Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 1 of 16
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`
`PHILIPS NORTH AMERICA LLC,
`
`v.
`
`FITBIT, INC.,
`
`Plaintiff,
`
`Defendant.
`
`
`
`Civil Action No. 1:19-cv-11586-FDS
`
`LEAVE TO FILE GRANTED ON
`OCTOBER 14, 2021 (Dkt. 247)
`
`
`REPLY BRIEF IN SUPPORT OF PLAINTIFF’S MOTION
`TO STRIKE FITBIT’S INEQUITABLE CONDUCT DEFENSE
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 2 of 16
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`TABLE OF CONTENTS
`
`Fitbit’s Original Inequitable Conduct Pleading, and the Amendment of October 5,
`2021, Remain Untimely ...................................................................................................... 2
`
`Fitbit’s Allegations of Inequitable Conduct During Prosecution of the ’233 Patent
`Are Not Plausible ................................................................................................................ 3
`
`Fitbit Does Not Cite a Single Case Where Inequitable Conduct Was Preminsed on
`Lack of Disclosure of a Co-Pending Application to the Same Examiner Handling
`Both Applications Such That a Provisional Double Patenting Rejection Might Be
`Triggered ............................................................................................................................. 5
`
`Fitbit Cannot Substitute Rank Speculation for Pleading Facts in Support of a Specific
`Intent to Deceive the Patent Office ..................................................................................... 6
`
`Fitbit’s New Allegation of Reverse Infectious Unenforceability of the ’233 Patent
`Due to Purported Inequitable Conduct in the Later-Issued ’902 Patent Also Cannot
`Survive Rule 9(b) ................................................................................................................ 8
`
`A.
`
`B.
`
`C.
`
`The Amendment Was Untimely ............................................................................. 8
`
`The Pleading Fails as a Matter of Law ................................................................... 8
`
`There Was No Plausible Inequitable Conduct During the Prosecution of the
`’902 Patent for the Same Reasons As With Respect To the ’233 Patent .............. 10
`
`
`
`
`I.
`
`II.
`
`III.
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`IV.
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`V.
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`
`
`
`
`i
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`

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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 3 of 16
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`ACCO Brands, Inc v. Pc Guardian Anti-Theft Prods.,
`592 F. Supp. 2d 1208 (N.D. Cal. 2008) ................................................................................ 9, 10
`
`Akron Polymer Container Corp. v. Exxel Container, Inc.,
`148 F.3d 1380 (Fed. Cir. 1998)............................................................................................... 4, 5
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) .................................................................................................................... 1
`
`Bell Atlantic Corp. v. Twombly,
`550 U.S. 544 (2007) .................................................................................................................... 1
`
`Dayco Prod., Inc. v. Total Containment, Inc.,
`329 F.3d 1358 (Fed. Cir. 2003)............................................................................................... 4, 5
`
`Duhn Oil Tool, Inc. v. Cooper Cameron Corp.,
`609 F. Supp. 2d 1090 (E.D. Cal. 2009)....................................................................................... 9
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)........................................................................................... 5, 6, 7
`
`Ferguson Beauregard/Logic Controls Div. of Dover Res., Inc. v. Mega Sys., LLC,
`No. 99-CV-437, slip op. at 10 (E.D. Tex. Aug. 14, 2000) .......................................................... 5
`
`Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC,
`350 F.3d 1327 (Fed. Cir. 2003)............................................................................................... 6, 7
`
`Guardent Health, Inc. v. Foundation Medicine, Inc.,
`No. Civil Action No. 17-1616-LPS-CJB, Civil Action No. 17-1623-LPS-CJB, 2020 WL
`2477522 (D. Del. 2020) .............................................................................................................. 9
`
`Harris Corp. v. Fed. Exp. Corp.,
`No. 6:07-CV-1819-ORL, 2010 WL 2639564 (M.D. Fla. June 29, 2010) .................................. 4
`
`King Auto., Inc. v. Speedy Muffler King, Inc.,
`667 F.2d 1008 (CCPA 1981) .................................................................................................. 6, 7
`
`Pharmacia Corp. v. PAR Pharm., Inc.,
`417 F.3d 1369 (Fed. Cir. 2005)................................................................................................... 9
`
`
`
`
`ii
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`

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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 4 of 16
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`Rules
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`Fed. R. Civ. P. 8 .............................................................................................................................. 1
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`Fed. R. Civ. P. 9 ...................................................................................................................... 1, 2, 4
`
`iii
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`

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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 5 of 16
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`Fitbit does not (and cannot) deny that its inequitable conduct pleading—essentially an
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`allegation of fraud—is subject to a heightened standard under Fed. R. Civ. P. 9(b). Yet, Fitbit’s
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`Opposition only demonstrates the implausibility of its allegations and how they fail to meet even
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`the pleading requirements of Fed. R. Civ. P. 8, let alone the heightened standards of Rule 9(b). See
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“To survive a motion to dismiss, a complaint must
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`contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its
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`face.’ . . . The plausibility standard is not akin to a ‘probability requirement,’ but it asks for more
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`than a sheer possibility that a defendant has acted unlawfully. Where a complaint pleads facts that
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`are ‘merely consistent with’ a defendant’s liability, it ‘stops short of the line between possibility
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`and plausibility of “entitlement to relief.”’”) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S.
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`544, 556 (2007)) (emphasis added; internal citations omitted).
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`Perhaps recognizing the deficiency of its original pleading, Fitbit has amended its Answer
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`to allege an additional basis for inequitable conduct on a theory of reverse infectious
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`unenforceability. 1 Basically, the allegation is that, to the extent Mr. Helget did not commit
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`inequitable conduct during prosecution of the ’233 Patent, the ’233 Patent is still purportedly
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`unenforceable because Mr. Helget allegedly committed inequitable conduct during prosecution of
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`the later-issued (now-cancelled) ’902 Patent. As discussed in more detail below, there could not
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`have been inequitable conduct during prosecution of the ’902 Patent for many of the same reasons
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`that there was none during prosecution of the ’233 Patent. The allegation is also untimely for the
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`same reasons discussed in Fitbit’s original motion. What is more, Fitbit’s attempt to argue that any
`
`
`1 While Philips objects to the amendment on the basis of timeliness in view of the scheduling order in this matter, as
`explained in the parties’ Joint Motion for Leave to File a Reply Brief and Sur-Reply Brief and Joint Stipulation
`Relating Thereto (Dkt. 244), to the extent the pleading is not untimely, Philips does not otherwise object to the
`amendment. However, Philips believes that the additional theory of inequitable conduct added by the amendment
`concerning infectious unenforceability should be stricken along with the rest of Fitbit’s inequitable conduct pleadings
`for the reasons stated in Philips’s original Motion and this Reply.
`
`1
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`

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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 6 of 16
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`such later-in-time inequitable conduct during the prosecution of the ’902 Patent “infects” the
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`earlier-issued ’233 Patent fails as a matter of law as the Federal Circuit and many district courts
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`have rejected such allegations of reverse infectious unenforceability.
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`At base, Fitbit asks that this court substitute a qualitative analysis (e.g., whether Fitbit’s
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`pleading is plausible, and if so, whether it pleads facts, materiality, and the specific intent to
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`deceive the U.S. Patent Office with the necessary rigor of Rule 9(b)) with a quantitative one
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`focused on the number of paragraphs it was able to conjure up. (See, e.g., Dkt. 240 at 1 (noting
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`how Fitbit’s allegations span 38 paragraphs).) Of course, the length of Fitbit’s pleading does not
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`matter if its substance rings hollow.
`
`I.
`
`FITBIT’S ORIGINAL INEQUITABLE CONDUCT PLEADING, AND THE
`AMENDMENT OF OCTOBER 5, 2021, REMAIN UNTIMELY
`
`Fitbit does not deny that it first disclosed its inequitable conduct theory weeks before the
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`scheduled end of fact discovery via a subpoena to Mr. Helget on February 4, 2021—having never
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`raised the defense in any way shape or form before that. Nor does Fitbit deny that it only amended
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`its interrogatory responses to include allegations of inequitable conduct for the first time weeks
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`later, on February 26, 2021. Instead, Fitbit merely notes that it disclosed inequitable conduct
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`“during fact discovery,” and fails to provide any explanation as to why it delayed until the end of
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`fact discovery to disclose an unpled defense that was premised entirely on publicly available file
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`histories that Fitbit has had in its possession since the onset of this litigation.
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`Fitbit’s attempt to rely on the Federal Rules of Civil Procedure as justifying its belated
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`inequitable conduct pleading, despite the scheduling order in this case, strains credulity. Even if
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`Fitbit was not required to serve a literal pleading under the rules, Fitbit was well aware of its need
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`to disclose its defenses early in this case in accordance with the scheduling order. Notably, Fitbit
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`did not merely wait until the end of fact discovery to allege invalidity and non-infringement, and
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`2
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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 7 of 16
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`it did not take the position that it need not disclose any defenses until it was required to serve an
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`Answer. To the contrary, Fitbit detailed its defenses in interrogatory responses, as well as the
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`contentions served by the parties. While Fitbit notes that the Scheduling Order (Dkt. 54) only
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`barred motions for leave to amend the pleadings after March 24, 2020, it overlooks the purpose
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`of this deadline, which was to prohibit raising new claims and defenses after the deadline without
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`a showing good cause shown.2 (See Dkt. 54 at 3.) To date, Fitbit has not suggested any good cause
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`for its late disclosure of inequitable conduct and—because the defense is premised entirely on
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`publicly available information—there is none. At most, Fitbit argues that Philips is not prejudiced
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`by Fitbit’s late disclosed theory of inequitable conduct, but that could not be farther from the truth.
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`The defense will require an additional fact depositions, as well as the service of expert reports and
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`discovery and eventually summary judgment briefing—all well after the close of fact discovery.
`
`II.
`
`FITBIT’S ALLEGATIONS OF INEQUITABLE CONDUCT DURING
`PROSECUTION OF THE ’233 PATENT ARE NOT PLAUSIBLE
`
`As explained in detail in Philips’s Motion, the facts as alleged by Fitbit do not support a
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`finding of inequitable conduct for a number of reasons, including: 1.) the same examiner, David
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`Pope, was responsible for both the ’233 and ’902 Patents—it is illogical to suggest that Mr. Pope
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`was not aware of the co-pending applications and that applicants intentionally “failed to disclose”
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`a co-pending application that he himself was the examiner of; and 2.) a hypothetical provisional
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`double patenting rejection would not have prevented the claims of the ’233 Patent from issuing as
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`they did. (See Dkt. 237 at 13-15.) Fitbit does not actually dispute these facts. Instead, Fitbit focuses
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`on the purported “non-disclosure” and now refers to the hypothetical provisional double patenting
`
`
`2 Fitbit’s Opposition suggests that Judge Boal found the scheduling order inapplicable to the timing of the disclosure
`of Fitbit’s inequitable conduct defense. (See Dkt. 240 at 5.) However, Judge Boal made no such finding. At most, she
`acknowledged the “unusual” posture of the issue which—if anything—reflects that the purpose of the scheduling
`order’s deadline was to disclose claims and defenses in this case early on. (See Dkt. 241-2 at 8:2-13) Regardless, Judge
`Boal’s ultimate decision had nothing to do with the Scheduling Order in this case one way or the other.
`
`3
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`

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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 8 of 16
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`rejection as simply a “double patenting rejection” without acknowledging its provisional nature.
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`Fitbit also speculates as to potential amendments that could have been made to the claims, or that
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`applicants could have withdrawn the claims from issuance all togther, such that the claims would
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`have never issued. However, such rank speculation finds no factual support, defies logic, and
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`cannot suffice to meet the requirements of Rule 9.
`
`Fitbit cites to a pre-Therasense Middle District of Florida Case, Harris Corp. v. Fed. Exp.
`
`Corp., No. 6:07-CV-1819-ORL, 2010 WL 2639564, *12 (M.D. Fla. June 29, 2010) and additional
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`cases cited therein, for the proposition that “a patentee is not entitled to assume that an examiner
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`recalls all co-pending applications, and a patentee is not relieved of the duty to disclose co-pending
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`applications when the applications are in front of the same examiner.” (See Dkt. 240 at 9) However,
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`the cited portion of Harris, which predates Therasense, concerned disclosure of a potentially
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`material co-pending re-examination proceeding—not any form of double patenting rejection.
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`Fitbit also cites the PTO regulations that impose a duty of disclosure on applicants and their
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`attorneys. At the end of the day, the existence of a duty to disclose does not obviate the need for
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`Fitbit to plausibly plead materiality and intent—which remain lacking and which cannot be
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`demonstrated by the mere existence of a duty to disclose.
`
`Fitbit also cites Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365 (Fed.
`
`Cir. 2003) and Akron Polymer Container Corp. v. Exxel Container, Inc., 148 F.3d 1380, 1382
`
`(Fed. Cir. 1998) for the proposition that a “double patenting rejection” would be material to
`
`patentability. Notably absent from this contention, or any discussion in these cited cases, is any
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`suggestion that a provisional double patenting rejection would be material to patentability. And
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`indeed, for the reasons explained in Philips’s Motion, the hypothetical provisional double
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`patenting rejection that forms the basis for Fitbit’s inequitable conduct arguments would not have
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`4
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`

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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 9 of 16
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`been material to patentability as the claims of the ’233 Patent would have issued just as they did.
`
`(See Dkt. 237 at 12-15.)
`
`III.
`
`FITBIT DOES NOT CITE A SINGLE CASE WHERE INEQUITABLE
`CONDUCT WAS PREMINSED ON LACK OF DISCLOSURE OF A CO-
`PENDING APPLICATION TO THE SAME EXAMINER HANDLING BOTH
`APPLICATIONS SUCH THAT A PROVISIONAL DOUBLE PATENTING
`REJECTION MIGHT BE TRIGGERED
`
`At the end of the day, Fitbit cites no cases where inequitable conduct was successfully pled
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`on the basis that a prosecuting attorney failed to disclose the existence of a co-pending application
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`to the same examiner that was handling said co-pending application, such that a provisional double
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`patenting rejection might have been triggered. In Dayco and Akron Polymer, both of which are
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`also pre-Therasense cases, the co-pending applications at issue were before different examiners
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`and, as discussed above, did not concern provisional double patenting rejections. See Dayco, 329
`
`F.3d at 1361 (“The ’196 family of applications and the applications for the patents-in-suit were
`
`assigned to two different examiners by the Patent and Trademark Office (‘PTO’) . . . . The
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`applications that issued as patents-in-suit were assigned to examiner David Arola and the ’196
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`family of applications was assigned to examiner Eric Nicholson.”); Akron Polymer, 148 F.3d at
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`1381 (“Both applications were prosecuted before different examiners in the PTO . . . .”)
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`Fitbit criticizes Philips’s reliance on Eisai Company, yet it remains the closest case to the
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`facts at issue here because it is the only case cited by either party that squarely addresses the import
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`of a hypothetical provisional double patenting rejection in the context of inequitable conduct. That
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`Eisai Company concerns a decision at summary judgment, rather than at the pleading stage, only
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`demonstrates how important it is for courts to strike or dismiss deficient inequitable conduct
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`pleadings early in a case, and not wait until summary judgment, so as to avoid “unleash[ing] the
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`mischief of the defense” unnecessarily. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d
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`5
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`

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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 10 of 16
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`1312, 1328 (Fed. Cir. 2009) (quoting Ferguson Beauregard/Logic Controls Div. of Dover Res.,
`
`Inc. v. Mega Sys., LLC, No. 99-CV-437, slip op. at 10 (E.D. Tex. Aug. 14, 2000)).
`
`IV.
`
`FITBIT CANNOT SUBSTITUTE RANK SPECULATION FOR PLEADING
`FACTS IN SUPPORT OF SPECIFIC INTENT TO DECEIVE
`
`Fitbit’s Opposition demonstrates that Fitbit has failed to plead any plausible facts on which
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`to reasonably infer that Mr. Helget ever had the specific intent to deceive the patent office. (See
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`Dkt. 237 at 15-21.) As explained in Philips’s Motion, courts routinely strike inequitable conduct
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`claims where intent is merely premised on speculation that arises from the purported failure to
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`disclose. (See id. at 16-17.) This is particularly so in light of the fact that the provisional double
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`patenting rejection that could have hypothetically been raised during prosecution of the ’233 Patent
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`would have been easily curable. (See id. at 17-18.)
`
`Fitbit’s Opposition (see Dkt. 240 at 16-18) does nothing more than speculate as to a variety
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`of implausible motivations for the purported non-disclosure of the co-pending application that led
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`to the ’902 Patent—none of which are more probable than a simple mistake and all of which find
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`no basis in fact. Indeed, the way Fitbit characterizes its pleading of specific intent in its Opposition
`
`is telling. Fitbit describes how “Mr. Helget’s failure to disclose the ’902 application was likely
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`intentional rather than inadvertent” and refers to his “likely motivations.” (Id. at 16 (emphasis
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`added).) This is not enough to successfully plead inequitable conduct under Exergen. See Exergen,
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`575 F.3d at 1328-29 (“[A]lthough ‘knowledge’ and ‘intent’ may be averred generally, a pleading
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`of inequitable conduct under Rule 9(b) must include sufficient allegations of fact from which a
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`court may reasonably infer that a specific individual (1) knew of the withheld material information
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`or of the falsity of the material misrepresentation, and (2) withheld or misrepresented this
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`information with a specific intent to deceive the PTO.”). The Federal Circuit in Exergen went on
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`to explain how speculative allegations of specific intent—without supporting facts—do not
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`6
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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 11 of 16
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`suffice. For example, the Federal Circuit described how, in Ferguson Beauregard and King
`
`Automotive, a pleading that simply speculated as to the intent behind statements made to the PTO
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`was not enough to comply with Rule 9(b). See Exergen, 575 F.3d at 1328 (citing Ferguson
`
`Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1343-44
`
`(Fed. Cir. 2003) and King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1009-11 (CCPA
`
`1981)).
`
`Additionally, Philips’s motion also contained many examples of failed inequitable conduct
`
`pleadings premised on similar, speculative allegations of intent that were, like Fitbit’s pleading
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`here, based on guesswork and not facts. Indeed, that Fitbit’s pleading speculates as to myriad
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`possible “motivations” for the purported nondisclosure—none of which are more likely than a
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`simple mistake—only demonstrates the lack of any actual pled facts. For example, Fitbit speculates
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`that Mr. Helget may have been motivated for at least the following reasons: 1.) to “ensure that the
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`’233 patent would issue with unaltered claims”; 2.) “doubling the number of patents that could be
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`sold or licensed at a time when the applicant was shopping its portfolio;” and 3.) “insulating [the]
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`patents from invalidation by redundantly patenting the same alleged invention.” (Dkt. 240 at 17
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`(citing Dkt. 224 at ¶¶ 42-43).) Were Fitbit able to identify actual facts from which intent could be
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`inferred, it would have. Instead, it conjured up allegations out of thin air with no factual support.
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`What is more, these three allegations fail to plausibly demonstrate any specific intent to
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`deceive—even if such speculation were enough to comply with Rule 9(b) (and it is not). Allegation
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`#1 simply defies logic. As explained in Philips’s Motion (and not disputed by Fitbit), a provisional
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`double patenting rejection (which is all that disclosure of the co-pending claims in the ’902 Patent
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`could have triggered) would not have required an amendment to the claims, so there is no plausible
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`way that Mr. Helget “avoided” such an amendment via the purported non-disclosure. (See Dkt.
`
`7
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`

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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 12 of 16
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`237 at 13-15.) Allegation #2 lacks any factual support—there is no conceivable additional “value”
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`attributable to a second, identical, issued patent (surely Fitbit does not identify any), as
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`demonstrated by the logical fallacy that is Allegation #3—redundant, identical claims could not
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`“insulate” the ’233 and ’902 Patents from invalidity; indeed, the ’902 was eventually disclaimed
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`in view of the ’233 Patent’s identical claims.
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`V.
`
`FITBIT’S NEW ALLEGATION OF REVERSE INFECTIOUS
`UNENFORCEABILITY DUE TO PURPORTED INEQUITABLE CONDUCT
`DURING PROSECUTION OF THE ’902 PATENT FAILS
`
`The Amendment Was Untimely
`
`A.
`Perhaps recognizing the precariousness of its pleading of inequitable conduct with regard
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`to the ’233 Patent, Fitbit’s Opposition alleged for the first time that the ’233 Patent was also
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`unenforceable due to inequitable conduct committed during the prosecution of the ’902 Patent
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`pursuant to the doctrine of infectious unenforceability. After Philips objected to Fitbit having
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`raised this argument for the first time in its Opposition, Fitbit filed an amended Answer on October
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`5, 2021, explicitly making this allegation for the first time in an actual pleading. (See Dkt. 245 at
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`¶ 45.) The amendment, like the original pleading, is untimely in view of the scheduling order in
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`this case for all the reasons explained in Philips’s original motion, and the pleading—along with
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`this new amendment—should be stricken for all the reasons stated in Philips’s original motion (see
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`Dkt. 237 at 8-9) and in Section I, above.
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`The Pleading Fails as a Matter of Law
`
`B.
`To the extent not untimely, the pleading must fail as a matter of law. As explained in the
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`very case cited by Fitbit in support of the doctrine of infectious unenforceability, the doctrine only
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`“infects” patents that issued after the purported inequitable conduct occurred:
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`Pursuant to this infectious unenforceability doctrine, inequitable
`conduct associated with one patent may render a related patent
`unenforceable—so long as the inequitable conduct at issue bears ‘an
`
`8
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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 13 of 16
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`immediate an necessary relation’ to the enforcement of the related
`patent. An immediate and necessary relation requires that the
`inequitable conduct that occurred earlier in the chain of issued
`patents must be related to the targeted claims of the ultimately-
`issued patent or patents sought to be enforced.
`
`Guardent Health, Inc. v. Foundation Medicine, Inc., No. Civil Action No. 17-1616-LPS-CJB,
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`Civil Action No. 17-1623-LPS-CJB, 2020 WL 2477522, *5 (D. Del. 2020) (emphasis added;
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`internal quotations and citations omitted). Indeed, the Federal Circuit has rejected arguments
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`suggesting that later inequitable conduct could “infect” earlier-filed applications. See Pharmacia
`
`Corp. v. PAR Pharm., Inc., 417 F.3d 1369, 1374-75 (Fed. Cir. 2005) (“Par asserts that a terminal
`
`disclaimer can bind two related patents together so that inequitable conduct in procuring a later
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`prosecuted patent will automatically infect an earlier issued patent. The district court correctly
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`rejected that assertion.”) Other district courts have followed suit, finding that “the [infectious
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`unenforceability] doctrine only applies if the ‘infected’ claim is an antecedent of the claim in
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`question” and that, as a matter of law, “[a] later patent . . . cannot have infected [an] earlier patent.”
`
`ACCO Brands, Inc v. Pc Guardian Anti-Theft Prods., 592 F. Supp. 2d 1208, 1224 (N.D. Cal.
`
`2008); see also Duhn Oil Tool, Inc. v. Cooper Cameron Corp., 609 F. Supp. 2d 1090, 1101 (E.D.
`
`Cal. 2009) (“[A]n otherwise validly issued patent cannot be made unenforceable because of
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`inequitable conduct occurring years later in connection with the issuance of other patents.”).
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`Accordingly, Fitbit’s reverse infectious unenforceability arguments—like those raised by others
`
`before them—must be rejected as “contrary to the rationale for the doctrine of infectious
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`unenforceability” as set forth by the Federal Circuit. ACCO Brands, 592 F. Supp. 2d at 1224.
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`Here, there is no question that any purported inequitable conduct during the prosecution of
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`the ’902 Patent could not have affected the then-issued ’233 Patent. As discussed in Philips’s
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`motion, and not disputed by Fitbit, at most the examiner would have issued a provisional double
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`patenting rejection in both the applications that led to the’233 Patent and ’902 Patents prior to
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`9
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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 14 of 16
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`either of them issuing. (See Dkt. 237 at 13-14.) Once the claims in the ’233 Patent were otherwise
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`in condition for allowance, the examiner would have withdrawn this provisional rejection in the
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`application that led to the ’233 Patent and it would have issued—just as it did, with the claims as
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`they currently exist. (Id. at 14.) The crux of Fitbit’s alternative reverse infectious unenforceability
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`theory is that, by not disclosing the issued claims of the ’233 Patent during prosecution of the ’902
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`Patent, Mr. Helget purportedly committed inequitable conduct by avoiding a (non-provisional)
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`double patenting rejection during prosecution of the ’902 Patent. As explained below, Fitbit’s
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`pleading fails to sufficiently plead materiality and intent in this regard. Yet, assuming arguendo
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`that Fitbit’s pleading sufficed to allege some form of inequitable conduct during prosecution of
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`the ‘902 Patent, a predicate to such an allegation would be the issuance of the ’233 Patent. There
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`is no way that such conduct—which occurred after the issuance of the ’233 Patent—could
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`“infect” a separate patent that issued before the alleged inequitable conduct—it simply did not
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`occur “earlier in the chain” and has no relation to the issued claims of the ’233 Patent. See ACCO
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`Brands, 592 F. Supp. 2d at 1224 (“The later patent . . . cannot have infected the earlier patent.”).
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`C.
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`There Was No Plausible Inequitable Conduct During the Prosecution of the
`’902 Patent for the Same Reasons As With Respect To the ’233 Patent
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`With the exception that Fitbit’s new theory of reverse infectious unenforceability relies on
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`the potential avoidance of a (non-provisional) double patenting rejection during prosecution of the
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`’902 Patent as opposed to a hypothetical provisional double patenting rejection, the remainder of
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`the allegation, including with respect to specific intent to deceive the U.S. Patent office, remains
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`the same. Accordingly, the pleading with respect to reverse infectious unenforceability fails to
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`plead materiality and the specific intent to deceive the patent office for all the same reasons that
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`Fitbit’s pleading with respect to its allegations of inequitable conduct during prosecution of the
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`’233 Patent fails. (See Dkt. 237 at 12-21 and Sections II-IV, above.)
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`10
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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 15 of 16
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`Dated: October 14, 2021
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`Respectfully Submitted,
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` /s/ Ruben J. Rodrigues
`Lucas I. Silva (BBO 673,935)
`Ruben J. Rodrigues (BBO 676,573)
`John Custer (BBO 705,258)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Suite 2500
`Boston, MA 02199-7610
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`lsilva@foley.com
`rrodrigues@foley.com
`jcuster@foley.com
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`Eley O. Thompson (pro hac vice)
`FOLEY & LARDNER LLP
`321 N. Clark Street
`Suite 2800
`Chicago, IL 60654-5313
`Phone: (312) 832-4359
`Fax: (312) 832-4700
`ethompson@foley.com
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`Counsel for Plaintiff
`Philips North America LLC
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`Case 1:19-cv-11586-FDS Document 248 Filed 10/14/21 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was filed with
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`the Court through the ECF system and that a copy will be electronically served on registered
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`participants as identified on the Notice of Electronic Filing.
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`By: /s/ Ruben J. Rodrigues
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`12
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