Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 1 of 16
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`Plaintiff,
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`Defendant.
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`v.
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`FITBIT LLC,
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`Civil Action No. 1:19-cv-11586-FDS
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`
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`LEAVE TO FILE GRANTED ON
`OCTOBER 14, 2021 (D.I. 247)
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`FITBIT’S SUR-REPLY TO PHILIPS’S
`MOTION TO STRIKE FITBIT’S INEQUITABLE CONDUCT DEFENSE
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 2 of 16
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`III.
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`IV.
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`V.
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`FITBIT’S INEQUITABLE CONDUCT PLEADING WAS TIMELY. ..............................2
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`FITBIT PLAUSIBLY PLEADED MATERIALITY...........................................................3
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`FITBIT’S PLEADING IS SUPPORTED BY THE CASE LAW. ......................................5
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`FITBIT PLAUSIBLY PLEADED INTENT. ......................................................................6
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`FITBIT’S INFECTIOUS UNENFORCEABILITY PLEADING WAS TIMELY
`AND IS CONSISTENT WITH FEDERAL CIRCUIT LAW. ............................................7
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`1.
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`2.
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`3.
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`Fitbit’s Amendment Was Not Untimely. .................................................................7
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`The ’902 Patent Bears An Immediate And Necessary Relation To The
`’233 Patent. ..............................................................................................................8
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`Fitbit Adequately Pleaded Materiality and Intent With Respect to the ’902
`Patent........................................................................................................................9
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`CONCLUSION ..............................................................................................................................10
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`i
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 3 of 16
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`ACCO Brands, Inc. v. PC Guardian Anti-Theft Prod., Inc.,
`592 F. Supp. 2d 1208 (N.D. Cal. 2008) .............................................................................. 9
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`Aschcroft v. Iqbal,
`556 U.S. 662 (2009) ............................................................................................................ 7
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`Asghari-Kamrani v. United Servs. Auto. Ass’n,
`No. 2:15CV478, 2017 WL 553402 (E.D. Va. Jan. 20, 2017) ............................................. 4
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`Baxter Int'l, Inc. v. McGaw, Inc.,
`149 F.3d 1321 (Fed. Cir. 1998)........................................................................................... 9
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`Biles v. Schneider,
`No. 19-CV-48-F, 2019 WL 12498012 (D. Wyo. July 16, 2019) ........................................ 7
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`Consol. Aluminum Corp. v. Foseco Int’l Ltd.,
`910 F.2d 804 (Fed. Cir. 1990)............................................................................................. 8
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`Dayco Prod., Inc. v. Total Containment, Inc.,
`329 F.3d 1358 (Fed. Cir. 2003)....................................................................................... 3, 4
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`Eisai Co., Ltd. v. Dr. Reddy’s Labs., Ltd.,
`No. 03 CIV. 9053 (GEL), 2007 WL 1437834 (S.D.N.Y. May 14, 2007) .......................... 5
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`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)....................................................................................... 5, 6
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`Fitbit LLC v. Philips North America LLC,
`IPR2020-00783, Paper 34 (P.T.A.B. 2021) ........................................................................ 2
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`Fitzgerald v. Codex Corp.,
`882 F.2d 586 (1st Cir. 1989) ............................................................................................... 7
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`Harris Corp. v. Fed. Exp. Corp.,
`No. 6:07-CV-1819-ORL, 2010 WL 2639564 (M.D. Fla. June 29, 2010) .......................... 4
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`Hayes v. CRGE Foxborough, LLC,
`167 F. Supp. 3d 229 (D. Mass. 2016) ................................................................................. 3
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`McKesson Info. Sols., Inc. v. Bridge Med., Inc.,
`487 F.3d 897 (Fed. Cir. 2007)......................................................................................... 3, 4
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`Pharmacia Corp v. Par Pharm., Inc.,
`417 F.3d 1369 (Fed. Cir. 2005)........................................................................................... 8
`
`ii
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 4 of 16
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`Regeneron Pharms., Inc. v. Merus B.V.,
`144 F. Supp. 3d 530 (S.D.N.Y. 2015), aff’d sub nom. Regeneron Pharms., Inc. v.
`Merus N.V., 864 F.3d 1343 (Fed. Cir. 2017) ...................................................................... 4
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`Therasense, Inc. v. Becton, Dickinson and Co.,
`649 F.3d 1276 (Fed. Cir. 2011)........................................................................................... 9
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`RULES
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`Fed. R. Civ. P. 12(a)(4)(A) ............................................................................................................. 2
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`Fed. R. Civ. P. 15 ............................................................................................................................ 7
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`Fed. R. Civ. P. 15(a)(1)(B) ............................................................................................................. 7
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`Fed. R. Civ. P. 9 .............................................................................................................................. 5
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`Fed. R. Civ. P. 9(b) ................................................................................................................... 6, 10
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`37 C.F.R. § 1.56(a)...................................................................................................................... 3, 4
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`REGULATIONS
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`iii
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 5 of 16
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`Philips’s Reply (D.I. 248 (“Reply”) rehashes the arguments from Philips’s original motion
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`and memorandum (D.I. 236; D.I. 237). Those arguments remain unsupported.
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`First, Philips maintains that the Scheduling Order (D.I. 54), and not the Federal Rules of
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`Civil Procedure, governs the timing of Fitbit’s original Answer (D.I. 224). Recognizing that the
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`text of the Scheduling Order refutes that argument, Philips now claims that the “purpose” of the
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`Order should control. Philips’s argument finds no support in any pertinent rule or case law, and is
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`also undermined by Fitbit’s disclosure of its inequitable conduct defense during discovery.
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`Second, Philips repeats its flawed argument that Mr. Helget could not commit inequitable
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`conduct by withholding the ’902 application because the ’902 application was also prosecuted
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`before the same examiner as the ’233 application. Philips’s position is contradicted by the
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`applicable regulations and governing Federal Circuit case law.
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`Third, Philips complains that Fitbit has not provided case law addressing the exact factual
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`circumstances now before this Court. Fitbit has provided supporting case law addressing each
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`substantive issue now in dispute and Philips’s cases are not to the contrary.
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`Fourth, Philips accuses Fitbit of “rank speculation” as to Mr. Helget’s intent in withholding
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`the ’902 application, and argues that an intent to deceive is not “more probable” than simple
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`mistake. Philips’s demand that Fitbit establish the probability—rather than plausibility—of Mr.
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`Helget’s intent misconceives Fitbit’s burden at the pleading stage (particularly considering that
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`Philips’ counsel blocked Mr. Helget’s deposition). Fitbit has pleaded specific factual allegations
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`that permit a reasonable inference of Mr. Helget’s intent to deceive the PTO. That is all that is
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`required.
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`Fifth, Philips takes issue with Fitbit’s allegation that the ’233 Patent is unenforceable under
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`the doctrine of infectious unenforceability, arguing that it is untimely and contrary to law. But
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`1
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 6 of 16
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`Fitbit’s original Answer set forth the complete factual basis for its contention that Mr. Helget’s
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`inequitable conduct with respect to the ’902 Patent renders the ’233 Patent unenforceable.
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`Moreover, Philips’s assertion that the ’233 Patent is somehow immune to infectious
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`unenforceability because it happened to issue prior to the co-pending ’902 Patent is simply
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`incorrect. Mr. Helget’s inequitable conduct in prosecuting the ’902 application bears an immediate
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`and necessary relation to the ’233 Patent and renders the ’233 Patent unenforceable.
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`In short, Fitbit has adequately pleaded every required element of inequitable conduct.
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`Those allegations should be resolved on the merits. Philips’s Motion to Strike should be denied.1
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`I.
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`FITBIT’S INEQUITABLE CONDUCT PLEADING WAS TIMELY.
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`Philips continues to argue that the Scheduling Order, not the Federal Rules, dictates the
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`timing of Fitbit’s Answer. As Fitbit previously explained in its Opposition (D.I. 240 at 5-7), that
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`argument is refuted by the plain language of the Scheduling Order. Federal Rule 12 governs the
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`timing of Fitbit’s Answer and Fitbit complied with that Rule. See Fed. R. Civ. P. 12(a)(4)(A).
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`Philips now instead strains to argue that the purpose, rather than the express language, of
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`the Scheduling Order precludes Fitbit’s Answer. (Reply at 3.) Notably, Philips provides no
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`authority supporting that incorrect proposition. Moreover, even under Philips’s non-textual and
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`overly restrictive approach, Fitbit’s inequitable conduct pleading should not be struck as untimely.
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`Philips acknowledges that Fitbit disclosed its inequitable conduct allegations weeks before the
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`close of fact discovery. (Reply at 2; Opposition at 5-6.) Further, Philips does not identify any
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`plausible prejudice that it will suffer from Fitbit’s pleading. Indeed, beyond Mr. Helget’s
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`1 On October 4, 2021, the PTAB issued a final written decision finding all asserted claims of the
`’233 Patent unpatentable in an IPR. See Fitbit LLC v. Philips North America LLC, IPR2020-
`00783, Paper 34 (P.T.A.B. 2021). Philips has agreed to stay this case related to the ’233 Patent
`pending appeal of the IPR and a joint stipulation or motion to that effect is forthcoming. However,
`to the extent the ’233 patent remains in this case, Philips’s motion remains ripe.
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`2
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 7 of 16
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`deposition—which Fitbit sought in February 2021 and Philips continues to oppose—Philips points
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`only to the need to serve expert reports and summary judgment briefing “all well after the close of
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`fact discovery.” (Reply at 3.) But Philips is not prejudiced by having to address inequitable
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`conduct through expert reports or summary judgment after fact discovery—this is the typical
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`timing in almost every patent case, and requiring a party to confront issues on the merits is not
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`prejudicial. Notably, Philips does not identify any specific prejudice, for example additional
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`discovery it would have sought or litigation strategies it otherwise would have pursued, resulting
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`from Fitbit’s alleged delay. As such, there is no basis to strike Fitbit’s pleading. See Hayes v.
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`CRGE Foxborough, LLC, 167 F. Supp. 3d 229, 242 (D. Mass. 2016) (declining to strike amended
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`pleading where opposing party failed “to point to any specific prejudice caused by the delay”).
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`II.
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`FITBIT PLAUSIBLY PLEADED MATERIALITY.
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`Philips also persists in its unsupported argument that Mr. Helget was relieved of his
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`affirmative duty to disclose the ’902 application during prosecution of the ’233 application because
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`the ’902 application was prosecuted before the same Examiner Pope. Though Philips insists that
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`it is “illogical” to suggest that Mr. Helget could withhold the ’902 application from Examiner Pope
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`(Reply at 3), it cites no authority for that claim. Indeed, Philips’s position is directly contrary to
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`both the clear language of the federal regulations imposing the relevant duty of disclosure and
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`governing Federal Circuit authority. See 37 C.F.R. § 1.56(a); McKesson Info. Sols., Inc. v. Bridge
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`Med., Inc., 487 F.3d 897, 925 (Fed. Cir. 2007); Dayco Prod., Inc. v. Total Containment, Inc., 329
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`F.3d 1358, 1365 (Fed. Cir. 2003).
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`Though Philips attempts to discredit this clear case law by repeatedly emphasizing that
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`these cases pre-date Therasense, it makes no attempt show that Therasense somehow abrogated
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`them. In fact, it did not. See, e.g., Regeneron Pharms., Inc. v. Merus B.V., 144 F. Supp. 3d 530,
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`560 (S.D.N.Y. 2015), aff’d sub nom. Regeneron Pharms., Inc. v. Merus N.V., 864 F.3d 1343 (Fed.
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`3
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 8 of 16
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`Cir. 2017) (citing McKesson and Dayco with approval); Asghari-Kamrani v. United Servs. Auto.
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`Ass’n, No. 2:15CV478, 2017 WL 553402, at *5 (E.D. Va. Jan. 20, 2017) (same). Likewise,
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`Philips’s efforts to distinguish Harris, which explicitly held that “a patentee is not relieved of the
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`duty to disclose co-pending applications when the applications are in front of the same examiner,”
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`are unpersuasive. See Harris Corp. v. Fed. Exp. Corp., No. 6:07-CV-1819-ORL, 2010 WL
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`2639564, at *12 (M.D. Fla. June 29, 2010) (citing McKesson). Philips argues that Harris is
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`inapposite because that case did not involve double patenting rejections. (Reply at 4.) Philips
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`does not explain, however, how that fact is relevant to an applicant’s duty to disclose. An applicant
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`is required to disclose any and all material references or information that would prevent the
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`issuance of a claim—for any reason. 37 C.F.R. § 1.56(a).
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`Finally Philips belabors that, had Mr. Helget complied with his duty and disclosed the ’902
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`application, the ’233 application would have received only a provisional double patenting
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`rejection. (Reply at 3-4.2) Philips’s argument misses the point. As Fitbit previously explained in
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`both its Answer and Opposition, had Mr. Helget disclosed the ’902 application, the examiner
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`would have been required to issue provisional double patenting rejections to both the ’233 and
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`’902 applications. (See Opposition at 12-13.) The applicant would then have been forced to cancel
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`or amend the claims of at least one of those two applications. Fitbit’s Answer sets forth specific
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`facts plausibly establishing that Mr. Helget and the applicant would have had incentives to cancel
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`or amend the claims of the ’233 application—for example because the identical ’902 claims would
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`2 Philips also accuses Fitbit of not “acknowledging [the] provisional nature” of the double
`patenting rejection that would have resulted from disclosure of the ’902 application. (Reply at 4.)
`Philips is incorrect. Fitbit repeatedly and explicitly noted that the avoided double patenting
`rejection would have been “provisional.” (See, e.g., Opposition at 12-13 (“Philips ignores that,
`but for Mr. Helget’s failure to disclose the ’902 application, provisional rejections would have
`issued against both the ’233 and ’902 applications during the time that both were pending.”)
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`4
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 9 of 16
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`have been expected to enjoy a longer term. (See Answer at 30 (¶ 42); Opposition at 13-14.) Thus,
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`the fact that the double patenting rejection would have been provisional is immaterial to Fitbit’s
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`allegations. While Philips complains that Fitbit’s allegations are “rank speculation” that “def[y]
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`logic” and “cannot suffice to meet the requirement of Rule 9” (Reply at 4), Philips again offers no
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`authority supporting those overstated claims, particularly in the face of the aforementioned
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`incentives. In fact, Fitbit’s specific factual pleadings establishing a plausible belief that the
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`applicant would have canceled or amended the claims of the ’233 Patent are all that is required by
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`Rule 9. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1331 (Fed. Cir. 2009).
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`III.
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`FITBIT’S PLEADING IS SUPPORTED BY THE CASE LAW.
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`Philips next takes issue with the fact that Fitbit’s Opposition did not cite a decision with an
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`identical fact pattern to the case at bar.3 (Reply at 5.) The fact that no court has previously
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`confronted precisely the same factual circumstances is irrelevant. Fitbit cited and discussed
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`numerous analogous cases dealing with each substantive issue in dispute. Those decisions—
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`applied to the facts of this case—clearly show that Fitbit has adequately pleaded inequitable
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`conduct and that Philips’s motion to strike should be denied.
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`Philips also continues to rely on the Eisai Company decision. Eisai Co., Ltd. v. Dr. Reddy’s
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`Labs., Ltd., No. 03 CIV. 9053 (GEL), 2007 WL 1437834 (S.D.N.Y. May 14, 2007). As Fitbit
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`previously explained, that case does not support Philips’s arguments. (Opposition at 14-15.)
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`Indeed, if anything, the fact that the inequitable conduct defense in that case was resolved on the
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`merits after a bench trial,4 rather than struck at the pleading stage, militates in favor of Fitbit.
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`3 Notably, while Philips complains that Fitbit did not cite any decisions finding inequitable conduct
`on an identical set of facts, Philips similarly does not cite any factually identical contrary decisions.
`4 Philips incorrectly asserts that Eisai Company “concern[ed] a decision at summary judgement.”
`(Reply at 5.) See Eisai Co., 2007 WL 1437834, at *1 (“The case having been tried to the Court
`without a jury….”).
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`5
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 10 of 16
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`IV.
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`FITBIT PLAUSIBLY PLEADED INTENT.
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`Philips’s Reply confirms that it fundamentally misapprehends what is required at the
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`pleading stage. In particular, Philips accuses Fitbit of “rank speculation” regarding Mr. Helget’s
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`motivations for withholding the ’902 application and argues that none of these motivations “are
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`more probable than a simple mistake.” (Reply at 6.) Similarly, Philips argues that Fitbit’s
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`characterization of Mr. Helget’s improper motivations as “likely” is somehow “telling” that Fitbit
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`has failed to adequately plead intent. (Id.)
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`Philips’s insistence that Fitbit establish that it is “more probable” that Mr. Helget intended
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`to deceive the Patent Office than that he made a mistake—i.e., establish intent by a preponderance
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`of evidence—at the pleading stage is contrary to law. The Federal Circuit has expressly rejected
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`that demand as inconsistent with Rule 9(b)’s express allowance for general pleadings of intent.
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`See Exergen, 575 F.3d at 1329 n.5 (explaining that an inequitable conduct pleading need not
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`establish that an intent to deceive is the single most reasonable inference to survive a motion to
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`dismiss). Moreover, as Fitbit previously explained (Opposition at 18), because Fitbit has set forth
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`the specific facts supporting its belief that Mr. Helget acted with the intent to deceive, Rule 9(b)
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`permits a pleading on “information and belief,” a standard that Fitbit exceeded here. Id. at 1331.
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`Specifically, Fitbit’s Answer explained, in detail: (1) that it is implausible that Mr. Helget
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`repeatedly failed to disclose the ’902 application for more than two years by mistake; (2) the
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`reasons that may have motivated Mr. Helget’s intentional withholding; and (3) the benefits
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`accruing to the patentees and assignees as a result of that conduct. (D.I. 224 at 29-31 (¶¶ 41-43).)
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`These allegations go far beyond the assertion that Mr. Helget merely failed to disclose the ’902
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`application—they plausibly establish Mr. Helget did so with the specific intent to deceive the
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`Patent Office. That is all that is required at this stage, particularly given that Fitbit has not yet had
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`the opportunity to depose Mr. Helget and explore his motivations firsthand. Indeed, Philips
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`6
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 11 of 16
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`provides the refuting authority in the opening paragraph of its Reply—“[t]o survive a motion to
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`dismiss, a complaint must contain sufficient factual matter, accepted as true, to state a claim to
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`relief that is plausible on its face…. The plausibility standard is not akin to a probability
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`requirement….” (Reply at 1 (quoting Aschcroft v. Iqbal, 556 U.S. 662, 678 (2009).)
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`V.
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`1.
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`INFECTIOUS UNENFORCEABILITY PLEADING WAS
`FITBIT’S
`TIMELY AND IS CONSISTENT WITH FEDERAL CIRCUIT LAW.
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`Fitbit’s Amendment Was Not Untimely.
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`Philips argues that Fitbit’s amendment expressly stating that the ’233 Patent is
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`unenforceable under the doctrine of “infectious unenforceability” (see D.I. 245 at 31 (¶ 45)), is
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`untimely. As an initial matter, Fitbit’s non-substantive amendment5 was made solely to avoid
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`raising insignificant and unnecessary disputes before this Court. (See Ex. 1.) That amendment
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`was timely made under Rule 15, which permits amendments within twenty-one days of a
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`responsive pleading or motion—here, Philips’s motion to strike. See Fed. R. Civ. P. 15(a)(1)(B);
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`see also Biles v. Schneider, No. 19-CV-48-F, 2019 WL 12498012, at *1 (D. Wyo. July 16, 2019).
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`Further, as the amendment itself notes, Fitbit’s original pleading set forth the complete
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`factual basis for Fitbit’s allegation that the ’233 Patent is unenforceable under the doctrine of
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`infectious unenforceability by virtue of Mr. Helget’s inequitable conduct in prosecuting the ’902
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`Patent. Fitbit’s original Answer merely failed to recite the words “infectious unenforceability” in
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`haec verba. But pleadings do not require magic words. See, e.g., Fitzgerald v. Codex Corp., 882
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`F.2d 586, 589 (1st Cir. 1989)(“[I]t is not necessary that a legal theory be pleaded in the complaint
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`if plaintiff sets forth sufficient factual allegations to state a claim showing that he is entitled to
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`relief under some viable legal theory.”) (internal quotation omitted). Accordingly, Fitbit’s
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`amendment does not raise a “new defense” and does not prejudice Philips for the same reasons set
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`5 The addition of ¶ 45 is the only change between Fitbit’s Answer and Amended Answer.
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`7
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 12 of 16
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`forth above. The original August 24 Answer adequately pleaded infectious unenforceability.
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`2.
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`The ’902 Patent Bears An Immediate And Necessary Relation To The ’233
`Patent.
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`Philips next argues that Fitbit’s pleading of infectious unenforceability is incorrect as a
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`matter of law because the ’233 application issued before the co-pending ’902 application. But
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`Philips relies on a number of cases that address a slightly different question, purportedly holding
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`that “the doctrine only infects patents that issued after the purported inequitable conduct occurred.”
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`(Reply at 8.) That nuance is important, because the difference goes to precisely what Fitbit alleges
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`here. In particular, Fitbit alleges that Mr. Helget committed inequitable conduct with respect to
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`the ’902 Patent by failing to disclose the co-pending ’233 application—inequitable conduct that
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`occurred before the ’233 Patent issued. (D.I. 224 at 20-24 (¶¶ 20-33).) In other words, Fitbit
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`pleaded that the ’233 Patent issued after the inequitable conduct occurred, just as Philips demands.
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`The cases that Philips cites do not preclude a finding of unenforceability simply because
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`the ’233 Patent happened to issue before the ’902 Patent.6 The essential inquiry in determining
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`whether inequitable conduct associated with one patent can render another patent unenforceable is
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`whether that conduct bears an “immediate and necessary relation” to the enforcement of the patent
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`at issue. See Consol. Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 810-11 (Fed. Cir. 1990).
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`Where courts have found that inequitable conduct associated with “a later patent…cannot have
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`infected [an] earlier patent,” see ACCO Brands, Inc. v. PC Guardian Anti-Theft Prod., Inc., 592
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`6 Philips cites Pharmacia Corporation for the proposition that “the Federal Circuit has rejected
`arguments suggesting that later inequitable conduct could ‘infect’ earlier-filed applications.”
`(Reply at 9 (citing Pharmacia Corp v. Par Pharm., Inc., 417 F.3d 1369 (Fed. Cir. 2005).) But that
`case did not deal with allegations of infectious unenforceability. See id. at 1374 (“Par has not
`asserted on appeal that the ’504 patent is unenforceable under a general unclean hands theory; i.e.,
`that a broad pattern of inequitable conduct transfers inequitable conduct from one patent to
`another.”) Rather, the defendant asserted that the existence of a terminal disclaimer alone was
`sufficient to link the patents and render the earlier issued patent unenforceable.
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`8
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 13 of 16
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`F. Supp. 2d 1208, 1224 (N.D. Cal. 2008), that finding has merely been a reflection of the fact that
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`the patents at issue did not have an immediate and necessary relation.
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`For example, the ACCO court, relying on the Federal Circuit’s decision in Baxter, found
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`that the later-issued patent could not infect the earlier-issued patent because the later claims were
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`not “antecedent” to the claims defendant alleged unenforceable.7 Id. (citing Baxter Int'l, Inc. v.
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`McGaw, Inc., 149 F.3d 1321, 1332 (Fed. Cir. 1998)). In Baxter, the Federal Circuit found that the
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`claims at issue were not antecedent because they “were drawn to an entirely different invention”
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`and should not be held “unenforceable…merely because [they] were improperly included in an
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`application with other patentable inventions that were ultimately held unenforceable for
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`inequitable conduct.” Id. That, of course, is not the case here because the ’233 Patent and ’902
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`Patent are not directed to different inventions—they share entirely identical claims. (D.I. 224 at
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`20-21 (¶¶ 21-22).) Moreover, the patents were filed on the same day and claim the same priority
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`date through the same priority chain. (Id. at 16-17 (¶¶ 7-11).) The mere happenstance that the
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`’233 patent issued prior to the ’902 Patent does not suffice to protect an otherwise unenforceable
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`patent. See, e.g., Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1292 (Fed. Cir.
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`2011) (“As an equitable doctrine, inequitable conduct hinges on basic fairness.”)
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`3.
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`Fitbit Adequately Pleaded Materiality and Intent With Respect to the ’902
`Patent.
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`Finally, Philips alleges that Fitbit failed to adequately plead materiality and intent with
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`respect to Mr. Helget’s inequitable conduct in prosecuting the ’902 application. The factual
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`allegations underlying Fitbit’s pleading of inequitable conduct with respect to the ’902 Patent are
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`7 To the extent that ACCO holds that inequitable conduct associated with a later-issued patent
`cannot, under any circumstances, render an earlier-issued patent unenforceable, Fitbit respectfully
`submits that the case was wrongly decided and relies upon a misreading of Baxter. In any event,
`that out-of-circuit case is not binding on this Court.
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`9
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 14 of 16
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`the very same as those supporting Fitbit’s pleading with respect to the ’233 Patent, and for the
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`same reasons are sufficient. Specifically, Mr. Helget committed inequitable conduct by
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`withholding the ’233 application, a co-pending application with identical claims that would have
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`resulted in the same provisional double patenting rejection and the same requirement to amend or
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`cancel one or both of the identical claim sets. (D.I. 224 at 20-23 (¶¶ 20-30).) Mr. Helget failed to
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`disclose the ’233 Patent for a period of years to ensure that the ’902 Patent, which was expected
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`to enjoy a longer term, would issue. (Id. at 23-24 (¶¶ 31-33).) In doing so, Mr. Helget secured
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`twice the intellectual property for his clients and insulated that property from invalidation through
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`redundant patenting. (Id. at 30-31 (¶¶ 42-43).) As described extensively above and in Fitbit’s
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`Opposition, those allegations satisfy the Rule 9(b) pleading standard with respect to the ’902
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`Patent.
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`For the foregoing reasons, Fitbit respectfully requests that the Court deny Philips’s Motion
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`CONCLUSION
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`to strike Fitbit’s inequitable conduct defense.
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`Dated: October 14, 2021
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`By:
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` /s/ David J. Shaw
`David J. Shaw (pro hac vice)
`dshaw@desmaraisllp.com
`DESMARAIS LLP
`1701 Pennsylvania Ave., Suite 200
`Washington, D.C. 20006
`Telephone: (202) 451-4900
`Facsimile: (202) 451-4901
`
`Karim Z. Oussayef (pro hac vice)
`koussayef@desmaraisllp.com
`Leslie M. Spencer (pro hac vice)
`lspencer@desmaraisllp.com
`Brian D. Matty (pro hac vice)
`bmatty@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
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`10
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 15 of 16
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`
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`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`
`Ameet A. Modi (pro hac vice)
`amodi@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
`
`Gregory F. Corbett (BBO # 646394)
`gcorbett@wolfgreenfield.com
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02110
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`
`Attorneys for Fitbit, Inc.
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`11
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`Case 1:19-cv-11586-FDS Document 249 Filed 10/14/21 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`I hereby certify that the foregoing document has been filed through the CM/ECF system and will
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`be sent electronically to the registered participants as identified on the Notice of Electronic Filing
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`(NEF) and paper copies will be sent to those indicated as non-registered participants on October
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`14, 2021.
`
`
`
`
`
`
`/s/ Gregory F. Corbett
`Gregory F. Corbett
`
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`