Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 1 of 28
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`
`PHILIPS NORTH AMERICA LLC,
`
`v.
`
`FITBIT, INC.,
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 1:19-cv-11586-FDS
`
`
`MEMORANDUM IN SUPPORT OF PLAINTIFF’S MOTION
`TO STRIKE FITBIT’S INEQUITABLE CONDUCT DEFENSE
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`
`
`

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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 2 of 28
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`TABLE OF CONTENTS
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`I. BACKGROUND ..................................................................................................................... 1
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`II. LEGAL STANDARDS ........................................................................................................... 4
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`III. ARGUMENT........................................................................................................................... 7
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`A.
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`B.
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`C.
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`D.
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`Fitbit’s Delay and Untimeliness of Inequitable Conduct Defense.......................... 8
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`Fitbit’s Inequitable Conduct “Facts” Are Demonstrably False .............................. 9
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`Fitbit’s Pleading of Materiality Fails as a Matter of Law ..................................... 12
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`Fitbit Fails to Plausibly Plead Any Cognizable form of Intent ............................. 15
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`IV. CONCLUSION ..................................................................................................................... 21
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`i
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 3 of 28
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Aevoe Corp. v. Ae Tech. Co.,
`No. 2:12-cv-00053-GMN-NJK, 2013 U.S. Dist. LEXIS 31647 (D. Nev. Mar. 7, 2013) ........17
`
`Alps S., LLC v. Ohio Willow Wood Co.,
`No. 8:09-cv-00386-EAK-MAP, 2012 U.S. Dist. LEXIS 11330 (M.D. Fla. Jan. 31, 2012) ....17
`
`Aquestive Therapeutics, Inc. v. Biodelivery Scis. Int’l, Inc.,
`No. 5:19-CV-505-D, 2021 U.S. Dist. LEXIS 49667 (E.D.N.C. Mar. 16, 2021) ...............12, 13
`
`Boehringer Ingelheim Int’l GmbH v. Barr Labs., Inc.,
`592 F.3d 1340 (Fed. Cir. 2010)................................................................................................14
`
`In re BP Lubricants USA Inc.,
`637 F.3d 1307 (Fed. Cir. 2011)............................................................................................7, 20
`
`Burns v. Hale & Dorr LLP,
`242 F.R.D. 170 (D. Mass. 2007) ................................................................................................4
`
`Charest v. Fannie Mae,
`9 F. Supp. 3d 114 (D. Mass. 2014) .........................................................................................11
`
`Clorox Co. v. Proctor & Gamble Commercial Co.,
`228 F.3d 24 (1st Cir. 2000) ......................................................................................................11
`
`Delano Farms Co. v. Cal. Table Grape Comm’n,
`655 F.3d 1337 (Fed. Cir. 2011)..................................................................................................6
`
`Eisai Co., Ltd. v. Dr. Reddy’s Laboratories, Ltd.,
`No. 03 Civ. 9053(GEL), 2007 WL 1437834 (S.D.N.Y. May 14, 2007) .................5, 14, 15, 18
`
`Eli Lilly & Co. v. Teva Parenteral Meds., Inc.,
`845 F.3d 1357 (Fed. Cir. 2017)................................................................................................14
`
`ESCO Corp. v. Cashman Equip. Co.,
`158 F. Supp. 3d 1051 (D. Nev. 2016) ................................................................................16, 20
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)..................................................................................5, 9, 12, 16
`
`Federico v. Town of Rowley,
`Civil Action No. 15-12360-FDS, 2016 U.S. Dist. LEXIS 169228 (D. Mass. Dec. 7, 2016) ....4
`
`ii
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`

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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 4 of 28
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`Glob. Tech LED, Ltd. Liab. Co. v. HiLumz Int’l Corp.,
`No. 2:15-cv-553-FtM-29CM, 2017 U.S. Dist. LEXIS 20512 (M.D. Fla. Feb. 14, 2017) .......19
`
`Helget v. Fitbit, Inc.,
`Case No. 21-mc-91150-FDS, Dkt. 2 (D. Mass. Feb. 19, 2021) .................................................2
`
`Helget v. Fitbit, Inc.,
`Case No. 21-mc-91150-FDS, Dkt. 3-1 (D. Mass. Feb. 19, 2021) .........................................2, 8
`
`Helget v. Fitbit, Inc.,
`Case No. 21-mc-91150-FDS, Dkt. 3-2 (D. Mass. Feb. 19, 2021) ............................................8
`
`Helget v. Fitbit, Inc.,
`Case No. 21-mc-91150-FDS, Dkt. 20 (D. Mass. Mar. 1, 2021) ................................................3
`
`Helget v. Fitbit, Inc.,
`Case No. 21-mc-91150-FDS, Dkt. 21-2 (D. Mass. Mar. 1, 2021) ............................................9
`
`Helget v. Fitbit, Inc.,
`Case No. 21-mc-91150-FDS, Dkt. 25 (D. Mass. Mar. 5, 2021) ...................................2, 3, 8, 9
`
`Helget v. Fitbit, Inc.,
`Case No. 21-mc-91150-FDS, Dkt. 48 (D. Mass. May 3, 2021) ...........................................3, 9
`
`IBM v. Priceline Grp., Inc.,
`Civil Action No. 15-137-LPS-CJB, 2017 U.S. Dist. LEXIS 54285 (D. Del. Apr. 10, 2017) .13
`
`Lifeguard Licensing Corp. v. Kozak,
`No. 15 Civ. 8459 (LGS)(JCF), 2016 WL 3144049 (S.D.N.Y. May 23, 2016) .........................8
`
`Mycone Dental Supply Co. v. Creative Nail Design, Inc.,
`Civil Action No. 11-4380, 2013 U.S. Dist. LEXIS 88652 (D.N.J. June 24, 2013) .............7, 20
`
`O’Connell v. Hyatt Hotels,
`357 F.3d 152 (1st Cir. 2004) ......................................................................................................4
`
`PetEdge, Inc. v. Fortress Secure Solutions, LLC,
`Civil Action No. 15-11988-FDS, 2016 U.S. Dist. LEXIS 12201 (D. Mass. Feb. 2, 2016) ...5, 6
`
`Pfizer, Inc. v. Teva Pharm. USA, Inc.,
`803 F. Supp. 2d 409 (E.D. Va. 2011) ........................................................................................6
`
`SAP Am., Inc. v. Purple Leaf, Inc.,
`No. C 11-4601 PJH, 2012 U.S. Dist. LEXIS 83531 (N.D. Cal. June 15, 2012)......................13
`
`Scripps Clinic v. Genentech,
`927 F.2d 1565 (Fed. Cir. 1991)..................................................................................................5
`
`iii
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 5 of 28
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`Therasense, Inc. v. Becton, Dickinson and Co.,
`649 F.3d 1276 (Fed. Cir. 2011)........................................................................................ passim
`
`UFCW v. Novartis Pharm. Corp.,
`C.A. No. 15-cv-12732, 2017 U.S. Dist. LEXIS 102389 (D. Mass. June 30, 2017) ................10
`
`Vaughan Co. v. Glob. Bio-Fuels Tech., LLC,
`No. 1:12-CV-1292, 2013 U.S. Dist. LEXIS 152068 (N.D.N.Y. Oct. 23, 2013) .....................16
`
`XpertUniverse, Inc. v. Cisco Sys., Inc.,
`868 F. Supp. 2d 376 (D. Del. 2012) .........................................................................................13
`
`Statutes
`
`35 U.S.C. § 101 ..............................................................................................................................13
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`Other Authorities
`
`Fed. R. Civ. P. 9 ..................................................................................................................... passim
`
`Fed. R. Civ. P. 12 .....................................................................................................................4, 8, 9
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`Fed. R. Civ. P. 16 .............................................................................................................................4
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`
`
`iv
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 6 of 28
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`Plaintiff Philips North America LLC (“Philips”) respectfully submits this Memorandum in
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`support of its Motion to Strike Fitbit’s newly minted Inequitable Conduct Defense in regards to
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`U.S. Pat. No. 7,088,233 (“the ’233 Patent”), which Fitbit waived by not raising earlier in the case,
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`and which Fitbit has failed to support with plausible pleadings—despite this defense being
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`described as “an absolute plague” on the patent system. Therasense, Inc. v. Becton, Dickinson and
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`Co., 649 F.3d 1276, 1289 (Fed. Cir. 2011). Specifically, Philips seeks to strike Fitbit’s Sixth
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`Affirmative Defense in its entirety and those portions of Fitbit’s Third Affirmative Defense that
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`similarly assert that Philips’s claims are barred in whole or in part due to inequitable conduct.
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`I.
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`BACKGROUND
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`On July 22, 2019, Philips North America LLC (“Philips”) filed a patent infringement case
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`against Fitbit in the District Court of the District of Massachusetts asserting that Fitbit infringes a
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`number of U.S. Patents, including the ’233 patent. (Dkt. 1.) Philips’s patents are directed to
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`various health, wellness, and fitness monitoring technologies, and Philips accuses various Fitbit
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`activity tracker and smart watch products of infringement.
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`On November 13, 2019, Fitbit filed a Motion to Dismiss the complaint, which it renewed
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`on December 10, 2019, after Philips filed a First Amended Complaint (Dkt. 25). (Dkts. 19, 33.)1
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`Despite the pending Motion—and despite Fitbit’s best efforts to refuse discovery and derail the
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`case schedule pending resolution of its Motion to Dismiss—the Court entered a schedule on March
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`25, 2020 (Dkt. 54). That scheduling order provided that “except for good cause shown, no motions
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`seeking leave to add new parties or to amend the pleadings to assert new claims or defenses may
`
`
`1 On September 2, 2020, while the Motion to Dismiss was still pending, Philips sought leave to
`file a Second Amendment Complaint, in which Philips withdrew the ’958 patent. (Dkt. 100.)
`The Court granted Philips’s motion for leave the next day, and Philips promptly filed its Second
`Amended Complaint. (Dkt. 106; see also Dkt. 112.) On August 10, 2021, the Court issued an
`order denying the Motion to Dismiss. (Dkt. 219.)
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`1
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 7 of 28
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`be filed after March 24, 2020.” (See Dkt. 54 at 3.) The case then proceeded, with the original fact
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`discovery period closing in October 14, 2020. Fitbit’s inequitable conduct arguments are all
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`premised on the publicly available prosecution history of the ’233 Patent and the arguments could
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`have been raised in a pleading from the onset of this case—but Fitbit chose not to raise the issue.
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`While its Motion to Dismiss was pending, Fitbit never filed an answer to any of the
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`operative complaints, choosing to forego any inequitable conduct pleading, and thereby limiting
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`the scope of fact discovery in this case—which closed long ago. Nonetheless, on February 4,
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`2021—weeks before discovery was set to close—Fitbit improperly issued a subpoena to Attorney
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`Gerald Helget, who was involved with the prosecution of the ’233 patent, on the purported basis
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`that such discovery was relevant to a never-pled inequitable conduct defense. See Helget v. Fitbit,
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`Inc., Case No. 21-mc-91150-FDS, Dkt. 3-1 (D. Mass. Feb. 19, 2021). This belated subpoena was
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`the very first time that Fitbit ever made any allegation of inequitable conduct in this case. The
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`subpoena commanded Mr. Helget to provide deposition testimony and produce documents related
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`to the prosecution of the ’233 patent and an unasserted (and disclaimed) patent, U.S. Patent No.
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`7,138,902 (“the ’902 patent”). (Id.) Mr. Helget promptly moved to quash the deposition portion
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`of the subpoena on February 19, 2021, citing a variety of grounds, including that such discovery
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`was improper in a matter where Fitbit had chosen not to plead (indeed, never even attempted to
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`plead) inequitable conduct.2 Helget v. Fitbit, Inc., Case No. 21-mc-91150-FDS, Dkt. 2 at 5-7 (D.
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`Mass. Feb. 19, 2021).
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`2 Although the Motion to Quash was originally filed in the District of Minnesota, where Mr.
`Helget resides, the motion was subsequently transferred to the District of Massachusetts, where
`the subpoena was quashed. Helget v. Fitbit, Inc., Case No. 21-mc-91150-FDS, Dkt. 25 (D.
`Mass. Mar. 5, 2021).
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`2
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 8 of 28
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`Apparently recognizing the deficiency in serving a subpoena premised on an inequitable
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`conduct defense that Fitbit had never plead, Fitbit’s Opposition to Mr. Helget’s Motion to Quash
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`focused on a supplemental interrogatory response served on February 26, 2021—well after the
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`service of the Subpoena to Mr. Helget. See generally Helget v. Fitbit, Inc., Case No. 21-mc-91150-
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`FDS, Dkt. 20 (D. Mass. Mar. 1, 2021). This belated supplemental response was based entirely on
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`the publicly available prosecution history of the ’233 Patent and related patents, and was made in
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`response to Interrogatory No. 1, which Philips originally served on January 10, 2020—more than
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`a full year prior to the service of the supplement at the end of fact discovery.
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`Ultimately, Fitbit’s attempt to circumvent the heightened pleading requirement for an
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`inequitable conduct defense by seeking discovery on the claim while never having pled it failed
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`and the subpoena was quashed by this court. See Helget v. Fitbit, Inc., Case No. 21-mc-91150-
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`FDS, Dkt. 48 (D. Mass. May 3, 2021). In doing so, the Court noted that a “deposition should only
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`occur after Fitbit has followed the proper procedure. Its inequitable conduct allegations should be
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`set forth in a responsive pleading, not just an interrogatory answer, and be subject to the scrutiny
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`of Rule 9(b).” Id. at 5. Even after receiving this order in May, Fitbit still did not even attempt to
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`plead inequitable conduct.
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`Fitbit could have served a pleading alleging inequitable conduct at any time before the
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`close of fact discovery without prejudice to its pending Motion to Dismiss. Indeed, if Fitbit truly
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`believed in the merits of such a defense, and wanted to preserve the ability to take additional fact
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`discovery on it, that is what one would have expected Fitbit to do. Instead, Fitbit waited until
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`August 24, 2021—well after the close of fact discovery and weeks before the deadline to exchange
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`expert reports. During the meet and confer process for this motion, Fitbit suggested that all expert
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`reports should be further delayed until the propriety of Fitbit’s inequitable conduct pleading is
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`3
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 9 of 28
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`resolved, suggesting that at least one goal with respect to the timing of Fitbit’s pleading was pretext
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`for further delay in this case. Fitbit has responded that it was innocently serving its pleading within
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`the deadline to do so under the rules, but it is undisputed that Fitbit could have pled inequitable
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`conduct at any time and chose not to. There is no reason to further delay this case, particularly
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`where Fitbit’s specious inequitable conduct allegations do not withstand scrutiny under Fed. R.
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`Civ. P. 9.
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`As described in further detail below, Fitbit’s inequitable conduct pleadings are insufficient
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`to survive this motion, are implausible, do not comport with the heightened pleadings requirements
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`of Fed. Rule Civ. P. 9(b), and should be stricken pursuant to Rule 12(f) of the Federal Rules of
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`Civil Procedure.
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`II.
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`LEGAL STANDARDS
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`Generally, a party must establish “good cause” under Rule 16(b) to modify the deadlines
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`set forth in a scheduling order, including when it seeks to add a defense after the date provided for
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`in such an order. See Burns v. Hale & Dorr LLP, 242 F.R.D. 170, 174 (D. Mass. 2007); Federico
`
`v. Town of Rowley, Civil Action No. 15-12360-FDS, 2016 U.S. Dist. LEXIS 169228, at *4 (D.
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`Mass. Dec. 7, 2016). “[T]he rationale is that application of the ‘good cause’ standard preserves
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`the integrity and effectiveness of Rule 16(b) scheduling orders.” O’Connell v. Hyatt Hotels, 357
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`F.3d 152, 155 (1st Cir. 2004). Accordingly, particularly where a long and unexplained delay
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`demonstrates a lack of diligence, courts frequently find that a party’s untimely raised claims or
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`defenses are waived. Id. at 155-56; Federico, 2016 U.S. Dist. LEXIS 169228 at *5-6.
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`Recognizing that its inequitable conduct defense would be subject to pleading scrutiny by
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`this court, Fitbit recast its defense from a typical counterclaim subject to gatekeeping under Rule
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`12(b)(6) to an affirmative defense subject to gatekeeping under Rule 12(f). In either event,
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`“‘inequitable conduct, while a broader concept than fraud, must be pled with particularity’ under
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`4
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 10 of 28
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`Rule 9(b).” PetEdge, Inc. v. Fortress Secure Solutions, LLC, Civil Action No. 15-11988-FDS,
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`2016 U.S. Dist. LEXIS 12201, at *7 (D. Mass. Feb. 2, 2016) (quoting Ferguson Beauregard/Logic
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`Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1344 (Fed. Cir. 2003)).3 To
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`meet these pleading requirements, the defendant must “identify the specific who, what, when,
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`where and how of the material misrepresentation or omission committed before the PTO.”
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`Exergen, 575 F.3d at 1328. Moreover, “a pleading of inequitable conduct under Rule 9(b) must
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`include sufficient allegations of underlying facts from which a court may reasonably infer that a
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`specific individual (1) knew of the withheld material information or of the falsity of the material
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`misrepresentation, and (2) withheld or misrepresented this information with a specific intent to
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`deceive the PTO.” Id. at 1328-29.
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`The Federal Circuit has stated that: “[w]hen a reference was before the examiner, whether
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`through the examiner’s search or the applicant’s disclosure, it can not be deemed to have been
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`withheld from the examiner.” Scripps Clinic v. Genentech, 927 F.2d 1565, 1582 (Fed. Cir. 1991),
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`overruled in part on other grounds, Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009).
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`Even if the two applications were not before the same examiner, courts have noted that
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`“provisional double patenting rejections are withdrawn when one co-pending application is ready
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`for allowance.” Eisai Co., Ltd. v. Dr. Reddy’s Laboratories, Ltd., No. 03 Civ. 9053(GEL), 2007
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`WL 1437834, at *22 (S.D.N.Y. May 14, 2007), aff’d, 533 F.3d 1353 (Fed. Cir. 2008)
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`Importantly, the heightened pleadings require “specific intent to deceive” which simply
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`cannot be shown when the information is before the very same examiner. The simple truth is that
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`you can’t withhold from the examiner something that is before the examiner. As Your Honor
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`3 The sufficiency of a pleading alleging inequitable conduct is assessed under the law of the
`Federal Circuit. PetEdge, 2016 U.S. Dist. LEXIS 12201 at *4 (citing Exergen Corp. v. Wal-
`Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009)).
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`5
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 11 of 28
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`observed in PetEdge, “[t]he [Federal Circuit] [has] tightened the inequitable conduct [pleading]
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`standard to ensure that the defense is sustained only in egregious circumstances and to discourage
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`parties from using it as a mere litigation tactic in garden-variety cases.” 2016 U.S. Dist. LEXIS
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`12201 at *7 (quoting Lexington Luminance LLC v. Osram Sylvania Inc., 972 F. Supp. 2d 88, 91
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`(D. Mass. 2013)).
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`An inequitable conduct defense requires that the patent owner “misrepresented or omitted
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`material information with the specific intent to deceive the PTO.” Therasense, 649 F.3d at 1288.
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`The Federal Circuit heightened the standards for showing both materiality and specific intent are
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`based on its finding that, “[l]eft unfettered, the inequitable conduct doctrine has plagued not only
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`the courts but also the entire patent system . . . [b]ecause allegations of inequitable conduct are
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`routinely brought on ‘the slenderest grounds.’” Id. at 1289 (internal citations omitted). Therasense
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`sought to curb this trend. Accordingly, the defendant cannot prove inequitable conduct without
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`showing “but-for” materiality, i.e., that the “PTO would not have allowed a claim had it been
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`aware of the undisclosed prior art.” Id. at 1291. Likewise, specific intent requires a showing that
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`a specific intent to deceive the PTO is the “single most reasonable inference able to be drawn from
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`the evidence.” Id. at 1290.
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`To overcome a motion to dismiss or to strike, a pleading alleging inequitable conduct “must
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`make an initial showing from which it may be plausibly inferred that: (1) the individual knew of
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`the information not disclosed; (2) the information not disclosed was but-for material to the
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`prosecution of the patent; and (3) the intent to deceive is the single most likely explanation for the
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`non-disclosure.” Pfizer, Inc. v. Teva Pharm. USA, Inc., 803 F. Supp. 2d 409, 432 (E.D. Va. 2011)
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`(emphasis in original); Delano Farms Co. v. Cal. Table Grape Comm’n, 655 F.3d 1337, 1350
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`(Fed. Cir. 2011) (“A charge of inequitable conduct based on a failure to disclose will survive a
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`6
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`

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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 12 of 28
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`motion to dismiss only if the [pleading] recites facts from which the court may reasonably infer
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`that a specific individual both knew of invalidating information that was withheld from the PTO
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`and withheld that information with a specific intent to deceive the PTO.”).
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`The Therasense standard is purposely difficult to meet. As the Federal Circuit explained,
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`its previous “low standards for intent and materiality ha[d] inadvertently led to many unintended
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`consequences, among them, increased adjudication cost and complexity, reduced likelihood of
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`settlement, burdened courts, strained PTO resources, increased PTO backlog, and impaired patent
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`quality.” Therasense, 649 F.3d at 1290. The adoption of the stricter requirements set forth in
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`Therasense was necessary to “redirect a doctrine that has been overused to the detriment of the
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`public.” Id. Federal Circuit precedent such as In re BP Lubricants, 637 F.3d 1307, 1310 (Fed.
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`Cir. 2011): “Rule 9(b) prevents . . . using discovery as a fishing expedition.” This rationale is
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`relevant not only to the ultimate burden of proof for inequitable conduct but also to the
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`requirements for pleading such allegations. Mycone Dental Supply Co. v. Creative Nail Design,
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`Inc., Civil Action No. 11-4380 (JBS-KMW), 2013 U.S. Dist. LEXIS 88652, at *19-20 (D.N.J.
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`June 24, 2013) (“While Therasense involved a district court’s finding of inequitable conduct after
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`a bench trial, many of the concerns that the Federal Circuit raised in that case apply to the pleading
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`stage. . . . The Federal Circuit’s concerns included the impact of loosely pled inequitable conduct
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`claims on the litigation process, particularly during discovery and settlement negotiations. These
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`concerns necessarily involve the pleading stage because otherwise a claim of inequitable conduct
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`that is insufficiently pled will open the door to intrusive and time-consuming discovery and will
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`color settlement negotiations in a manner than is unfair to the patentee and clogs the litigation.”).
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`III. ARGUMENT
`Fitbit’s inequitable conduct allegations arose far too late in this case without even an
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`attempt to demonstrate good cause and, regardless, are rife with inaccuracies and are facially
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`7
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`

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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 13 of 28
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`implausible to substantiate a claim of inequitable conduct. Accordingly, these allegations, and any
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`Fitbit defense based on them, should be stricken pursuant to Rule 12(f).
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`Fitbit’s Delay and Untimeliness of Inequitable Conduct Defense
`A.
`First, Fitbit has been far from diligent in its efforts to plead inequitable conduct at the 11th
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`hour and as pretext for continued delay of this case. This Court’s Scheduling Order (Dkt. 54)
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`provides that, “[e]xcept for good cause shown, no motions seeking leave . . . to amend the pleadings
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`to assert new claims or defenses may be filed after March 24, 2020.” Despite being able to do so,
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`Fitbit did not file an Answer raising its inequitable conduct claim before that date. See Lifeguard
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`Licensing Corp. v. Kozak, No. 15 Civ. 8459 (LGS)(JCF), 2016 WL 3144049, at *3 (S.D.N.Y. May
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`23, 2016) (“Whatever their strategic reasons for moving to dismiss before answering, nothing
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`precluded the defendants from filing an answer together with their motion to dismiss, asserting
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`any available defenses, and thereby providing the predicate for the discovery they seek.”).
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`Nor did Fitbit seek to add inequitable conduct allegations to this case at any point during
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`discovery.4 Notably, Fitbit opted not to formally plead inequitable conduct in this case despite the
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`fact that it knew it wanted to obtain discovery regarding the very issues now set forth in its Answer.
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`Weeks before the then-close of fact discovery, Fitbit issued a subpoena to Mr. Helget, an attorney
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`involved in the prosecution of the ’233 patent and the ’902 patent, on the purported basis that such
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`discovery was relevant to a never-pled inequitable conduct defense. See Helget v. Fitbit, Inc., Case
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`No. 21-mc-91150-FDS, Dkt. 3-1 (D. Mass. Feb. 19, 2021). Then, with less than six weeks left in
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`fact discovery, Fitbit for the first time mentioned inequitable conduct in an amended interrogatory
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`response. Helget v. Fitbit, Inc., Case No. 21-mc-91150-FDS, Dkt. 3-2 at 12 (D. Mass. Feb. 19,
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`2021). These allegations (as well as those in a subsequent supplementation served after the Motion
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`4 Fact discovery opened on January 10, 2020, and closed on March 23, 2021 – a span of more
`than 14 months.
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`8
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 14 of 28
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`to Quash that is substantively the same as the allegations in its new Answer) were based entirely
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`on the public file histories for the ’223 patent and the ’902 patent. See id.; Helget v. Fitbit, Inc.,
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`Case No. 21-mc-91150-FDS, Dkt. 21-2 (D. Mass. Mar. 1, 2021). Fitbit never sought to formally
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`plead these allegations before the close of discovery.
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`Finally, even when this Court granted Mr. Helget’s motion to quash Fitbit’s subpoena on
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`the basis that inequitable conduct was not in the case, Helget v. Fitbit, Inc., Case No. 21-mc-91150-
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`FDS, Dkt. 48 at 4-5 (D. Mass. May 3, 2021), Fitbit still did not attempt to plead inequitable
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`conduct. Instead, it waited until August 24, 2021 – the last possible date permitted by Rule
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`12(a)(4)(A) after the Court denied its Motion to Dismiss.5 (See Dkt. 219; Dkt. 224.) Under these
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`circumstances, Fitbit’s inequitable conduct pleading—which amounts to raising a new defense
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`well after the scheduling order’s deadline for doing so—should be dismissed as there is no
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`conceivable good cause to allow it.
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`Fitbit’s Inequitable Conduct “Facts” Are Demonstrably False
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`B.
`Fitbit’s misguided inequitable conduct allegations rely on the implausible suggestion that
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`different patent examiners were responsible for the prosecution of the ’902 patent and the ’233
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`patent, such that it would have been conceivably possible for the applicant to hide the existence of
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`the ’902 application from the examiner handling the ’233 application. (See Dkt. 224, Affirmative
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`Defenses at ¶¶ 27-29.) But, Iqbal/Twombly and Exergen demonstrate that when an examiner
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`handles both applications, it is implausible to assert that the examiner was misled or that the patent
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`owner had a single intent of misleading the examiner to not know about an application that the
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`examiner was handling. Here, the prosecution history and the patents themselves which are part
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`
`5 Of note, while Fitbit did not serve a pleading before the March 24, 2020 deadline in the
`scheduling order to raise new defenses, Fitbit had disclosed a litany of defenses in accordance
`with its L.R. 16.6 disclosures which—notably—failed to ever mention inequitable conduct.
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`9
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 15 of 28
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`of the pleadings upon which the Court may take judicial notice6, demonstrates that such Fitbit’s
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`false assertions are implausible in light of the incontrovertible record that a single examiner—
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`Mr. Daryl Pope—handled prosecution of both the ’902 patent and the ’233 patent.
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`(Declaration of Ruben J. Rodrigues (“Rodrigues Decl.”), Ex. A at Cover; Dkt. 1-2 at Cover.)
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`More than a year before the issuance of the ’233 patent in August of 2006—Daryl Pope
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`conducted a search of prior art for the ’902 patent:
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`
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`(Rodrigues Decl., Ex. B (highlighted).) Examiner Pope then issued an office action on March 28,
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`2005 rejecting the claims on the basis of double patenting in view of U.S. Patent No. 6,759,956,
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`
`
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`6 “[B]ecause documents in the patent’s prosecution history are public records, the Court may
`take judicial notice of their contents. UFCW v. Novartis Pharm. Corp., C.A. No. 15-cv-12732,
`2017 U.S. Dist. LEXIS 102389, at *11 n.5 (D. Mass. June 30, 2017) (citing Beddall v. State St.
`Bank & Trust Co., 137 F.3d 12, 16-17 (1st Cir. 1998)).
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`10
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 16 of 28
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`which is a parent to both the ’233 and ’902 patents, and is yet another patent for which Mr. Pope
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`was the examiner. (Id., Ex. C.) Shortly after the time that Mr. Pope prepared his double patenting
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`rejection of the ’902 application, Examiner Pope also issued a Notice of Abandonment in the ’233
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`patent on May 4, 2005. (Id., Ex. D.) Mr. Pope then went on to allow the claims in the ’902 patent
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`on June 12, 2006 and 11 days later entered a final amendment in the ’233 patent on June 23, 2006.
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`(See id., Exs. E and F.) The intrinsic record which is subject to judicial notice fails to suggest that
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`any examiner besides Mr. Pope was responsible for the prosecution of ’902 application. Fitbit’s
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`attorney suggestion otherwise is not supported by the intrinsic record and is implausible.7
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`Fitbit’s allegations to the contrary are error at best and purposefully misleading at worst.
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`In particular, Fitbit suggests that a different administrative employee of the Patent Office, Mr.
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`Winston Alvarado, was responsible for the prosecution of the ’902 Patent because initial
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`correspondence in that application came from him. (See Dkt. 224, Affirmative Defenses at ¶ 27
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`(citing Fitbit_19-11586_00083422 at Fitbit_19-11586_00083422 at 83545-46, 83552-53)). This
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`is simply incorrect and relies on a misrepresentation practice before the patent office. As Fitbit is
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`undoubtedly aware, initial communications involving intake at the USPTO would not come from
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`an examiner. Indeed, the record reflects that Mr. Alvarado was a paralegal with the USPTO’s
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`
`7 “[I]t is well-established that in reviewing the complaint, [the court] ‘may properly consider the
`relevant entirety of a document integral to or explicitly relied upon in the complaint, even though
`not attached to the complaint, without converting the motion into one for summary judgment.’”
`Clorox Co. v. Proctor & Gamble Commercial Co., 228 F.3d 24, 32 (1st Cir. 2000) (quoting
`Shaw v. Digital Equip. Corp., 82 F.3d 1194, 1220 (1st Cir. 1996)). Here, although Fitbit failed
`to attach any of the referenced documents to its Answer, it relies (directly or indirectly) on the
`various exhibits discussed herein. As such, these documents are part of the record for purposes
`of assessing the sufficiency of the pleading. To the extent that certain allegations in Fitbit’s
`pleadings are contradicted by the actual contents of the exhibits, these allegations should be
`disregarded. See Charest v. Fannie Mae, 9 F. Supp. 3d 114, 118-19 (D. Mass. 2014) (“In the
`event ‘a written instrument contradicts allegations in the complaint to which it is attached, the
`exhibit trumps the allegations.’”) (quoting Clorox, 228 F.3d at 32.)
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`11
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`Case 1:19-cv-11586-FDS Document 237 Filed 09/14/21 Page 17 of 28
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`receiving office – not the examiner responsible for the application, as demonstrated in the below
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`intake worksheet from the prosecution history of the ’902 patent:
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`
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`(See Rodrigues Decl., Ex. G.) Fitbit’s insinuation that Mr. Alvarado was a patent examiner whose
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`role was only later “taken over” by Daryl Pope—the critical prerequisite to Fitbit’s conspiratorial
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`pleading—is simply unsupported by the very prosecution history that Fitbit cites to. (See Dkt 224,
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`Affirmative Defenses at ¶ 29.)
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`Fitbit’s Pleading of Materiality Fails as