Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 1 of 46
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`Exhibit 1
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 2 of 46
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`v.
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`FITBIT, INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-IT
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`DEFENDANT FITBIT, INC.’S SUPPLEMENTAL RESPONSES AND OBJECTIONS TO
`PLAINTIFF PHILIPS NORTH AMERICA LLC’S INTERROGATORY NO. 1
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` Pursuant to Rule 33 of the Federal Rules of Civil Procedure and the Rule 26(f) Pretrial
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`Order in this case, Defendant Fitbit, Inc. (“Fitbit” or “Defendant”) hereby provides supplemental
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`objections and responses to Plaintiff Philips North America LLC’s (“Philips” or “Plaintiff”)
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`Interrogatory No. 1.
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`PRELIMINARY STATEMENT
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`Fitbit’s responses are based on Fitbit’s present knowledge, information, and belief.
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`Discovery is in its early stages and investigation, research, and analysis are ongoing, and may
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`disclose the existence of additional facts or documents, add meaning to known facts or
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`documents, or lead to additions, variations, or changes to these objections and its responses.
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`Accordingly, Fitbit’s objections and responses are given without prejudice to Fitbit’s right to use
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`or rely on at any time, including trial, subsequently discovered information omitted from its
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`responses by inadvertence or mistake. Fitbit reserves its right to amend or supplement its
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`responses after considering information obtained or reviewed through further discovery and
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`investigation, including Plaintiff’s detailed disclosure of its infringement contentions, and in
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`connection with expert discovery.
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 3 of 46
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`The objections set forth below and Fitbit’s responses are intended to apply to all
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`information and documents produced or provided pursuant to these Interrogatories. Any
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`responses Fitbit provides are made solely for the purpose of this action and Fitbit’s responses do
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`not in any way waive any objections by Fitbit, in this or in any subsequent proceeding, on any
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`grounds, at any time, to the admission of any response or any document identified in connection
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`therewith at trial or in any other proceeding, all of which Fitbit reserves and may interpose at the
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`time of trial.
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`Any response provided by Fitbit stating that documents and things will be produced is to
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`be construed as referring only to responsive documents and things that are not otherwise subject
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`to any specific objection noted below. Moreover, such a statement with respect to any
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`Interrogatory is not a representation that any such documents or things exist, but only that Fitbit
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`will conduct a reasonably diligent search of the materials within its possession, custody, and
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`control, and will produce responsive, non-privileged documents or things if any are discovered
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`as a result of that search.
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`Fitbit does not waive any objection made in its responses, nor any claim of privilege,
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`whether expressly asserted or not by providing any information or identifying any document or
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`thing in response to any Interrogatory. The inadvertent disclosure of such information, or the
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`inadvertent identification of such a document, shall not constitute a waiver of any applicable
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`privilege as to that information or document or any other privileged information or document.
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`Any statement made by Fitbit of an intent to produce documents is not, and shall not be
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`deemed, an admission of any factual or legal contention contained in any individual
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`Interrogatory. Fitbit objects to each Interrogatory to the extent it contains any factual or legal
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`misrepresentations.
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 4 of 46
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`GENERAL OBJECTIONS
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`1.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent
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`that it imposes obligations extending beyond those imposed or authorized by the Federal Rules
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`of Civil Procedure, the Federal Rules of Evidence, the Local Rules of Massachusetts, or the
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`Patent Rules of Massachusetts (collectively, “Rules”).
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`2.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories as premature to
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`the extent that it seeks information prior to the date such information is to be exchanged pursuant
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`to the Federal Rules of Civil Procedure, the Local Rules, or any Order of this Court. Fitbit
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`objects to any interrogatory to the extent it seeks information that is the subject of expert
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`testimony; such information will be provided on the timeframes established by the Court in this
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`action.
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`3.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent
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`that it is overbroad and seeks information not relevant to any party’s claim or defense and not
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`proportional to the needs of the case, considering the importance of the issues at stake in the
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`action, the amount in controversy, the parties’ relative access to relevant information, the parties’
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`resources, the importance of the discovery in resolving the issues, and whether the burden or
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`expense of the proposed discovery outweighs its likely benefit.
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`4.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent it
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`seeks confidential and proprietary information, including trade secrets and competitively
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`sensitive business information, where any purported marginal benefits of production of the
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`requested information are outweighed by the burden or risk associated with producing such
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`highly sensitive materials.
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 5 of 46
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`5.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent
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`that it seeks information pertaining to products or functionalities outside of the United States.
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`6.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent
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`that it seeks information protected by the attorney-client privilege, the work product doctrine, or
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`any other applicable privilege, immunity, or protection (“privileged information”). Fitbit hereby
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`asserts all such applicable privileges, immunities, and protections, and excludes privileged,
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`immune, and protected information from its responses to Plaintiff’s Interrogatories. Fitbit also
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`objects to the logging of privileged documents that were created after the filing of the Complaint
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`in this case. Fitbit will not log any such documents. To the extent any Interrogatory may be
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`construed as calling for disclosure of information, documents, and/or things protected by such
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`privileges or doctrines, a continuing objection to each and every such Interrogatory is hereby
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`asserted.
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`7.
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`Fitbit objects to each of Plaintiff’s Definitions, Instructions, and Interrogatories to
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`the extent that it is vague, ambiguous, fails to describe the information sought with the required
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`reasonable particularity, or otherwise uses words and phrases that are nonsensical or not
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`understandable. To the extent reasonably feasible, Fitbit will interpret the terms and phrases used
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`in these Interrogatories as those terms and phrases are understood by Fitbit.
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`8.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent it
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`is overly broad and unduly burdensome.
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`9.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent
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`that it is not limited as to time, or is limited to a time period that is unduly burdensome or overly
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`broad. In such cases, Fitbit will endeavor to place a reasonable time restriction on such
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`interrogatory.
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 6 of 46
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`10.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent
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`that it seeks the disclosure of information that Fitbit is not permitted to disclose pursuant to
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`confidentiality obligations or agreements with non-parties. Fitbit objects to each to the extent it
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`seeks documents that contain confidential, proprietary or trade secret information of third parties.
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`Fitbit will endeavor to work with third parties in order to obtain their consent, if necessary,
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`before identifying or producing such information and/or documents.
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`11.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent
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`that they impose on Fitbit an obligation to investigate or discover information, materials, or
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`documents from third parties that are not within the possession, custody, or control of Fitbit.
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`12.
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`Fitbit objects to each of Plaintiff’s Instructions, and Interrogatories to the extent
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`that it seeks information that is already in Plaintiff’s possession or available from some other
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`source (including, but not limited to, a public source) that is more convenient, less burdensome,
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`or less expensive.
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`13.
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`Fitbit objects to each of Plaintiff’s Interrogatories to the extent that any
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`Interrogatory is unreasonably cumulative, redundant, or duplicative of other Interrogatories.
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`14.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent it
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`purports to require Fitbit to prepare information, documents and/or things that do not already
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`exist.
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`15.
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`Fitbit objects to each of Plaintiff’s Instructions and Interrogatories to the extent it
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`seeks to impose an obligation to identify or search for information or documents at any location,
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`or from any source, other than where they would reasonably be expected to be stored in the
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`ordinary course of business.
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 7 of 46
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`16.
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`Fitbit objects to each of Plaintiff’s Instruction and Interrogatories to the extent it
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`is compound and consisted of multiple interrogatories.
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`17.
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`Fitbit objects to each of Plaintiff’s Instruction and Interrogatories to the extent
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`substantive discovery responses are not to be provided, as per the Court’s instruction from the
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`parties’ December 2, 2019 scheduling conference.
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`18.
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`Fitbit objects to Plaintiff’s Interrogatories to the extent damages-related discovery
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`requests are not to be served at this time, as per the Court’s instruction from the parties’
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`December 2, 2019 scheduling conference
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`19.
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`Fitbit incorporates by reference these “General Objections” into its Responses to
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`each of Plaintiff’s specific Interrogatories as if fully set forth therein. The assertion and/or
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`repetition of any objection to any Interrogatory below is neither intended as, nor shall in any way
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`be deemed, a waiver of Fitbit’s right to assert any other objection at a later date. Accordingly,
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`Fitbit’s failure to note any General Objection in any specific response shall not constitute a
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`waiver of such objection with respect to any Interrogatory.
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`OBJECTIONS TO INSTRUCTIONS AND DEFINITIONS
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`1.
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`Fitbit objects to Plaintiff’s Instructions to the extent they require Fitbit provide
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`information or documents and things beyond what is required under the Federal Rules of Civil
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`Procedure, the Local Rules, or any Order of this Court.
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`2.
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`Fitbit objects to the definition of “Fitbit,” and/or “Defendant,” (and “You,” and/or
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`“Your”) as vague, ambiguous, overbroad, unduly burdensome, and beyond the scope of Rules 26
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`and 34 of the Federal Rules of Civil Procedure. Fitbit specifically objects to said definitions to
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`the extent they include prior subsidiaries, parents, affiliates, divisions, successors, predecessors,
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`agents, employees, contractors, representatives, directors, officers, trustees, and attorneys, or any
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 8 of 46
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`other person or entity acting in whole or in part in concert with any of the foregoing, directly or
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`indirectly, on the ground that it is overbroad and unduly burdensome. Fitbit will interpret these
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`terms as referring only to Fitbit and will respond only with respect to Fitbit.
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`3.
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`Fitbit objects to the definition of “Accused Products” as vague and ambiguous
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`and overbroad with respect to “any of the activity tracker products offered by Fitbit that are
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`capable of wirelessly communicating data . . . as well as any software products related to,
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`associated with, or used in conjunction with said activity trackers” and “any additional activity
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`tracking products released in the future that may include wireless communication capabilities as
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`well as additional products that Plaintiff otherwise accuses of infringement.” Fitbit further
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`objects to the definition of “Accused Products” as overly broad and improperly characterizing
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`and attributing legal conclusions to the Fitbit products sold under the names “Surge,” “Charge,”
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`“Flex,” “Ionic,” “Versa,” “Alta,” “Inspire,” and “Blaze,” and “any software products related to,
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`associated with, or used in conjunction with said activity tracker products.”
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`4.
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`Fitbit objects to the definition of “Patents-in-Suit” to the extent that it includes
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`any patents other than the 6,013,007 (the ’007 Patent), 7,088,233 (the ’233 Patent), and
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`8,277,377 (the ’377 Patent) patents currently asserted against Fitbit.
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`5.
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`Fitbit objects to the definition of “describe” as vague and ambiguous with respect
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`to meaning “phrased in specifics, of the facts or matters to which the interrogatories have
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`reference,” and overbroad with respect to any specific information not directly sought by the
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`interrogatory. Fitbit objects to the definition of describe as vague and ambiguous with respect to
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`what is “necessary to make such statement or description complete.”
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 9 of 46
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`6.
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`Subject to and without waiving its foregoing General Objections and Objections
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`to Instructions and Definitions, and incorporating them into its objections below, Fitbit
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`specifically objects to Plaintiff’s Interrogatories as follows:
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`OBJECTIONS AND RESPONSES TO INTERROGATORIES
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`INTERROGATORY NO. 1:
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`Identify the complete factual and legal bases for each of Fitbit’s defenses and
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`counterclaims in this action (excluding disclosures otherwise required by the local rules).
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`SECOND SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 1 (EXCERPT OF
`RESPONSE RELATING TO INEQUITABLE CONDUCT):
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`Fitbit incorporates all prior General and Specific Objections and Responses to
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`Interrogatory No. 1 herein by reference, and further respond as follows:
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`. . .
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`In addition to being invalid, the ’233 patent is also unenforceable due to inequitable
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`conduct during prosecution of the ’233 patent and U.S. Patent No. 7,138,902. See documents and
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`testimony from Mr. Gerald Helget in response to subpoena served on Feb. 8, 2021; PNA-
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`FB0001299-1472; PNA-FB0002251-2252; PNA-FB0002608-2780; PNA-FB0002321-2327;
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`PNA-FB00023241-2344; PNA-FB0004078-4082. In particular, during prosecution of the ’233
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`patent, with specific intent to deceive the Patent Office and in violation of its duty under 37
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`C.F.R. § 1.56, the applicant withheld identical claims that were then-pending in the application
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`that issued as U.S. Patent No. 7,138,902, in violation of at least 37 C.F.R. §§ 1.56, 1.97, 1.98,
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`1.321, 35 U.S.C. § 101, 102, and 253, and/or MPEP chapter 800, including §§ 801-823, and
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`MPEP § 1490.
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 10 of 46
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`THIRD SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 1:
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`Fitbit incorporates all prior General and Specific Objections and Responses to
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`Interrogatory No. 1 herein by reference, and further respond as follows:
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`Inequitable Conduct
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`Philips currently asserts U.S. Patent No. 7,088,233 (“the ’233 patent”) against Fitbit. The
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`’233 patent has a sibling patent, U.S. Patent No. 7,138,902 (“the ’902 patent”). Both the ’233
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`patent and the ’902 patent are continuation-in-parts of U.S. Patent Appl. No. 09/956,474, which
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`is a continuation of U.S. Patent Appl. No. 09/384,165, which claims priority to U.S. Provisional
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`Patent Appl. No. 60/135,862 and U.S. Provisional Patent Appl. No. 60/105,493. The ’902 patent
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`is also a continuation-in-part of a patent application for which no number is provided that was
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`filed March 28, 2002 and entitled “Method and System for Wireless Tracking,” which claims
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`priority to U.S. Provisional Patent Appl. No. 60/279,401. The ’233 patent also claims priority to
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`U.S. Patent Appl. No. 10/112,669 filed on March 28, 2002, which claims priority to U.S.
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`Provisional Patent Appl. No. 60/279,401. The ’233 patent is also a continuation-in-part of
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`PCT/US01/18734. The ’233 patent and the ’902 patent share the essentially same specification,
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`with only minor typographical differences between the two (e.g. “video exchange” in the ’233
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`patent, 11:38, compared to “video exhange” in the ’902 patent, 11:52).
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`The ’233 and ’902 patents share the same named inventor, Raymond J. Menard. See ’233
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`patent at Cover; ’902 patent at Cover. The application that issued as the ’233 patent—U.S.
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`Patent App. No. 10/165,624 (“the ’624 application” or “the ’233 patent application”)—was
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`initially assigned to Mr. Menard as the inventor, and was later assigned to Royal Thoughts, LLC
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`on July 26, 2002. PNA-FB0002251 at 2252. The application that issued as the ’902 patent—
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`U.S. Patent App. No. 10/490,330 (“the ’330 application” or “the ’902 patent application”)—was
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 11 of 46
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`also initially assigned to Mr. Menard as the inventor, and then later assigned to Royal Thoughts,
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`LLC on April 10, 2009. Fitbit_19-11586_00084759.
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`The ’233 patents application was filed on June 7, 2002 through Mr. Gerald E. Helget and
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`Nelson R. Capes of the law firm Briggs and Morgan, P.A. PNA-FB0001299 at 1302. On the
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`same day, June 7, 2002, Mr. Helget and his law firm also filed a PCT application
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`(PCT/US02/17962) (“PCT application”) in the United States designating a number of countries
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`including the United States. Fitbit_19-11586_00083422 at 83485-86. Both the ’233 patent
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`application and the PCT application claimed priority to the same patent application, U.S. Patent
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`Appl. No. 09/956,474 (“the parent application”). PNA-FB0001299 at 1300; Fitbit_19-
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`11586_00083422 at 83487.
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`The PCT application and the ’233 patent applications were both filed with identical
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`claims. See Appendix B. For example, claim 1 of the ’624 application and claim 1 of the PCT
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`application both read:
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`1. A bi-directional wireless communication system comprising:
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`(a) a first personal device, the first personal device further comprising:
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`(i) a processor;
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`(ii) a memory;
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`(iii) a power supply;
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`(iv) at least one detector input; and
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`(v) a short-range bi-directional wireless communications module;
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`(b) a second device communicating with the first device, the second device having a
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`short-range bi-directional wireless communications module compatible with the short-
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`range bi-directional wireless communications module of the first device; and
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 12 of 46
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`(c) a security mechanism governing information transmitted between the first personal
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`device and the second device. Id. at 1.
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`All 56 other claims filed with these applications are also identical. Id. at 1-10.
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`Under 35 U.S.C. § 101, an inventor is only entitled to one patent for a particular
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`invention (“Whoever invents or discovers any new and useful process, machine, manufacture, or
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`composition of matter or any new and useful improvement thereof, may obtain a patent therefor
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`. . .” (emphasis added). 35 U.S.C. § 101 provides the basis for a particular type of rejection
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`during prosecution of a patent application referred to as a double patenting rejection. MPEP 804
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`(Aug. 2001); see also MPEP 804 (Aug. 2005); MPEP 804 (Aug. 2006). “The doctrine of double
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`patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a
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`patent.” MPEP 804 (Aug. 2001); see also MPEP 804 (Aug. 2005); MPEP 804 (Aug. 2006).
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`“Before consideration can be given to the issue of double patenting, there must be some common
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`relationship of inventorship and/or ownership of two or more patents or applications.” MPEP
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`804 (Aug. 2001); see also MPEP 804 (Aug. 2005); MPEP 804 (Aug. 2006).
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`Where the same invention exists between two different applications, a statutory basis for
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`a double patenting rejection exists under 35 U.S.C. § 101, referred to as statutory double-
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`patenting. MPEP 804 (Aug. 2001); see also MPEP 804 (Aug. 2005); MPEP 804 (Aug. 2006).
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`That is, such a situation falls directly under the prohibition set forth in 35 U.S.C. § 101 against
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`filing more than one patent on an invention. Id. In such a case, MPEP 804 instructs examiners
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`to issue provisional statutory double-patenting rejections until the potential statutory double-
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`patenting issue has been addressed. See In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976);
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`In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966); see also MPEP 804 (Aug. 2001)
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`(“The ‘provisional’ double patenting rejection should continue to be made by the examiner in
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 13 of 46
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`each application as long as there are conflicting claims in more than one application unless that
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`‘provisional’ double patenting rejection is the only rejection remaining in one of the
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`applications.”); MPEP 804 (Aug. 2005) (“The ‘provisional’ double patenting rejection should
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`continue to be made by the examiner in each application as long as there are conflicting claims in
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`more than one application unless that ‘provisional’ double patenting rejection is the only
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`rejection remaining in >at least< one of the applications.”); MPEP 804 (Aug. 2006) (“The
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`‘provisional’ double patenting rejection should continue to be made by the examiner in each
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`application as long as there are conflicting claims in more than one application unless that
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`‘provisional’ double patenting rejection is the only rejection remaining in at least one of the
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`applications.”); MPEP 804 (Aug. 2001), Chart I_A, Chart II-A; see also MPEP 804 (Aug. 2005),
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`Chart I_A, Chart II-A; MPEP 804 (Aug. 2006), Chart I_A, Chart II-A .
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`Statutory double patenting rejections cannot be overcome by terminal disclaimers under
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`37 C.F.R. § 1.321, but must be resolved by canceling or amending the conflicting claims so they
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`are no longer coextensive in scope. See MPEP 804 (Aug. 2001) (“If it is determined that the
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`same invention is being claimed twice, 35 U.S.C. 101 precludes the grant of the second patent
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`regardless of the presence or absence of a terminal disclaimer.”); MPEP 804 (Aug. 2005) (same);
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`MPEP 804 (Aug. 2006) (same); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). As a
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`result, a statutory double patenting rejection can only be overcome “by canceling or amending
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`the conflicting claims so they are no longer coextensive in scope.” MPEP 804 (Aug. 2001) at
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`Form ¶ 8.30; MPEP 804 (Aug. 2005) at Form ¶ 8.30 (same); MPEP 804 (Aug. 2006) at Form
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`¶ 8.30 (same).
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`Thus, under both, statutory law (35 U.S.C. § 101), as intended to be enforced by the
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`Patent Office in MPEP 804 and other related procedures, the pending claims of the ’233 patent
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 14 of 46
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`application and/or the PCT application would have violated 35 U.S.C. § 101 had they issued and
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`a provisional statutory double patenting rejection should have been made and sustained by the
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`examiner until amendment or cancelation of at least the substantially identical claims.
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`The ’233 patent application was assigned to PTO patent examiner Daryl Pope. PNA-
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`FB0001299 at 1346. During the pendency of the ’233 patent application, Mr. Helget filed
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`multiple petitions to amend the priority claim information. Id. at 1401-03, 1413-19, 1422-25,
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`1429-37. Mr. Helget filed an Information Disclosure Statement (IDS) on December 16, 2002,
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`which did not list the pending PCT application. PNA-FB0001299 at 1420-21, 1446-55.
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`The PCT application had also been assigned to Daryl C. Pope as well as Melvin Brooks,
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`Sr., Evelyne Durand, M. Knupling, and Luis-Miguel Paredes Sanchez. Fitbit_19-
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`11586_00083422 at 83471, 83477-78, 83493, 83496. On March 19, 2004, just three months
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`before the notice of allowance issued for the ’233 application, Mr. Helget filed U.S. Patent Appl.
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`No. 10/490,330—the ’902 patent application—which issued as the ’902 patent. See Fitbit_19-
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`11586_00083422. The ’330 application was a U.S. national stage application under 35 U.S.C.
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`§ 371 of the PCT application that Mr. Helget had filed on June 7, 2002. Id. at 83422.
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`When the ’902 patent application was filed on March 19, 2004, all of its claims were
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`identical to the claims in the currently pending ’233 patent application. See Appendix A. For
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`example, claim 1 of the ’902 patent application and claim 1 of the ’233 application’s pending
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`claims at the time both read:
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`1. A bi-directional wireless communication system comprising:
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`(a) a first personal device, the first personal device further comprising:
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`(i) a processor;
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`(ii) a memory;
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 15 of 46
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`(iii) a power supply;
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`(iv) at least one detector input; and
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`(v) a short-range bi-directional wireless communications module;
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`(b) a second device communicating with the first device, the second device having a
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`short-range bi-directional wireless communications module compatible with the
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`short-range bi-directional wireless communications module of the first device; and
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`(c) a security mechanism governing information transmitted between the first personal
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`device and the second device. Id. at 1.
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`All 56 other claims filed with these applications are also identical. Id. at 1-10.
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`The ’902 patent application included filings related to the international application,
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`including international search reports, but did not include any disclosure of the ’233 patent
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`application. Fitbit_19-11586_00083422 at 83422-83544.
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`On June 14, 2004, the PTO issued a Notice of Allowance for the ’233 patent application.
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`PNA-FB0001299 at 1440-55. At the time the PTO issued a Notice of Allowance for the ’233
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`patent application, neither the pending claims of the ’233 patent application nor the pending
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`claims of the ’902 patent application had been amended and all claims remained identical.
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`After no action was taken by the applicant for nearly a year, the PTO declared the ’233
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`patent application abandoned on May 4, 2005. PNA-FB0001299 at 1457. Five months later, on
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`October 13, 2005, Mr. Helget filed on behalf of the applicant a petition to revive the ’233 patent
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`application, including payment of the patent issue fee. Id. at 1458-61. Mr. Helget signed the
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`petition, which included a boilerplate form statement that “[t]he entire delay in filing the required
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`reply from the due date for the required reply until the filing of a grantable petition under 37
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`CFR 1.137(b) was unintentional,” the form including a note to the applicant that the PTO may
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 16 of 46
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`require additional information as to whether the abandonment was unintentional. Id. at 1459. On
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`October 13, 2005, when Mr. Helget filed the petition to revive the ’233 patent application,
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`neither the pending claims of the ’233 patent application nor the pending claims of the ’902
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`patent application had been amended and all claims remained identical.
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`The petition was granted on November 3, 2005 without requesting further information
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`from the applicant as to why the abandonment was unintentional. PNA-FB0001299 at 1462. The
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`’233 patent application ultimately issued on August 8, 2006. Between October 13, 2005 and
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`August 8, 2006, Mr. Helget did not submit an IDS under 37 C.F.R. §§ 1.97 and 1.98 as part of
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`his duty to disclose under 37 C.F.R. § 1.56 identifying the co-pending ’902 patent application.
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`See also MPEP 609 (Aug. 2001) (“The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a
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`mechanism by which patent applicants may comply with the duty of disclosure provided in 37
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`CFR 1.56.”); MPEP 609 (May 2004) (same); MPEP 609 (Aug. 2005) (same); MPEP 609 (Aug.
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`2006) (same).
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`On June 23, 2004, after the Notice of Allowance issued for the ’233 patent application, a
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`Notice of Missing Requirements was mailed to the applicant for the ’902 patent application from
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`Winston M. Alvarado of the PTO—not Daryl Pope, who had been handling the ’624 application.
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`Fitbit_19-11586_00083422 at 83545-46. After the applicant filed the missing inventor
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`declaration, Mr. Alvarado issued a Notice of Acceptance of Application on August 16, 2004. Id.
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`at 83552-53.
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`Mr. Helget then filed an IDS on December 23, 2004 under 37 C.F.R. §§ 1.97 and 1.98,
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`listing a number of prior art references, but not listing the ’233 patent application that contained
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`identical claims and for which a Notice of Allowance had already issued. Id. at 83554-66. In
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 17 of 46
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`fact, on December 23, 2004, neither the pending claims of the ’233 patent application nor the
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`pending claims of the ’902 patent application had changed and all claims remained identical.
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`On March 28, 2005, two months prior to the abandonment of the ’233 patent application,
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`Mr. Pope—who appears to have taken over Mr. Alvarado’s role in examining the ’902 patent
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`application at this point—issued a non-final rejection in the ’902 patent application due to double
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`patenting over U.S. Patent No. 6,759,956. Id. at 83809-83826. On May 16, 2005, after the ’233
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`patent application had been declared abandoned, Mr. Helget filed a terminal disclaimer in
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`response to the rejection on the ’902 application with respect to the claims of U.S. Patent No.
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`6,759,956. Id. at 83830 (“The owner, Raymond J. Menard, of 100 percent interest in the instant
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`application hereby disclaims, except as provided below, the terminal part of the statutory term of
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`any patent granted on the instant application which would extend beyond the expiration date of
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`the full statutory term prior patent No. 6,759,956 as the term of said prior patent is defined in 35
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`U.S.C. 154 and 173, and as the term of said prior patent is presently shortened by any terminal
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`disclaimer.”); see also id. at 83827-29.
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`One year later, on June 12, 2006, after Mr. Helget had paid the issue fee for the ’233
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`patent and just two months before the ’233 patent had issued, a Notice of Allowance issued for
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`the ’902 patent application. Id. at 83832-83839. Between June 12, 2006 and August 8, 2006,
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`when the ’233 patent issued, neither the pending claims of the ’233 patent application nor the
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`pending claims of the ’902 patent application had been amended and all claims remained
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`identical.
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`During this period, Mr. Helget did not submit an IDS to the Patent Office in either the
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`’233 patent or ’902 patent application that identified the respective co-pending applications. The
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`’902 patent application proceeded to issue as the ’902 patent on November 1, 2006.
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`Case 1:19-cv-11586-FDS Document 241-1 Filed 09/28/21 Page 18 of 46
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`The following timeline summarizes the previously described events:
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`In short, in the two years and five months between the filing of the ’902 patent
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`application and the issuance of the ’233 patent—all the time while identical pending claims
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`existed in the ’233 and ’902 patent applications—Mr. Helget and the applicant withheld the
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`pending ’902 patent application from examiner during the prosecution of the ’233 patent
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`application. Mr. Helget’s continued failure to disclose the existence of the application that issued
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`as the ’902 patent during the prosecution of the ’233 patent amounts to inequitable conduct.
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`“An individual associated with the filing and prosecution of a patent application commits
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`inequitable conduct when he or she (1) makes an affirmative misrepresentation of a material fact,
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`fails to disclose material information, or submits false material information to the PTO; (2) with
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`the specific intent to deceive the PTO.” Int’l Business Machines Corp. v. The