Case 1:19-cv-11586-FDS Document 233 Filed 09/07/21 Page 1 of 5
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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 LLC
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`Defendant.
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`C.A. No. 1:19-cv-11586-FDS
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`FITBIT’S STATUS REPORT REGARDING FITBIT’S MOTION TO COMPEL
`CERTAIN EMAILS OF MR. ARIE TOL (DKT. 198)
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`Case 1:19-cv-11586-FDS Document 233 Filed 09/07/21 Page 2 of 5
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`Pursuant to Magistrate Judge Dein’s instructions at the August 24, 2021 hearing (see Dkt.
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`229) on Defendant Fitbit LLC’s (“Fitbit”) motion to compel (Dkt. 198), Fitbit submits this status
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`report summarizing the parties’ continued discussions.
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`During the August 24 hearing, Magistrate Judge Dein requested that the parties make a
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`further effort to narrow their disputes.
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`Based on the Court’s request and careful consideration of all of the pending disputes, Fitbit
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`hereby withdraws its request to compel entry numbers 244-248 and 260-270 from Philips’s
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`privilege log, discussed in paragraph 36 of Mr. Tol’s declaration (Dkt. 210-1 (Ex. 1 to Philips’s
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`Opposition to Fitbit’s Motion)).
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`In an effort to further narrow the issues before the Court, Fitbit also reached out to Philips
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`to request that it provide important information concerning several of the withheld documents
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`described in Mr. Tol’s declaration, since, as explained in Fitbit’s motion, Philips has not
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`adequately supported its privilege claims. Despite Fitbit’s request, Philips refused to provide any
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`additional information. (See Ex. A attached hereto.)
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`Specifically, regarding entries 19-21, 24, 30-31, 35-37, 42-43, 46-47, 60-64, and 71-73,
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`Mr. Tol’s declaration, like the privilege logs before it, summarily asserts that these
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`communications either sought or were made in furtherance of seeking legal advice from Mr. Elias
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`Schilowitz (a Philips in-house intellectual property licensing attorney who is not even included in
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`the “from,” “to,” or “cc” fields of the majority of these communications) relating to the October
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`2016 letter from Philips to Fitbit. However, these entries do not specify the nature of that advice
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`in a way that would permit Fitbit “to assess the claim,” as required by the Federal Rules (e.g., Fed.
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`R. Civ. P. 26(b)(5)(A)). (See Dkt. 210-1, ¶¶ 18-19, 21-23, 26, 29-30.) Therefore, in an effort to
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`narrow disputes, Fitbit requested that Philips state the legal issue on which Mr. Schilowitz’s advice
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`was allegedly sought so that Fitbit could assess whether the communications are in fact privileged
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`legal advice (e.g., discussions about Philips’s infringement allegations), or instead non-privileged
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`Case 1:19-cv-11586-FDS Document 233 Filed 09/07/21 Page 3 of 5
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`business advice (e.g., discussions of potential licensing terms to propose to Fitbit). Philips refused
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`to provide additional information. (Ex. A at 9/3/21 email from R. Rodrigues.) Fitbit also requested
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`that Philips confirm whether these communications are entirely privileged such that they must be
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`withheld rather than redacted. (Ex. A at 8/31/21 email from E. Speckhard.) Again, Philips refused
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`to do so. (Ex. A at 9/3/21 email from R. Rodrigues.) Because Philips has not carried its burden
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`to show that these communications include exclusively privileged legal advice rather than non-
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`privileged business advice, Fitbit maintains its request that the Court either compel their
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`production or review the communications in camera to assess Philips’s privilege claims.
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`Regarding entries 299-301, 408, 412-420, 422-23, 425-31, 437-38, 440-41, 443, 450-51,
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`458-60, 463-64, Fitbit requested that Philips identify whether these communications exclusively
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`relate to Lifescan’s alleged breach of a licensing contract with Philips, or if they also contain non-
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`privileged business discussions relating to Philips’s renegotiation of the license and/or how to
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`characterize payments received under the revised agreement. (Ex. A at 8/31/21 email from E.
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`Speckhard.) Philips’s response denied that any renegotiation occurred. (Ex. A at 9/3/21 email
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`from R. Rodrigues.) But, as evidenced by documents already produced by Philips, the
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`“settlement” of that dispute was in fact a revised license agreement including different terms—i.e.,
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`a renegotiation. Because Philips has not carried its burden to show that these communications
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`include exclusively privileged legal advice rather than non-privileged business advice, Fitbit
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`maintains its request that the Court either compel their production or review the communications
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`in camera to assess the validity of Philips’s claims.
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`Fitbit maintains its motion with respect to all other documents subject to the motion and
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`not discussed herein.
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`Case 1:19-cv-11586-FDS Document 233 Filed 09/07/21 Page 4 of 5
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`Dated: September 7, 2021
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`Respectfully submitted,
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`FITBIT LLC .
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`By Its Attorneys,
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`/s/ David J. Shaw
`David J. Shaw (pro hac vice)
`dshaw@desmaraisllp.com
`DESMARAIS LLP
`1701 Pennsylvania Ave. NW, Suite 200
`Washington, D.C. 20006
`Telephone: (202) 451-4900
`Facsimile: (202) 451-4901
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`Karim Z. Oussayef (pro hac vice)
`koussayef@desmaraisllp.com
`Leslie M. Spencer (pro hac vice)
`lspencer@desmaraisllp.com
`Brian D. Matty (pro hac vice)
`bmatty@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
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`Ameet A. Modi (pro hac vice)
`amodi@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
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`Gregory F. Corbett (BBO # 646394)
`Elizabeth A. DiMarco (BBO#681921)
`WOLF, GREENFIELD & SACKS, P.C. 600
`Atlantic Avenue
`Boston, MA 02110
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`gcorbett@wolfgreenfield.com
`edimarco@wolfgreenfield.com
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`Attorneys for Defendant Fitbit LLC
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`Case 1:19-cv-11586-FDS Document 233 Filed 09/07/21 Page 5 of 5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above document was
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`served on September 7, 2021 on counsel for Defendant via electronic mail.
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`/s/ Elizabeth A. DiMarco
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`5
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