review of Mr. Arie Tol’s Declaration, Philips discovered that three of the
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`Privilege Log Entries that Fitbit has moved to produce were inadvertently not referenced in Mr.
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`Tol’s Declaration. Specifically, Entry Nos. 421 and 424 should have been included in the list of
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`entries referenced in paragraph 41 of Mr. Tol’s declaration (See Dkt. 210-01 ¶ 41) while Entry No.
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`433 should have been included in the list of entries referenced in paragraph 42. (See Dkt. 210-01
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`¶ 42). These entries relate to the same subject matter as the other entries referenced in those
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`paragraphs and Mr. Tol’s descriptions applies equally to them. 1
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`Dated: September 3, 2021
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`Respectfully Submitted,
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` /s/ Eley O. Thompson
`Lucas I. Silva (BBO 673,935)
`Ruben J. Rodrigues (BBO 676,573)
`John W. Custer (BBO 705,258)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Suite 2500
`Boston, MA 02199-7610
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`lsilva@foley.com
`rrodrigues@foley.com
`jcuster@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 Plaintiff
` Philips North America LLC
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`1 Philips also notes that Entry Nos. 162 and 163 were produced to Fitbit prior to Fitbit’s Motion to Compel, and
`therefore are no longer at issue.
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`3
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`Case 1:19-cv-11586-FDS Document 232 Filed 09/03/21 Page 5 of 5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on September 3, 2021, 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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`/s/ John W. Custer
` John W. Custer
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