Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 1 of 40
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`PHILIPS NORTH AMERICA LLC,
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Case No. 1:19-CV-11586-FDS
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`JURY TRIAL DEMANDED
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`Plaintiff,
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`Defendant.
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`v.
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`FITBIT LLC,
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`DEFENDANT FITBIT LLC’S AMENDED ANSWER AND COUNTERCLAIMS TO
`PLAINTIFF PHILIPS NORTH AMERICA LLC’S SECOND AMENDED COMPLAINT
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`Pursuant to Fed. R. Civ. P. 15(a)(1)(B), Defendant Fitbit LLC (“Fitbit”), through its
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`undersigned counsel, submits this Amended Answer and Counterclaims to Plaintiff Philips North
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`America LLC’s (“Philips”) Second Amended Complaint for Patent Infringement (“Complaint”),
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`alleging infringement of U.S. Patent Nos. 6,013,007 (“the ’007 Patent”), 7,088,233 (“the ’233
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`Patent”), and 8,277,377 (“the ’377 Patent”), collectively, “the Patents-in-Suit”, as follows:
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`ANSWER
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`Fitbit responds to the allegations contained in the numbered paragraphs of Philips’s
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`Complaint below. Fitbit denies all allegations and characterizations in the Complaint unless
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`expressly admitted in the following paragraphs.
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`NATURE OF THE ACTION1
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`1.
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`Fitbit admits that this is an action alleging patent infringement. Fitbit denies that it has
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`1 For clarity and ease of reference, Fitbit repeats herein the section headers recited in Philips’s
`Second Amended Complaint. To the extent any section header is construed as a factual allegation,
`Fitbit denies any and all such allegations.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 2 of 40
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`infringed or infringes the Patents-in-Suit and denies that Philips is entitled to compensation.
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`2.
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`Fitbit currently has insufficient knowledge or information to admit or deny that Philips
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`North America LLC is a subsidiary of Koninklijke Philips N.V. or that Koninklijke Philips N.V.
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`was originally founded in 1891 and on that basis denies the allegations. The remaining allegations
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`in Paragraph 2 of the Complaint contain nonfactual characterizations that require no response. To
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`the extent any factual allegations remain in Paragraph 2 of the Complaint, Fitbit currently has
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`insufficient knowledge or information to admit or deny them and on that basis denies them.
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`3.
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`Paragraph 3 of the Complaint contains nonfactual characterizations that require no
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`response. To the extent any factual allegations remain in Paragraph 3 of the Complaint, Fitbit
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`currently has insufficient knowledge or information to admit or deny the remaining allegations and
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`on that basis denies them.
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`4.
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`Paragraph 4 of the Complaint contains nonfactual characterizations that require no
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`response. To the extent any factual allegations remain in Paragraph 4 of the Complaint, Fitbit
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`currently has insufficient knowledge or information to admit or deny the remaining allegations and
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`on that basis denies them.
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`5.
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`Fitbit currently has insufficient knowledge or information to admit or deny the allegations
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`in Paragraph 5 of the Complaint and on that basis denies them.
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`6.
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`Paragraph 6 of the Complaint contains nonfactual characterizations that require no
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`response. To the extent any factual allegations remain in Paragraph 6 of the Complaint, Fitbit
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`currently has insufficient knowledge or information to admit or deny the remaining allegations and
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`on that basis denies them.
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`7.
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`Fitbit currently has insufficient knowledge or information to admit or deny the allegations
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`in Paragraph 7 of the Complaint and on that basis denies them.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 3 of 40
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`8.
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`Fitbit currently has insufficient knowledge or information to admit or deny the allegations
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`in Paragraph 8 of the Complaint and on that basis denies them.
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`9.
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`Fitbit admits that Philips purports to assert the Patents-in-Suit in this action, but notes that
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`the Court recently found that all asserted claims of the ’007 Patent are invalid. The remainder of
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`Paragraph 9 of the Complaint contains nonfactual characterizations that require no response. To
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`the extent any factual allegations remain in Paragraph 9 of the Complaint, Fitbit currently has
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`insufficient knowledge or information to admit or deny the remaining allegations and on that basis
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`denies them.
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`10.
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`Fitbit admits that it was founded in 2007 and that Paragraph 10 of the Complaint accurately
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`transcribes text found at https://www.fitbit.com/about. Fitbit denies that “Fitbit did not develop
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`its own technology and released its first product without filing a single patent application. Instead,
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`Fitbit and its founders leveraged the patented technology of Philips from the company’s
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`beginnings.” Fitbit admits that, since its founding, it has generated billions of dollars in revenue.
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`To the extent any factual allegations remain in Paragraph 10 of the Complaint, Fitbit denies them.
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`11.
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`Fitbit admits that it has not licensed the Patents-in-Suit. Fitbit denies that it has willfully
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`infringed or is willfully infringing the Patents-in-Suit. The remaining allegations in Paragraph 11
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`of the Complaint contain legal conclusions or nonfactual characterizations that require no
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`response. To the extent any factual allegations remain in Paragraph 11 of the Complaint, Fitbit
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`denies them.
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`PARTIES
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`12.
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`Fitbit currently has insufficient knowledge or information to admit or deny the allegations
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`in Paragraph 12 of the Complaint regarding Philips’s corporate organization or principal place of
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`business and on that basis denies them. The remaining allegations in Paragraph 12 of the
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 4 of 40
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`Complaint contain nonfactual characterizations that require no response. To the extent any factual
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`allegations remain in Paragraph 12 of the Complaint Fitbit, denies them.
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`13.
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`Fitbit admits that at the time Philips filed the operative Complaint, it was a corporation
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`organized under the laws of Delaware. Effective July 31, 2021, Fitbit converted from a corporation
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`to a limited liability company, Fitbit LLC, organized under the laws of Delaware. Fitbit denies
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`that it maintains an office at One Marina Park Drive, Suite 701, Boston, MA 02210. Fitbit admits
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`that it develops, manufactures, markets, sells, and uses Fitbit devices. Fitbit admits that it has not
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`licensed the Patents-in-Suit. Fitbit denies that its products “incorporate Philips’s patented
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`technology” and denies that it “chose a path of willful infringement.” The remaining allegations
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`in Paragraph 13 of the Complaint contain legal conclusions that require no response. To the extent
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`any factual allegations remain in Paragraph 13 of the Complaint, Fitbit denies them.
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`JURISDICTION AND VENUE
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`14.
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`Fitbit admits that Philips’s claims purport to arise under Title 35 of the United States Code.
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`For purposes of this case only, Fitbit does not dispute this Court’s general and specific personal
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`jurisdiction over Fitbit. Fitbit denies that it sells or has sold “infringing products and services.”
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`The remaining allegations in Paragraph 14 of the Complaint contain nonfactual characterizations
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`and legal conclusions that require no response. To the extent any factual allegations remain in
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`Paragraph 14 of the Complaint, Fitbit denies them.
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`15.
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`For purposes of this case only, Fitbit does not dispute this Court’s personal jurisdiction
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`over Fitbit. Fitbit denies that it “has committed acts of direct and joint infringement in this Judicial
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`District.” The remaining allegations in Paragraph 15 of the Complaint contain nonfactual
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`characterizations and legal conclusions that require no response. To the extent any factual
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`allegations remain in Paragraph 15 of the Complaint, Fitbit denies them.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 5 of 40
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`16.
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`For purposes of this case only, Fitbit does not dispute this Court’s personal jurisdiction
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`over Fitbit. The remaining allegations in Paragraph 16 of the Complaint contain nonfactual
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`characterizations and legal conclusions that require no response. To the extent any factual
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`allegations remain in Paragraph 16 of the Complaint, Fitbit denies them.
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`17.
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`Fitbit denies that it “has knowingly induced and continues to induce and/or contribute to
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`infringement within this Judicial District.” Fitbit denies that it “provides instructions, user
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`manuals, advertising, and/or marketing materials which facilitate, direct, or encourage such
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`infringing use with knowledge thereof.” Fitbit denies that it “jointly infringes with its customers
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`and subscribers in this Judicial District.” Fitbit denies that any of its products are “covered by the
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`Patents-in-Suit.” The remaining allegations in Paragraph 17 of the Complaint contain nonfactual
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`characterizations and legal conclusions that require no response. To the extent any factual
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`allegations remain in Paragraph 17 of the Complaint, Fitbit denies them.
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`18.
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`For purposes of this case only, Fitbit does not dispute this Court’s personal jurisdiction
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`over Fitbit.
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`19.
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`For purposes of this case only, Fitbit does not dispute the propriety of venue in this District.
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`Fitbit denies that it has “engaged and continues to engage in infringing acts in this Judicial
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`District.” The remaining allegations in Paragraph 19 of the Complaint contain nonfactual
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`characterizations and legal conclusions that require no response. To the extent any factual
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`allegations remain in Paragraph 19 of the Complaint, Fitbit denies them.
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`20.
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`Fitbit denies that it maintains an office at One Marina Park Drive, Suite 701, Boston, MA
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`02210. The remaining allegations of Paragraph 20 of the Complaint contain nonfactual
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`characterizations and legal conclusions that require no response. To the extent any factual
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`allegations remain in Paragraph 20 of the Complaint, Fitbit denies them.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case No.: 1:19-CV-11586-FDS
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 6 of 40
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`21.
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`Fitbit admits that it has sold and shipped Fitbit products to residents of Boston and
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`Massachusetts. Fitbit denies that Fitbit’s products are “sold by Fitbit at retail locations in this
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`Judicial District, including BestBuy and Target.” The remaining allegations of Paragraph 21 of
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`the Complaint contain nonfactual characterizations that require no response. To the extent any
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`factual allegations remain in Paragraph 21 of the Complaint, Fitbit denies them.
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`22.
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`Fitbits admits that it has sold and offered for sale Fitbit devices in the Commonwealth of
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`Massachusetts and in this Judicial District. The remaining allegations in Paragraph 22 of the
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`Complaint contain nonfactual characterizations and legal conclusions that require no response. To
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`the extent any factual allegations remain in Paragraph 22 of the Complaint, Fitbit denies them.
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`23.
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`Fitbit denies that it has “committed acts of direct and joint infringement” of the Patents-in-
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`Suit or that the alleged “Accused Products…infringe one or more claims of the Patents-in-Suit.”
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`To the extent any factual allegations remain in Paragraph 23 of the Complaint, Fitbit denies them.
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`FACTUAL BACKGROUND
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`24.
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`The allegations in Paragraph 24 of the Complaint contain nonfactual characterizations that
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`require no response. To the extent any factual allegations remain in Paragraph 24 of the Complaint,
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`Fitbit has insufficient knowledge or information to admit or deny the remaining allegations and on
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`that basis denies them.
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`25.
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`The allegations in Paragraph 25 of the Complaint contain nonfactual characterizations that
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`require no response. To the extent any factual allegations remain in Paragraph 25 of the Complaint,
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`Fitbit has insufficient knowledge or information to admit or deny the remaining allegations and on
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`that basis denies them.
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`26.
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`Fitbit has insufficient knowledge or information to admit or deny the allegations in
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`Paragraph 26 of the Complaint and on that basis denies them.
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`27.
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`Fitbit has insufficient knowledge or information to admit or deny the allegations in
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case No.: 1:19-CV-11586-FDS
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 7 of 40
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`Paragraph 27 of the Complaint and on that basis denies them.
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`28.
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`Fitbit has insufficient knowledge or information to admit or deny the allegations in
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`Paragraph 28 of the Complaint and on that basis denies them.
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`Fitbit Background and Infringement
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`29.
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` Fitbit has insufficient knowledge or information to admit or deny the allegations in
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`Paragraph 29 of the Complaint and on that basis denies them.
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`30.
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` Fitbit has insufficient knowledge or information to admit or deny the allegations in
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`Paragraph 30 of the Complaint and on that basis denies them.
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`31.
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`Fitbit admits that it has not licensed the Patents-in-Suit. Fitbit admits that it has received
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`communications, including in October 2016, from Philips mentioning the Patents-in-Suit. Fitbit
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`denies that it infringes or has infringed the Patents-in-Suit and further denies that it has not
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`responded to Philips’s communications. The remaining allegations in Paragraph 31 of the
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`Complaint contain nonfactual characterizations and legal conclusions that require no response. To
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`the extent any factual allegations remain in Paragraph 31 of the Complaint, Fitbit denies them.
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`Accused Products
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`Denied.
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`Fitbit admits that the Fitbit Surge, Fitbit Charge, Fitbit Flex, Fitbit Versa, Fitbit Alta, Fitbit
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`32.
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`33.
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`Inspire, Fitbit Ionic, and Fitbit Blaze are all Fitbit products. Fitbit admits that each of these devices
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`is or previously was available through Fitbit’s website. Fitbit denies that any of its products are
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`“infringing.” The remaining allegations in Paragraph 33 of the Complaint contain nonfactual
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`characterizations and legal conclusions that require no response. To the extent any factual
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`allegations remain in Paragraph 33 of the Complaint, Fitbit denies them.
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`34.
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`Fitbit has insufficient knowledge or information to admit or deny the allegations in
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`Paragraph 34 of the Complaint and on that basis denies them.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case No.: 1:19-CV-11586-FDS
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 8 of 40
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`35.
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`Fitbit has insufficient knowledge or information to admit or deny the allegations in
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`Paragraph 35 of the Complaint and on that basis denies them.
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`36.
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`37.
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`Denied.
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`Denied—Fitbit understands that the Patents-in-Suit did not “derive from…Philips’s efforts
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`in this field of technology,” but rather that Philips obtained all of the Patents-in-Suit after they
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`issued.
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`38.
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`Denied.
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`U.S. Patent No. 6,013,007
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`39.
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`Fitbit admits that the ’007 Patent was issued by the U.S. Patent Office to Gary Miller Root
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`on January 11, 2000 and is entitled “Athlete’s GPS-Based Performance Monitor.” Fitbit admits
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`that a copy of what appears to be the ’007 patent is attached as Exhibit A to Philips’s Complaint.
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`Fitbit denies that the ’007 Patent was “duly and legally issued.” To the extent any factual
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`allegations remain in Paragraph 39 of the Complaint, Fitbit denies them.
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`40.
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`Paragraph 40 of the Complaint contains legal conclusions to which no response is required.
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`To the extent any factual allegations remain in Paragraph 40 of the Complaint, Fitbit currently has
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`insufficient knowledge or information to admit or deny the remaining allegations and on that basis
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`denies them.
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`U.S. Patent No. 7,088,233
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`41.
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`Fitbit admits that the ’233 Patent was issued by the U.S. Patent Office to Raymond J.
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`Menard on August 8, 2006 and is entitled “Personal Medical Device Communication System and
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`Method.” Fitbit admits that a copy of what appears to be the ’233 Patent is attached as Exhibit B
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`to Philips’s Complaint. Fitbit denies that the ’233 Patent “was duly and legally issued.” To the
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`extent any factual allegations remain in Paragraph 41 of the Complaint, Fitbit denies them.
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`42.
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`Paragraph 42 of the Complaint contains legal conclusions to which no response is required.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case No.: 1:19-CV-11586-FDS
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 9 of 40
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`To the extent any factual allegations remain in Paragraph 42 of the Complaint, Fitbit currently has
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`insufficient knowledge or information to admit or deny the remaining allegations and on that basis
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`denies them.
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`U.S. Patent No. 8,277,377
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`43.
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`Fitbit admits that the ’377 Patent was issued by the U.S. Patent Office to Roger J. Quy on
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`October 2, 2012 and is entitled “Method and Apparatus for Monitoring Exercise with Wireless
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`Internet Connectivity.” Fitbit admits that a copy of what appears to be the ’377 Patent is attached
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`as Exhibit C to Philips’s Complaint. Fitbit denies that the ’377 Patent “was duly and legally
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`issued.” To the extent any factual allegations remain in Paragraph 43 of the Complaint, Fitbit
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`denies them.
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`44.
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`Paragraph 44 of the Complaint contains legal conclusions to which no response is required.
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`To the extent any factual allegations remain in Paragraph 44 of the Complaint, Fitbit currently has
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`insufficient knowledge or information to admit or deny the remaining allegations and on that basis
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`denies them.
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`Fitbit’s Knowledge of Infringement
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`Denied.
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`Fitbit admits that on or about October 10, 2016 it received a communication addressed to
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`45.
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`46.
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`Mr. James Park listing the numbers of the Patents-in-Suit. The remaining allegations in Paragraph
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`46 of the Complaint are legal conclusions that require no response. To the extent any factual
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`allegations remain in Paragraph 46 of the Complaint, Fitbit denies them.
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`COUNT 1: INFRINGEMENT OF U.S. PATENT NO. 6,013,007
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`Fitbit incorporates its answers to the foregoing paragraphs.
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`Denied.
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`47.
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`48.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case No.: 1:19-CV-11586-FDS
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 10 of 40
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`49.
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`50.
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`51.
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`52.
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`53.
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`54.
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`55.
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`56.
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`57.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Fitbit admits that the application resulting in the ’007 Patent was filed on March 26, 1998
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`and that the ’007 Patent issued on January 11, 2000. Fitbit denies any remaining allegations in
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`this paragraph.
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`58.
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`Fitbit admits that the ’007 Patent was prosecuted before the U.S. Patent Office and that
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`certain prior art is cited on the face of the ’007 Patent. Fitbit has insufficient knowledge or
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`information to admit or deny that the U.S. Patent Office “considered the claims of the ’007 patent
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`against the background of prior technology to determine if the claims of the ’007 patent identified
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`a patentable advance over the prior art systems before issuing the patent” or “searched multiple
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`sets of prior art in classifications 482/1-9, 900-902; 701/213-216; and 342/357” and on that basis
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`denies them. Fitbit denies any remaining allegations in this paragraph.
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`59.
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`60.
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`61.
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`62.
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`63.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 11 of 40
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`64.
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`65.
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`66.
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`67.
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`68.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Fitbit admits that it received a letter from Philips on or around October 10, 2016, which
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`listed the number of the ’007 Patent. Fitbit denies any remaining allegations in this paragraph.
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`69.
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`70.
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`Denied.
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`Denied.
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`COUNT II: INFRINGEMENT OF U.S. PATENT NO. 7,088,233
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`Fitbit incorporates its answers from the foregoing paragraphs.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Fitbit admits that the ’233 Patent issued on August 8, 2006 and claims priority to a
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`71.
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`72.
`
`73.
`
`74.
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`75.
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`76.
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`77.
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`78.
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`79.
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`80.
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`81.
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`provisional application filed on October 23, 2008. Fitbit denies any remaining allegations in this
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`paragraph.
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`82.
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`Fitbit admits that the ’233 Patent was prosecuted before the U.S. Patent Office and that
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case No.: 1:19-CV-11586-FDS
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 12 of 40
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`certain prior art is cited on the face of the ’233 Patent. Fitbit has insufficient knowledge or
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`information to admit or deny that the U.S. Patent Office “considered the claims of the ’233 patent
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`against the background of prior technology to determine if the claims of the ’007 patent identified
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`a patentable advance over the prior art systems before issuing the patent” or “searched multiple
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`sets of prior art in classifications 340/539.1, 539.11, 539.12, 539.13, 506, 511, 517, 524, 537, 3.1,
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`825.36, 825.49” and on that basis denies them. Fitbit denies any remaining allegations in this
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`paragraph.
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`83.
`
`84.
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`85.
`
`86.
`
`87.
`
`88.
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`89.
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`90.
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`91.
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`92.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Fitbit admits that it received a letter from Philips on or around October 10, 2016, which
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`listed the number of the ’233 Patent. Fitbit denies any remaining allegations in this paragraph.
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`93.
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`94.
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`95.
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`96.
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`97.
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`Denied.
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`Denied.
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`COUNT III: INFRINGEMENT OF U.S. PATENT NO. 8,277,377
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`Fitbit incorporates its answers from the foregoing paragraphs.
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`Denied.
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`Denied.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case No.: 1:19-CV-11586-FDS
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 13 of 40
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`98.
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`99.
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`Denied.
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`Denied.
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`100. Denied.
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`101. Denied.
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`102. Denied.
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`103. Denied.
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`104. Denied.
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`105. Fitbit admits that the ’377 Patent issued on October 2, 2012 and claims priority to a
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`provisional application filed on December 17, 1999. Fitbit denies any remaining allegations in
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`this paragraph.
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`106. Fitbit admits that the ’377 Patent was prosecuted before the U.S. Patent Office and that
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`certain prior art is cited on the face of the ’377 Patent. Fitbit has insufficient knowledge or
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`information to admit or deny that the U.S. Patent Office “considered the claims of the ’377 patent
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`against the background of prior technology to determine if the claims of the ’377 patent identified
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`a patentable advance over the prior art systems before issuing the patent” or “ conducted searches
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`at least five times in May 2009, August 2010, March 2011, and August 2011 including patents in
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`classifications 600/300, 301 and 428/8” and on that basis denies them. Fitbit denies any remaining
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`allegations in this paragraph
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`107. Denied.
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`108. Denied.
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`109. Denied.
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`110. Denied.
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`111. Denied.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case No.: 1:19-CV-11586-FDS
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 14 of 40
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`112. Denied.
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`113. Denied.
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`114. Denied.
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`115. Denied.
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`116. Denied.
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`117. Fitbit admits that it received a letter from Philips on or around October 10, 2016, which
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`listed the number of the ’377 Patent. Fitbit denies any remaining allegations in this paragraph.
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`118. Denied.
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`119. Denied.
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`120. Fitbit denies that Fitbit has infringed any Philips patent and denies that Philips is entitled
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`DAMAGES
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`to any compensation.
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`121. Denied.
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`Fitbit denies that Philips is entitled to any relief.
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`PRAYER FOR RELIEF
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`FITBIT’S AFFIRMATIVE DEFENSES
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`Fitbit asserts the following affirmative defenses in response to the allegations set forth in
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`Philips’s Complaint. Fitbit undertakes the burden of proof only as to those defenses deemed
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`affirmative defenses by law, regardless of how such defenses are denominated herein. Fitbit
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`reserves the right to assert any additional defenses as they become known during the course of this
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`action or to the extent they are not otherwise deemed affirmative defenses by law.
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`First Affirmative Defense: Non-Infringement
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`1.
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`Fitbit does not directly or indirectly infringe and has not directly or indirectly infringed,
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`either literally or under the doctrine of equivalents, and is not liable for infringement of any valid
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 15 of 40
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`and enforceable claim of the Patents-in-Suit.
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`Second Affirmative Defense: Invalidity
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`2.
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`The Patents-in-Suit are invalid for failure to satisfy the conditions of patentability as
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`specified under 35 U.S.C. §§ 101, 102, 103, 112 and/or any other applicable statutory provisions
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`of Title 35 of the United States Code.
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`Third Affirmative Defense: Equitable Doctrines
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`3.
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`Philips’s claims are barred in whole or in part under the principles of equity, including
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`without limitation, unclean hands, patent misuse, waiver, acquiescence, estoppel, disclaimer,
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`express or implied license, patent exhaustion, and inequitable conduct.
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`Fourth Affirmative Defense: Prosecution History Estoppel
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`4.
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`By reason of the proceedings in the U.S. Patent and Trademark Office during the
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`prosecution of the applications which resulted in the issuance of the Patents-in-Suit, Philips is
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`estopped from claiming a construction of one or more claims of the Patents-in-Suit that would
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`cause any valid claim thereof to cover or include any product manufactured, used, sold, offered
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`for sale, or imported by Fitbit.
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`Fifth Affirmative Defense: Ensnarement
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`5.
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`Philips’s infringement claims are barred by the doctrine of ensnarement. Philips is
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`foreclosed from asserting infringement under the doctrine of equivalents to the extent the scope of
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`such equivalent would ensnare prior art.
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`Sixth Affirmative Defense: Inequitable Conduct
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`The ’233 Patent is unenforceable due to inequitable conduct.
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`The ’233 Patent has a sibling patent, U.S. Patent No. 7,138,902 (“the ’902 Patent”). Both
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`6.
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`7.
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`the ’233 Patent and the ’902 Patent are continuations-in-part of U.S. Patent Appl. No. 09/956,474,
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`which is a continuation of U.S. Patent Appl. No. 09/384,165, which claims priority to U.S.
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 16 of 40
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`Provisional Patent Appl. No. 60/135,862 and U.S. Provisional Patent Appl. No. 60/105,493. The
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`’902 Patent is also a continuation-in-part of an unnumbered patent application that was filed March
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`28, 2002 and is entitled “Method and System for Wireless Tracking,” which claims priority to U.S.
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`Provisional Patent Appl. No. 60/279,401. The ’233 Patent also claims priority to U.S. Patent Appl.
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`No. 10/112,669 filed on March 28, 2002, which claims priority to U.S. Provisional Patent Appl.
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`No. 60/279,401. The ’233 Patent is also a continuation-in-part of PCT/US01/18734. The ’233
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`Patent and the ’902 Patent share essentially the same specification, with only minor typographical
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`differences between the two (e.g., “video exchange” in the ’233 Patent, 11:38, compared to “video
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`exhange” in the ’902 Patent, 11:52).
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`8.
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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. Patent
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`App. No. 10/165,624 (“the ’624 application” or “the ’233 Patent application”)—was initially
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`assigned to Mr. Menard as the inventor, and was later assigned to Royal Thoughts, LLC on July
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`26, 2002. PNA-FB0002251 at 2252. The application that issued as the ’902 Patent—U.S. Patent
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`App. No. 10/490,330 (“the ’330 application” or “the ’902 Patent application”)—was also initially
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`assigned to Mr. Menard as the inventor, and then later assigned to Royal Thoughts, LLC on April
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`10, 2009. Fitbit_19-11586_00084759.
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`9.
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`The ’233 Patent’s 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 same
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`day, June 7, 2002, Mr. Helget and his law firm also filed a PCT application (PCT/US02/17962)
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`(“PCT application”) in the United States designating a number of countries including the United
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`States. Fitbit_19-11586_00083422 at 83485-86. Both the ’233 Patent application and the PCT
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`application claimed priority to the same patent application, U.S. Patent Appl. No. 09/956,474 (“the
`
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 17 of 40
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`parent application”). PNA-FB0001299 at 1300; Fitbit_19-11586_00083422 at 83487.
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`10.
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`The PCT application and the ’233 Patent applications were both filed with identical claims.
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`For example, claim 1 of the ’624 application and claim 1 of the PCT 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
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`having a 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
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`personal device and the second device.
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`11.
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`12.
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`All 56 other claims filed with each of these applications are also identical.
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`Under 35 U.S.C. § 101, an inventor is only entitled to one patent for a particular invention
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`(“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
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`therefor….”) (emphasis added). 35 U.S.C. § 101 provides the basis for a particular type of
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`rejection during prosecution of a patent application referred to as a double patenting rejection.
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`MPEP 804 (Aug. 2001) (“The doctrine of double patenting seeks to prevent the unjustified
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`extension of patent exclusivity beyond the term of a patent.”); see also MPEP 804 (Aug. 2005);
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`FITBIT LLC’S AMENDED ANSWER TO PHILIPS’S
`SECOND AMENDED COMPLAINT
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`Case 1:19-cv-11586-FDS Document 245 Filed 10/05/21 Page 18 of 40
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`MPEP 804 (Aug. 2006). “Before consideration can be given to the issue of double patenting,
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`there must be some common relationship of inventorship and/or ownership of two or more patents
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`or applications.” MPEP 804 (Aug. 2001); see also MPEP 804 (Aug. 2005); MPEP 804 (Aug.
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`2006).
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`13. Where the same invention exists between two different applications, a statutory basis for a
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`double patenting rejection exists under 35 U.S.C. § 101, referred to as “statutory double patenting.”
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`MPEP 804 (Aug. 2001); see also MPEP 804 (Aug. 2005); MPEP 804 (Aug. 2006). That is, such
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`a situation falls directly under the prohibition set forth in 35 U.S.C. § 101 against filing more than
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`one patent on a single invention. Id. In such a case, MPEP 804 instructs examiners to issue
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`provisional statutory double-patenting rejections until the potential statutory double patenting
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`issue has been addressed. See In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re
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`Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966); see also MPEP 804 (Aug. 2001) (“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 one of the
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`applications.”);