Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 1 of 27
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`Plaintiff,
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`Civil Action No. 1:19-cv-11586-FDS
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`v.
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`FITBIT LLC,
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`Defendant.
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`FITBIT’S OPPOSITION TO PHILIPS’S
`MOTION TO STRIKE FITBIT’S INEQUITABLE CONDUCT DEFENSE
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 2 of 27
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`TABLE OF CONTENTS
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`Page
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`FACTUAL BACKGROUND ..........................................................................................................1
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`LEGAL STANDARD ......................................................................................................................3
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`ARGUMENT ...................................................................................................................................5
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`I.
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`FITBIT’S INEQUITABLE CONDUCT PLEADING WAS TIMELY FILED. .................5
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`1.
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`2.
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`3.
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`The Scheduling Order Does Not Preclude Fitbit’s Answer. ....................................5
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`Fitbit Timely Answered Under Rule 12—The Applicable Rule. ............................6
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`Fitbit Did Not “Omit” Inequitable Conduct From Its L.R. 16.6
`Disclosures. ..............................................................................................................7
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`II.
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`FITBIT’S INEQUITABLE CONDUCT PLEADING SATISFIES RULE 9(B). ...............7
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`1.
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`2.
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`3.
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`4.
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`Mr. Helget Had an Affirmative Duty to Disclose the Co-pending ’902
`Application When Prosecuting the ’233 Patent. ......................................................8
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`The ’233 Patent Claims Would Not Have Issued But For Mr. Helget’s
`Failure to Disclose the Co-Pending ’902 Application. ..........................................12
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`Fitbit’s Inequitable Conduct Pleading Permits a Reasonable Inference That
`Mr. Helget Intended to Deceive the Patent Office. ................................................16
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`The ’233 Patent Is Unenforceable Due to Mr. Helget’s Inequitable
`Conduct Prosecuting the ’902 Patent .....................................................................19
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`CONCLUSION ..............................................................................................................................20
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 3 of 27
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Akron Polymer Container Corp. v. Exxel Container, Inc.,
`148 F.3d 1380 (Fed. Cir. 1998)......................................................................................... 10
`
`Allflex USA, Inc. v. Avid Identification Sys., Inc.,
`704 F.3d 1362 (Fed. Cir. 2013)........................................................................................... 7
`
`Am. Hoist & Derrick Co. v. Sowa & Sons, Inc.,
`725 F.2d 1350 (Fed. Cir. 1984)......................................................................................... 11
`
`Armour & Co. v. Swift & Co.,
`466 F.2d 767 (7th Cir. 1972) .............................................................................................. 9
`
`Bennet v. Spoor Behrins Campbell & Young, Inc.,
`124 F.R.D. 562 (S.D.N.Y. 1989) ........................................................................................ 4
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`Bio-Vita, Ltd. v. Rausch,
`759 F. Supp. 33 (D. Mass. 1991) ........................................................................................ 4
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`Camey v. Force Factor, LLC,
`No. CV 14-14717-RWZ, 2016 WL 10998440 (D. Mass. May 16, 2016) .......................... 5
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`Cave Consulting Grp., Inc. v. Optuminsight, Inc.,
`No. 15-CV-03424-JCS, 2016 WL 1611042 (N.D. Cal. Apr. 22, 2016) ............................. 4
`
`Consol. Aluminum Corp. v. Foseco Int’l Ltd.,
`910 F.2d 804 (Fed. Cir. 1990)........................................................................................... 20
`
`Dayco Prod., Inc. v. Total Containment, Inc.,
`329 F.3d 1358 (Fed. Cir. 2003)......................................................................................... 10
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`Eisai Co., Ltd. v. Dr. Reddy’s Laboratories, Ltd.,
`No. 03 CIV. 9053 (GEL), 2007 WL 1437834 (S.D.N.Y. May 14, 2007) ........................ 15
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`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009).................................................................................. passim
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`Fitbit LLC v. Koninklijke Philips N.V. et al.,
`Case No. 1:20-cv-11613-WGY (D. Mass. 2020) ............................................................... 7
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`Gamble v. Boyd Gaming Corp.,
`No. 2:13-CV-01009-JCM, 2014 WL 1331034 (D. Nev. Apr. 1, 2014) ............................. 6
`
`Golden Valley Microwave Foods, Inc. v. Weaver Popcorn Co.,
`837 F. Supp. 1444 (N.D. Ind. 1992), aff’d, 11 F.3d 1072 (Fed. Cir. 1993) ...................... 14
`ii
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 4 of 27
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`Guardant Health, Inc. v. Found. Med., Inc.,
`No. CV 17-1616-LPS-CJB, 2020 WL 2477522 (D. Del. Jan. 7, 2020) ........................... 20
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`Harris Corp. v. Fed. Exp. Corp.,
`No. 6:07-CV-1819-ORL, 2010 WL 2639564 (M.D. Fla. June 29, 2010) .......................... 9
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`Helget v. Fitbit, Inc.,
`Case No. 21-mc-91150-FDS (D. Mass. Feb. 15, 2021) ...................................................... 3
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`Honeywell Consumer Prods., Inc. v. Windmere Corp.,
`993 F. Supp. 22 (D. Mass. 1998) ........................................................................................ 4
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`In re Clark,
`522 F.2d 623 (C.C.P.A.1975) ........................................................................................... 14
`
`In re Mott,
`539 F.2d 1291, 190 USPQ 536 (CCPA 1976) .................................................................. 11
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`Leviton Mfg. Co., Inc. v. Universal Sec. Instruments, Inc.,
`606 F.3d 1353 (Fed. Cir. 2010)......................................................................................... 13
`
`Lu v. Davis,
`No. CV 19-11968-PBS, 2020 WL 7408278 (D. Mass. Nov. 2, 2020), report and
`recommendation adopted, No. 1:19-CV-11968, 2020 WL 8026733 (D. Mass.
`Nov. 24, 2020) .................................................................................................................... 6
`
`McIntosh v. Loc. Union 33, United Roofers, Waterproofers & Allied Workers,
`No. CIV.A. 12-11815-NMG, 2013 WL 5295687 (D. Mass. July 22, 2013) ...................... 6
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`McKesson Info. Sols., Inc. v. Bridge Med., Inc.,
`487 F.3d 897 (Fed. Cir. 2007)............................................................................................. 9
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`Petedge, Inc. v. Fortress Secure Sols., LLC,
`No. CV 15-11988-FDS, 2016 WL 407065 (D. Mass. Feb. 2, 2016) ............................ 4, 17
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`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008)......................................................................................... 11
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`Therasense, Inc. v. Becton, Dickinson & Co.,
`649 F.3d 1276 (Fed. Cir. 2011).................................................................................. passim
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`STATUTES
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`35 U.S.C. § 101 ..................................................................................................................... 2, 7, 13
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`35 U.S.C. § 102 ............................................................................................................................... 7
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`35 U.S.C. § 103 ............................................................................................................................... 7
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 5 of 27
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`35 U.S.C. § 112 ............................................................................................................................... 7
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`RULES
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`Fed R. Civ. P. 12(f) ......................................................................................................................... 4
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`Fed. R. Civ. P. 12 ................................................................................................................ 3, 5, 6, 7
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`Fed. R. Civ. P. 12(a)(4)(A) ......................................................................................................... 2, 6
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`Fed. R. Civ. P. 12(b)(6)............................................................................................................... 2, 7
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`Fed. R. Civ. P. 12(f) ........................................................................................................................ 4
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`Fed. R. Civ. P. 9 ............................................................................................................................ 18
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`Fed. R. Civ. P. 9(b) ........................................................................................................... 1, 4, 7, 18
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`Local Rule 16.6(d)(4)...................................................................................................................... 7
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`REGULATIONS
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`37 C.F.R. § 1.56 ........................................................................................................................ 9, 10
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`37 C.F.R. § 1.56(a).......................................................................................................................... 9
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 6 of 27
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`Philips’s motion to strike Fitbit’s inequitable conduct defense and memorandum in support
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`(D.I. 236; D.I. 237 (“Memo”)) advance multiple arguments for striking Fitbit’s inequitable conduct
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`pleading with respect to U.S. Patent No. 7,088,233 (the “’233 Patent”). None have merit.
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`First, Philips argues that Fitbit’s inequitable conduct pleading is barred by the Scheduling
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`Order. But the Scheduling Order—which places deadlines on pleading amendments but not on
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`the initial pleadings—is irrelevant to the dispute at hand. Magistrate Judge Boal told Philips this
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`months ago, yet Philips persists with this argument. Fitbit filed its Answer to Philips’s Second
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`Amended Complaint (D.I. 224) within the time the Federal Rules allot.
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`Second, the detailed allegations in Fitbit’s Answer—which must be taken as true at this
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`stage—satisfy the Rule 9(b) pleading standards applicable to inequitable conduct. Under those
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`standards, Fitbit’s pleading must plausibly allege that an individual associated with the prosecution
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`of the ’233 Patent failed to disclose material information with the specific intent to deceive the
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`Patent Office. Fitbit’s Answer sets forth 38 paragraphs of detailed factual allegations plausibly
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`establishing each of these elements with respect to at least the prosecuting attorney for the ’233
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`Patent—Mr. Gerald Helget. Fitbit’s allegations specifically address the materiality of the withheld
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`information and the likely reason(s) it was withheld from the Patent Office with intent to deceive.
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`Those allegations permit reasonable inferences of materiality and intent, and therefore of
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`inequitable conduct. That is all that is required at the pleading stage.
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`Nevertheless, Philips asks the Court to strike Fitbit’s inequitable conduct pleading,
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`essentially because Fitbit’s Answer did not conclusively prove, at the pleading stage, that Mr.
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`Helget specifically intended to deceive the Patent Office. The Court should not require proof—
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`rather than plausible allegations—at the pleading stage. Philips’s Motion should be denied.
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`FACTUAL BACKGROUND
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`Philips filed its Complaint on July 22, 2019. (D.I. 1.) Fitbit moved to dismiss under Rule
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`12(b)(6), arguing that all four then-asserted patents were directed to patent-ineligible subject
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`matter under 35 U.S.C. § 101 (D.I. 19 (“Motion to Dismiss”)). In response, Philips filed a First
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`Amended Complaint adding allegations in an attempt to overcome Fitbit’s Motion to Dismiss
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`under § 101. (D.I. 25.) Fitbit renewed its Motion to Dismiss on December 10, 2019. (D.I. 33.)
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`On the eve of the Markman hearing, Philips filed a notice of its intent to withdraw its
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`allegations of infringement of one originally-asserted patent (D.I. 81), thereafter filing a Second
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`Amended Complaint on September 3, 2020. (D.I. 112.) The Court treated Fitbit’s Motion to
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`Dismiss the First Amended Complaint as directed to the Second Amended Complaint. (D.I. 113.)
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`While Fitbit’s Motion to Dismiss was pending, Fitbit had no obligation to answer the
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`Second Amended Complaint. Fed. R. Civ. P. 12(a)(4)(A). The case thereafter proceeded while
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`the Court considered Fitbit’s motion. On February 4, 2021, during fact discovery, Fitbit issued a
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`subpoena to Mr. Gerald Helget, the prosecuting attorney for the ’233 Patent. Fitbit’s subpoena
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`sought documents and testimony related to Mr. Helget’s prosecution of the ’233 Patent and
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`inequitable conduct, an allegation that Fitbit thoroughly explained in a February 26, 2021
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`supplemental contention interrogatory response. (Ex. 1.)
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`Specifically, as set forth in Fitbit’s interrogatory response, Mr. Helget committed
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`inequitable conduct by failing to disclose a co-pending application that ultimately issued as U.S.
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`Patent No. 7,138,902 (the “’902 application”)—which had identical claims to the ’233
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`application—with the specific intent to deceive the PTO. (Id.; see also D.I. 224 at 15-31.) Had
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`Mr. Helget disclosed the ’902 application during prosecution of the ’233 Patent, both the ’233 and
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`’902 application would have received statutory double patenting rejections under 35 U.S.C. § 101,
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`and at least one—if not both—applications would have required claim amendments before
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`issuance. (Ex. 1 at 12-13; 20-23.) Instead, the examiner remained unaware of the statutory double
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`patenting and never issued the required rejections, so both patents issued and improperly remained
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`in force with identical claims for more than a decade. (Id. at 22.) And Philips disclaimed the ’902
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`Patent just three days prior to filing this suit in an effort to avoid the issue. (Id.)
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`Mr. Helget promptly produced documents in response to Fitbit’s subpoena. However, on
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`February 15, 2021, Mr. Helget, represented by the same counsel as Philips, moved to quash Fitbit’s
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`deposition subpoena in the District of Minnesota or transfer the proceedings to this District. See
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`Helget v. Fitbit, Inc., Case No. 21-mc-91150-FDS, D.I. 1 (D. Mass. Feb. 15, 2021) (Helget). Mr.
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`Helget’s motion to quash was based in large part upon the notion that discovery into his inequitable
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`conduct was inappropriate because Fitbit had not yet pleaded inequitable conduct. See Helget,
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`D.I. 2 at 2, 4-7. Mr. Helget’s motion to transfer was granted on March 8, 2021. Id., D.I. 25. Fact
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`discovery in this case closed on March 23, 2021. (D.I. 152.) Following the close of fact discovery,
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`Magistrate Judge Boal granted Mr. Helget’s motion to quash “without prejudice to Fitbit seeking
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`Helget’s deposition once it has pleaded inequitable conduct.” Helget, D.I. 48 at 5.
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`On August 10, 2021, the Court denied Fitbit’s Motion to Dismiss. (D.I. 219.) Fitbit duly
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`answered Philips’s Second Amended Complaint on August 24, as required by Rule 12. (D.I. 224.)
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`Philips now moves to strike Fitbit’s inequitable conduct defense against the ’233 Patent.
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`(See D.I. 224 at 15-31.) Additionally, despite the fact that Fitbit has now pleaded inequitable
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`conduct, Philips confirmed that it will continue to oppose Fitbit taking Mr. Helget’s deposition.
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`LEGAL STANDARD
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`Inequitable conduct requires proof that: (1) an individual associated with the prosecution
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`of a patent application failed to disclose all material information and prior art to the PTO; and (2)
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`knowingly did so with the specific intent to deceive the PTO. Exergen Corp. v. Wal-Mart Stores,
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`Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009); Therasense, Inc. v. Becton, Dickinson & Co., 649
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`F.3d 1276, 1290 (Fed. Cir. 2011). Because inequitable conduct involves allegations of fraud, it is
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`subject to Rule 9(b), which requires the pleading party to state the circumstances constituting fraud
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`with particularity, but permits general allegations of intent. See Fed. R. Civ. P. 9(b); Exergen, 575
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`F.3d at 1318. “[T]o plead the ‘circumstances’ of inequitable conduct with the requisite
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`‘particularity’ under Rule 9(b), the pleading must identify the specific who, what, when, where,
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`and how of the material misrepresentation or omission committed before the PTO.” Id. at 1328.
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`To adequately plead intent, the pleading “must include sufficient allegations of underlying facts
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`from which a court may reasonably infer that a specific individual (1) knew of the withheld
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`material information…and (2) withheld or misrepresented this information with a specific intent
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`to deceive the PTO.” Id. at 1328–29. At the pleading stage, a party’s allegations of inequitable
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`conduct must merely permit a reasonable inference of intent to deceive—the allegations need not,
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`however, require a finding of intent, nor establish that the intent to deceive is the single most
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`reasonable inference. See id. at 1329 n.5; see also Cave Consulting Grp., Inc. v. Optuminsight,
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`Inc., No. 15-CV-03424-JCS, 2016 WL 1611042, at *13 (N.D. Cal. Apr. 22, 2016).
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`While courts may strike insufficiently pleaded defenses, see Fed R. Civ. P. 12(f), motions
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`to strike affirmative defenses for legal insufficiency under Rule 12(f) are not viewed favorably.
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`See Bio-Vita, Ltd. v. Rausch, 759 F. Supp. 33, 39 (D. Mass. 1991) (citing Bennet v. Spoor Behrins
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`Campbell & Young, Inc., 124 F.R.D. 562, 563 (S.D.N.Y. 1989)). Rather, the “general policy is
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`that the pleadings should be treated liberally, and that a party should have the opportunity to
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`support his contentions at trial.” Id. Accordingly, “[s]uch motions should be granted only when
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`it is beyond cavil that the defendant could not prevail on them.” Petedge, Inc. v. Fortress Secure
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`Sols., LLC, No. CV 15-11988-FDS, 2016 WL 407065, at *2 (D. Mass. Feb. 2, 2016) (quoting
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`Honeywell Consumer Prods., Inc. v. Windmere Corp., 993 F. Supp. 22, 24 (D. Mass. 1998)). “To
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`prevail on a motion to strike, a party must show that, even with all reasonable inferences made in
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 10 of 27
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`the [non-moving party]’s favor, the matter to be stricken is clearly legally insufficient.” Camey v.
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`Force Factor, LLC, No. CV 14-14717-RWZ, 2016 WL 10998440, at *2 (D. Mass. May 16, 2016).
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`ARGUMENT
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`I.
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`FITBIT’S INEQUITABLE CONDUCT PLEADING WAS TIMELY FILED.
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`Philips first contends that Fitbit’s inequitable conduct defense should be struck as untimely
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`under this Court’s March 25, 2020 Scheduling Order (D.I. 54). But the plain language of the
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`Scheduling Order makes clear that the deadline Philips seeks to impose is irrelevant to the dispute
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`at hand. Rather, Rule 12 governed the due date for Fitbit’s timely-filed Answer.
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`1.
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`The Scheduling Order Does Not Preclude Fitbit’s Answer.
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`The Scheduling Order provides that “[e]xcept for good cause shown, no motions seeking
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`leave to add new parties or to amend the pleadings to assert new claims or defenses may be filed
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`after March 24, 2020.” (D.I. 54 at 3 (emphasis added).) Thus, by the Order’s express terms, the
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`March 24, 2020 deadline governed motions for leave to amend pleadings, not the filing of a party’s
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`original pleading. Fitbit’s Answer is not a motion for leave to amend a pleading. Rather, it is
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`Fitbit’s first and only responsive pleading—and thus not subject to the Scheduling Order.
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`Indeed, during oral argument on Mr. Helget’s motion to quash Fitbit’s subpoena, counsel
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`for Mr. Helget and Philips raised this very argument, and Magistrate Judge Boal likewise explained
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`the Scheduling Order’s inapplicability to Fitbit’s original pleading. (See Ex. 2 (Hrg. Tr.) at 8:2-
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`13.) It is unclear why Philips repeated in this argument here after Judge Boal explained that it is
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`wrong, but in any event, there is still no basis for Philips’s argument that the March 24, 2020
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`deadline supersedes Rule 12 and governs the deadline for Fitbit’s Answer.
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`But even if the deadline in the Scheduling Order did apply, Philips’s good cause argument
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`fails. Philips concedes that Fitbit subpoenaed Mr. Helget and detailed its inequitable conduct
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`theory in an interrogatory response during fact discovery. (Memo at 2-3.) Further, Philips
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`identifies no prejudice from Fitbit’s decision to answer and plead inequitable conduct after the
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`Court resolved Fitbit’s Motion to Dismiss, as permitted by Rule 12. Indeed, the only remaining
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`discovery necessitated by Fitbit’s inequitable conduct defense is Mr. Helget’s deposition—which
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`Fitbit sought months ago during fact discovery and stands ready to take as soon as practicable.
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`2.
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`Fitbit Timely Answered Under Rule 12—The Applicable Rule.
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`Because the Scheduling Order is inapplicable to this dispute regarding Fitbit’s original
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`pleading, the timing of Fitbit’s Answer is governed by the Federal Rules. See Fed. R. Civ. P.
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`12(a)(4)(A). Rule 12 makes clear that Fitbit’s answer was due fourteen days after the Court denied
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`Fitbit’s Motion to Dismiss (D.I. 219), namely, on August 24, 2021—when Fitbit timely filed. (D.I.
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`224.) Philips concedes that Fitbit’s Answer was filed in compliance with Rule 12. (Memo at 9.)
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`Philips’s accusation that Fitbit waited to file its Answer until August 24, 2021 as a “pretext
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`for continued delay” (Memo at 8) is unfounded and incorrect. Waiting to answer a complaint until
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`a pending motion to dismiss is resolved conserves both Court and party resources. See, e.g.,
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`McIntosh v. Loc. Union 33, United Roofers, Waterproofers & Allied Workers, No. CIV.A. 12-
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`11815-NMG, 2013 WL 5295687, at *5 (D. Mass. July 22, 2013) (“[A] motion to dismiss pursuant
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`to Rule 12 may be filed in lieu of an answer…and if such a motion is filed, the time for answering
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`the complaint is tolled until fourteen days after the court denies the motion.”) (citing Fed. R. Civ.
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`P. 12(a)(4)(A)); see also Lu v. Davis, No. CV 19-11968-PBS, 2020 WL 7408278, at *2 n.4 (D.
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`Mass. Nov. 2, 2020), report and recommendation adopted, No. 1:19-CV-11968, 2020 WL
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`8026733 (D. Mass. Nov. 24, 2020). “The reasons for this rule are obvious and sensible because
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`requiring a defendant to answer some claims concurrently with a pending motion to dismiss would
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`result in unnecessary duplication and waste of time and resources for both parties and the court.”
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`Gamble v. Boyd Gaming Corp., No. 2:13-CV-01009-JCM, 2014 WL 1331034, at *2 (D. Nev. Apr.
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`1, 2014). Moreover, this case was not delayed, but instead continued to progress notwithstanding
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 12 of 27
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`Fitbit filing its Answer last month under Rule 12—in fact, the parties are ready to proceed to expert
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`discovery but for three pending motions; two of which Philips filed. (See D.I. 167, 198, 236.)
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`3.
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`Fitbit Did Not “Omit” Inequitable Conduct From Its L.R. 16.6 Disclosures.
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`Philips argues that inequitable conduct was omitted from Fitbit’s Local Rule 16.6(d)(4)
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`disclosures. (Memo at 9 n.5.) But Local Rule 16.6(d)(4) requires disclosure of invalidity defenses
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`under 35 U.S.C. §§ 101, 102, 103 and 112, not inequitable conduct.1 Philips knows that—it did
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`not list its own inequitable conduct defense in its Local Rule 16.6(d)(4) disclosures in the parallel
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`Fitbit LLC v. Koninklijke Philips N.V. et al. case. Case No. 1:20-cv-11613-WGY (D. Mass.
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`2020).2 There is no basis to strike Fitbit’s inequitable conduct defense as untimely.
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`II.
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`FITBIT’S INEQUITABLE CONDUCT PLEADING SATISFIES RULE 9(B).
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`Fitbit more than adequately pleaded materiality and intent. Exergen and Rule 9(b) require
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`that the pleadings identify the specific who, what, when, where, and how of the material
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`misrepresentation or omission. 575 F.3d at 1328. Fitbit’s pleadings meet this standard: Who: at
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`least Mr. Gerald Helget (D.I. 224 at 16 (¶ 9)). What: failure to disclose the co-pending ’902
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`application and its 57 identical claims to the examiner of the ’233 Patent application (id. at 23 (¶
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`31)). When: during prosecution of the ’233 and 902 Patent applications (id. at 24 (¶¶ 32-33)).
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`Where: at the USPTO before at least Examiner Daryl Pope (id. at 23 (¶ 31)). How: by
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`affirmatively withholding the existence of the related ’902 application and its identical claim set
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`1 Philips’s similar argument that Fitbit “recast” inequitable conduct from counterclaim to
`affirmative defense to avoid Rule 12(b)(6) is also wrong. (Memo at 4.) Inequitable conduct is a
`defense, not a cause of action. Allflex USA, Inc. v. Avid Identification Sys., Inc., 704 F.3d 1362,
`1368 (Fed. Cir. 2013) (“[I]nequitable conduct is a defense or an equitable remedy, not a claim for
`damages, even when it is pleaded as an affirmative claim in a declaratory judgment action.”).
`2 Philips’s complaint that Fitbit pleaded inequitable conduct “despite this defense being described
`as an absolute plague on the patent system” (Memo at 1 (internal quotation omitted)), similarly
`rings hollow. Philips also pleaded inequitable conduct as a defense in the proceeding before Judge
`Young, with less detail. See Fitbit LLC v. Koninklijke Philips N.V. et al., Case No. 1:20-cv-11613-
`WGY (D. Mass. 2020), D.I. 74 at 17-20 (¶¶ 39-51).
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 13 of 27
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`from the PTO and Examiner Pope, such that Examiner Pope never issued statutory double
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`patenting rejections against the 57 identical claims in both applications, as required by the MPEP
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`(id. at 25-26 (¶ 35-36)). Fitbit’s pleadings also plausibly alleged Mr. Helget’s intent and the
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`incentives therefore—including to obtain additional term for the identical claims.
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`Philips’s arguments to the contrary are unsupported for at least four reasons. First, it is
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`irrelevant whether the ’233 and ’902 applications shared a common examiner in light of Mr.
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`Helget’s affirmative duty to disclose. Second, Fitbit adequately pleaded but for materiality under
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`Exergen. Third, Fitbit adequately pleaded intent under Exergen. Fourth, even if Philips is correct
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`that Mr. Helget’s inequitable conduct only saved the ’902 Patent, but not the ’233 Patent, from
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`rejection, Fitbit’s pleadings still adequately support that Mr. Helget committed inequitable conduct
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`with respect to the ’902 Patent, and therefore adequately support that the related ’233 Patent is
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`unenforceable under the infectious unenforceability doctrine.
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`1.
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`Mr. Helget Had an Affirmative Duty to Disclose the Co-pending ’902
`Application When Prosecuting the ’233 Patent.
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`Philips’s Motion accuses Fitbit of attempting to mislead the Court with the “implausible
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`suggestion” that two different examiners were responsible for prosecution of the ’902 and ’233
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`applications, and argues that Fitbit consequently “cannot plead” that Mr. Helget committed
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`inequitable conduct by failing to disclose the ’902 application during prosecution of the ’233
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`Patent. (Memo at 9-12.) Philips is wrong on both counts.
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`As an initial matter, Fitbit did nothing to mislead the Court. Fitbit’s Answer accurately
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`sets forth the actions taken by Mr. Winston Alvarado in June and August of 2004 as part of the
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`’902 Patent application’s prosecution. (See D.I. 224 at 22 (¶ 27).) Fitbit’s Answer also clearly
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`states that by at least March 28, 2005, Mr. Daryl Pope was responsible for both the ’233 and ’902
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`applications. (Id. at ¶ 29.) Contrary to Philips’s suggestion, Fitbit never asserted that Mr.
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 14 of 27
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`Alvarado’s role was somehow critical to its inequitable conduct allegations—it is not. Rather,
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`Fitbit’s Answer explains that Mr. Helget’s inequitable conduct was his knowing and intentional
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`failure to disclose the co-pending ’902 application to the PTO and the examiner of the ’233
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`application, regardless of who that examiner may have been. (Id. at 24-31 (¶ 32-44).)
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`“[E]ach individual associated with the filing and prosecution of a patent application has a
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`duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the
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`Office all information known to that individual to be material to patentability….” 37 C.F.R. §
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`1.56(a). “The individuals covered by 37 C.F.R. 1.56 have to a duty to bring to the attention of the
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`examiner…information within their knowledge as to other copending United States applications
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`which are ‘material to patentability’ of the application in question.” (Ex. 3, (MPEP 2001.006(b)
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`(2006)) at 5.) This affirmative duty exists regardless of whether the undisclosed co-pending
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`application is before the same examiner in another proceeding. See Harris Corp. v. Fed. Exp.
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`Corp., No. 6:07-CV-1819-ORL, 2010 WL 2639564, at *12 (M.D. Fla. June 29, 2010) (“The
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`Federal Circuit has held that a patentee is not entitled to assume that an examiner recalls all co-
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`pending applications, and a patentee is not relieved of the duty to disclose co-pending applications
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`when the applications are in front of the same examiner.”) (citing McKesson Info. Sols., Inc. v.
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`Bridge Med., Inc., 487 F.3d 897, 925 (Fed. Cir. 2007)). “[I]t is unfair to the busy examiner, no
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`matter how diligent and well informed he may be, to assume that he retains details of every pending
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`file in his mind when he is reviewing a particular application.” (Ex. 3 at 5 (citing Armour & Co.
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`v. Swift & Co., 466 F.2d 767, 779 (7th Cir. 1972).) This observation is especially applicable when,
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`as here, the two applications in question were filed years apart. (See D.I. 224 at 16-17 (¶ 9), 20 (¶
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`20).)
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` Mr. Helget was the prosecuting attorney for both the ’233 and ’902 applications—
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 15 of 27
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`applications with 57 identical claims. Thus, as further explained below, the ’902 application was
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`material to the patentability of the ’233 application. See Dayco Prod., Inc. v. Total Containment,
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`Inc., 329 F.3d 1358, 1365 (Fed. Cir. 2003) (noting that a double patenting rejection “establishes,
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`by itself…a prima facie case of unpatentability of a claim”); Akron Polymer Container Corp. v.
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`Exxel Container, Inc., 148 F.3d 1380, 1382 (Fed. Cir. 1998) (finding that withheld “application
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`was highly material…because it could have conceivably served as the basis of a double patenting
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`rejection”). Because the ’902 application was material to the ’233 application, Mr. Helget had an
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`affirmative duty to disclose the ’902 application during prosecution of the ’233 application.
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`Dayco, 329 F.3d at 1365 (“[I]f an inventor has different applications pending in which similar
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`subject matter but patentably indistinct claims are present that fact must be disclosed to the
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`examiner of each of the involved applications.”). Contrary to Philips’s arguments, Mr. Helget was
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`not permitted to assume that Examiner Pope was aware of the ’902 application—or appreciated its
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`materiality to the ’233 application—just because he was responsible for both. (See Ex. 3 at 5
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`(“[T]he individuals covered by 37 CFR 1.56 cannot assume that the examiner of a particular
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`application is necessarily aware of other applications which are ‘material to patentability’ of the
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`application in question, but must instead bring such other applications to the attention of the
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`examiner.”) (citing Dayco, 329 F.3d at 1365-69).)
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`Instead, Philips summarily asserts that it is insufficient as a matter of law to allege that
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`information before an examiner in one proceeding can be withheld from that examiner in another
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`proceeding. But that argument is directly contrary to the relevant regulations. (See, e.g., Ex. 3 at
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`5-6.) Requiring disclosure of all material information—even information which may already be
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`known to the examiner—reduces the burden on examiners and maintains patent quality by
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`Case 1:19-cv-11586-FDS Document 240 Filed 09/28/21 Page 16 of 27
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`ensuring disclosure of all material information.3
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`Indeed, Mr. Helget’s failure to comply with that rule resulted in the issuance of two