Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 1 of 19
`
`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
`
`
`MEMORANDUM IN SUPPORT OF PLAINTIFF’S MOTION TO
`STRIKE PORTIONS OF NOVEMBER 16, 2021 EXPERT REPORT
`OF JOSEPH A. PARADISO AS TO PREVIOUSLY WITHHELD
`PRIOR ART AND INDEFINITNESS DEFENSES
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 2 of 19
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................................... 1
`
`II. BACKGROUND ..................................................................................................................... 2
`
` I.
`
`III. LEGAL STANDARDS ........................................................................................................... 3
`
`IV. ARGUMENT........................................................................................................................... 5
`
`A.
`
`Dr. Paradiso and Fitbit Should be Precluded from Relying on the Fourteen Prior
`
`Art References Not Previously Disclosed as Prior Art to the ’377 Patent.............. 5
`
`i.
`
`Fitbit Has No Reasonable Basis for Its Failure to Disclose the Fourteen Prior Art
`
`References ............................................................................................................... 6
`
`ii.
`
`Fitbit Cannot Avoid its Disclosure Obligations By Characterizing the Undisclosed
`
`Prior Art References as Showing the “State of the Art” ......................................... 7
`
`iii.
`
`Fitbit’s Reference to Potential IPR Proceedings Did Not Satisfy Local Rule
`
`16.6(d)(4) With Respect to the Vaisanen Reference. ............................................. 9
`
`iv.
`
`Philips Would Be Prejudiced if Fitbit Was Permitted to Assert These New Prior
`
`Art References ...................................................................................................... 11
`
`B.
`
`Dr. Paradiso and Fitbit Should be Precluded from Arguing that Any of the
`
`Asserted ’377 Patent Claims are Invalid as Indefinite .......................................... 11
`
`V. CONCLUSION ..................................................................................................................... 14
`
`
`
`
`
`
`
`
`
`
`
`i
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 3 of 19
`
`TABLE OF AUTHORITIES
`
`
`
`BioCell Tech. LLC v. Arthro-7, 2013 WL 12131282 (C.D. Cal. Apr. 16, 2013) ......................... 14
`CardioNet, LLC v. InfoBionic, Inc., 2020 WL 4559934 (D. Mass. June 22, 2020) ....................... 4
`Emcore Corp. v. Optium Corp., 2009 WL 3381800 (W.D. Penn. Oct. 16, 2009) .......................... 8
`INAG, Inc. v. Richar, LLC, 2021 WL 1582766 (D. Nev. Apr. 22, 2021) ..................................... 14
`Life Techs. Corp. v. Biosearch Techs., Inc., 2012 WL 4097740 (N.D. Cal. Sept. 17, 2012) ..... 4, 8
`O2 Micro Int’l. Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006) ............... 4, 7
`Pactiv Corp. v. Mutisorb Techx., Inc., 2013 WL 2384249 (N.D. Ill. May 29, 2013) .................... 8
`Philips North Am. LLC v. Fitbit LLC, 2021 WL 5417103 (D. Mass. Nov. 19 2021)..................... 4
`Volterra Semiconductor Corp. v. Primarion, Inc., 796 F.Supp.2d 1205 (N.D. Cal. 2011) ............ 8
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 4 of 19
`
`I.
`
`INTRODUCTION
`
`Plaintiff Philips North America LLC (“Philips”) respectfully submits this Memorandum in
`
`support of its Motion to Strike portions of the Expert Report of Joseph A. Paradiso, Ph.D. (the
`
`“Paradiso Report”) Regarding Invalidity of U.S. Patent No. 8,277,377 (the “‘377 Patent”) dated
`
`November 16, 2021.
`
`The Paradiso Report introduces for the first time and relies on new prior art references that
`
`were never disclosed by Defendant Fitbit, Inc. (“Fitbit”) as prior art to U.S. Patent No. 8,277,377
`
`(the “’377 Patent”) as required by Local Rule 16.6(d)(4). These prior art patents were therefore
`
`not subject to fact discovery. Additionally, the Paradiso Report introduces, for the first time, a
`
`new indefiniteness theory of invalidity that Fitbit never disclosed as also required by Local Rule
`
`16.6(d)(4). The Court’s scheduling order set a clear deadline for Plaintiffs to serve their Rule
`
`16.6(d)(4) disclosures of invalidity contentions1 so they could be tested in fact discovery and prior
`
`proceedings, and the Local Rules clearly require that all prior art and invalidity theories Fitbit
`
`intends to rely on be disclosed in those contentions. While Fitbit amended its Rule 16.6(d)(4)
`
`disclosures in earlier proceedings during fact discovery, Fitbit withheld its newly revealed theories
`
`and prior art and never sought to amend its invalidity contentions preferring to surprise Philips at
`
`this later stage.
`
`This introduction of new prior art and a new indefiniteness argument not only violates the
`
`Court’s orders and the Local Rules, but also unfairly prejudices Philips. Philips was not given
`
`notice that this prior art would be asserted against the ’377 Patent and thus did not have an
`
`opportunity to conduct fact discovery regarding these references. Philips never had the opportunity
`
`to test the prior art, address collateral issues in discovery, obtain testimony from the named
`
`
`1 See Dkt. 54, Scheduling Order, at 1 (“[T]he parties shall complete all patent-related disclosures contemplated by
`Local Rule 16.6(d)(1) and (4) by April 15, 2020.”)
`
`1
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 5 of 19
`
`applicants, etc. Likewise, Philips did not have notice of Fitbit’s new indefiniteness argument. In
`
`this regard, Philips was again denied the opportunity for fact discovery including to ask Fitbit’s
`
`technical people and other third parties including the inventor about Fitbit’s ridiculous theory.
`
`Fitbit’s delay tactic suppressed the argument so it could not be tested. Thus, Philips asks the Court
`
`to maintain the present schedule and strike the portions of the Paradiso Report that discuss this
`
`previously undisclosed prior art and indefiniteness argument. Fitbit is very concerned about facing
`
`a Jury trial on its infringement, especially since there is significant evidence of willfulness to
`
`enhance damages. Fitbit’s late attempts to derail the proceedings should not be entertained.
`
`II.
`
`BACKGROUND
`
`Philips has already waited over two years to bring this case to trial. On July 22, 2019,
`
`Philips filed a patent infringement case against Fitbit in the District Court of the District of
`
`Massachusetts asserting that Fitbit infringes a number of U.S. Patents, including the ’377 patent,
`
`which is presently the only patent at issue. See Dkt. 1. The ’377 Patent is directed to health,
`
`wellness, and fitness monitoring technology, and Philips accuses various Fitbit activity trackers
`
`and smart watch products of infringement.
`
` On March 13, 2020, Fitbit served its Invalidity and Non-Infringement Contentions in
`
`accordance with Local Rule 16.6(d)(4). See Ex. 1. On December 21, 2020, Fitbit served Amended
`
`Invalidity and Non-Infringement Contentions. See Ex. 2. Fitbit’s initial and amended contentions
`
`total a staggering 9,002 pages, and in addition to the apparent sandbagging, Fitbit identified thirty-
`
`nine separate pieces of prior art (along with thousands of obviousness combinations) that Fitbit
`
`“intended” to assert against the ’377 Patent, and neither the initial nor the amended contentions
`
`identified any basis for indefiniteness of the ’377 Patent, despite identifying several indefiniteness
`
`arguments for one of the other asserted patents. See Ex. 1 at 11-13, 72-91; Ex. 2 at 12-14, 74-97.
`
`Well after the close of fact discovery and facing an impending jury trial, on November 16, 2021,
`
`2
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 6 of 19
`
`Fitbit served Philips with the Paradiso Report which in addition to discussing prior art that was
`
`properly identified as prior art to the ’377 Patent by Fitbit’s initial and amended invalidity
`
`contentions (which Philips is not seeking to strike), the Paradiso Report identified and discussed
`
`fourteen (14) previously undisclosed prior art references to the ’377 Patent and a previously
`
`withheld theory that the ’377 Patent was indefinite. See Ex. 3.
`
`Philips had no notice that Fitbit was intending to assert any of these prior art references
`
`against the ’377 Patent or that Fitbit intended to assert that the ’377 Patent was invalid as indefinite
`
`until Dr. Paradiso’s expert report was served, well after the service of its L.R. 16.6(d)(4)
`
`disclosures, after fact discovery, after the depositions of Fitbit technical persons and the inventor,
`
`after third-party discovery, and without seeking amendment thereto. Fitbit said nothing about its
`
`stealth attempt to inject new theories into the case, apparently attempting to mislead Philips and
`
`then argue as it has before that Philips waited too long and waived its opportunity.
`
`As described in further detail below, Fitbit’s failure to disclose these prior art references
`
`and invalidity theory do not comport with Local Rule 16.6(d)(4), have prejudiced Philips, and
`
`should therefore be stricken.
`
`III. LEGAL STANDARDS
`Local Rule 16.6(d)(4) governs invalidity contentions and states:
`
`
`
`
`
`the accused infringer shall make the following disclosures:
`. . .
`Invalidity claim charts identifying all prior art that such party contends anticipates
`or renders obvious the patent claims identified by the patentee.
`. . .
`Any asserted grounds of invalidity based on patentability under 35 U.S.C. §
`101, indefiniteness under 35 U.S.C § 112, or lack of enablement or written
`description under 35 U.S.C. § 112 of any of the asserted claims.
`. . .
`Documents sufficient to support any asserted invalidity defense.
`
`3
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 7 of 19
`
`(emphasis supplied.) Local Rule 16.6(d)(5) provides that these preliminary patent-related
`
`disclosures “may be amended and supplemented only be leave of court upon a timely showing of
`
`good cause.”
`
`This Court has noted that the mandated disclosure of Local Rule 16.6 is intended to “require
`
`parties to crystallize their theories of the case early in the litigation and to adhere to those theories
`
`once they have been disclosed” and that “[i]f the parties were not required to amend their
`
`contentions promptly after discovering new information, the contentions requirement would be
`
`virtually meaningless as a mechanism for shaping the conduct of discovery and trial preparation.”
`
`Philips North Am. LLC v. Fitbit LLC, No. 19-11586, 2021 WL 5417103, at *3 (D. Mass. Nov. 19
`
`2021) (Dkt. 254) (quoting O2 Micro Int’l. Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366
`
`n. 12 (Fed. Cir. 2006)). The above-quote resulted from Fitbit rigorously advocating that the Local
`
`Rule contentions should not be permitted to be changed and should result in theories being
`
`excluded from the case. This approach is now law of the case.
`
`This District and the Federal Circuit have held that preclusion of evidence not timely
`
`disclosed is the appropriate remedy for failure to comply with disclosure obligations under patent
`
`local rules. CardioNet, LLC v. InfoBionic, Inc., No. 1:15-cv-11803, 2020 WL 4559934, at *8 (D.
`
`Mass. June 22, 2020) (vacated and remanded on other grounds by 2021 WL 5024388 (Fed. Cir.
`
`October 29, 2021)); see also O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355,
`
`1366 (Fed. Cir. 2006); Life Techs. Corp. v. Biosearch Techs., Inc., No. C 12-00852, 2012 WL
`
`4097740, at *2 (N.D. Cal. Sept. 17, 2012) (striking citations to prior art references in expert report
`
`that were not included in defendants’ invalidity contentions).
`
`4
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 8 of 19
`
`IV. ARGUMENT
`Dr. Paradiso and Fitbit Should be Precluded from Relying on the Fourteen
`A.
`Prior Art References Not Previously Disclosed as Prior Art to the ’377
`Patent.
`
`Local Rule 16.6(d)(4) requires that “all prior art” and “[a]ny asserted grounds of
`
`invalidity based on patentability under 35 U.S.C. § 101” must be disclosed. The Paradiso Report
`
`discusses the following fourteen new prior art references as grounds to find invalidity under §
`
`101, such prior art not being disclosed in Fitbit’s initial or amended invalidity contentions as to
`
`the ’377 Patent (the portions of the Paradiso Report that discuss these references is noted in
`
`parenthesis):
`
`• Nasa Bioinstrumentation system (“BIS”) (¶ 169)
`• Defense Advanced Research Projects Agency (“DARPA”) research (¶ 170)
`• U.S. Patent No. 5,772,586 (“Heinonen”)2 (¶¶ 207-208)
`• U.S. Patent No. 6,093,146 (“Filangeri”) (¶¶ 209-211)
`• U.S. Patent No. 6,416,471 (“Kumar”) (¶¶ 212-213)
`• U.S. Patent No. 6,014,432 (“Modney”) (¶¶ 214-216)
`• U.S. Patent No. 5,689,825 (“Averbuch”) (¶¶ 237-238)
`• U.S. Patent No. 6,311,058 (“Wecker”) (¶¶ 246-248)
`• U.S. Patent No. 6,493,758 (“McLain”) (¶¶ 249-250)
`• U.S. Patent No. 5,752,976 (“Duffin”) (¶¶ 302-303)
`• U.S. Patent No.6,198,394 (“Jacobsen”) (¶¶ 304-305)
`• U.S. Patent No. 5,574,979 (“West”) (¶ 306)
`• 1999 Bluetooth specification (¶ 307)
`
`
`2 To the extent that Fitbit argues that the Heinonen reference was properly disclosed because Fitbit’s contentions
`quoted parts of the ’377 specification that referenced Heinonen, this does not satisfy the disclosure requirements of
`Local Rule 16.6(d)(4) and “[i]t would be improper to allow an expert to rely on undisclosed prior art merely because
`it was cited in an asserted patent.” Pactiv Corp. v. Multisorb Techs., Inc., No. 10 C 461, 2013 WL 2384249, at *2
`(N.D. Ill. May 29, 2013)
`
`5
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 9 of 19
`
`• “Vaisanen” (¶¶ 489-494, 727, 730-732, 747, 755-757, 9873, as well as the fourth
`row of the table in paragraph 318 and the seventh row of the table that appears on
`page 146)
`Fitbit has never sought leave from the Court (as required by Local Rule 16.6(d)(5)) to
`
`amend its invalidity contentions to identify these references as prior art to the ’377 Patent, nor
`
`has Fitbit identified why it would have good cause to do so. Additionally, Fitbit has as of yet
`
`provided no adequate justification for its failure to comply with the Local Rules, its attempts to
`
`stealthily inject the issues without notice, or withhold the defenses while prejudicing Philips in
`
`discovery.
`
`i.
`
`Fitbit Has No Reasonable Basis for Its Failure to Disclose
`the Fourteen Prior Art References
`Fitbit’s initial and amended invalidity contentions did not adequately disclose any of the
`
`fourteen prior art references identified above that were newly discussed and relied upon in the
`
`Paradiso Report. The tables underneath the heading “Prior art to the ’377 patent” in both Fitbit’s
`
`initial and amended invalidity disclosures identify thirty-nine prior art references, none of which
`
`are the fourteen at issue in this motion. See Ex. 1 at 11-13; Ex. 2 at 12-14. At least as to nine of
`
`the new prior art references, Fitbit clearly knew of them since Fitbit referenced them in relation
`
`to other patents no longer part of the upcoming trial.4 These patents were excluded from
`
`consideration in connection with the ’377 patent. Thus, Fitbit had no justification for not
`
`identifying these references as potential prior art to the ’377 Patent in its original contentions. In
`
`
`3 Philips notes that paragraph 987 of the Paradiso Report includes discussion of prior art other than Vaisanen.
`Should the Court grant this motion, Philips would work with Fitbit to accept an amended version of this paragraph
`that removes any reference to Vaisanen.
`4 Specifically, the Nasa Biobelt and West references were disclosed as prior art to the ’233 and ’958 patents (see,
`e.g., Ex. 1 at 4-6, 9-11; Ex. 2 at 4-6, 10-11); the Heinone, Filanger, Kumar, and Modney references were disclosed
`as prior art to the ’958 patent (see, e.g., Ex. 1 at 9; Ex. 2 at 10); the Duffin and Bluetooth Specification references
`were disclosed as prior art to the ’233 patent (see, e.g., Ex. 1 at 4-6; Ex. 2 at 4-6); and the Jacobsen reference was
`disclosed as prior art to the ’233 and ’007 patents (see, e.g., Ex. 1 at 4-5, 7; Ex. 2 at 4-7).
`
`6
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 10 of 19
`
`fact, Fitbit’s initial and amended contentions did identify several other pieces of prior art as
`
`being potential prior art for multiple patents,5 which demonstrates that Fitbit could have done the
`
`same for these pieces of prior art, but chose not to thereby misleading Philips at best and
`
`intentionally sandbagging Philips at worst.
`
`The Patent Local Rules “are designed to require parties to crystallize their theories of the
`
`case early in the litigation and to adhere to those theories once they have been disclosed.” O2
`
`Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). It would be
`
`unfair and unduly burdensome on Philips to be required to assume every reference identified by
`
`Fitbit as prior art for at least one patent could potentially be asserted as prior art to any of the
`
`others. The Local Rule does not permit for such distorted reading of the Local Rule as Fitbit
`
`now contends in meet and confer.
`
`ii.
`
`Fitbit Cannot Avoid its Disclosure Obligations By
`Characterizing the Undisclosed Prior Art References as
`Showing the “State of the Art”
`As discussed above, Fitbit did not identify the fourteen prior art references in its
`
`invalidity contentions as required by Local Rule 16.6(d)(4). Fitbit attempts to skirt the Local
`
`Rules clear disclosure requirement by framing this prior art as only showing the “state of the
`
`art”. In doing so, Fitbit apparently hopes to make what are nothing more than back-door
`
`obviousness arguments under the guise of showing the “state of the art.” The Local Rule is not
`
`ambiguous; it requires “Any asserted grounds” and “all prior art” to be disclosed – no
`
`exceptions.
`
`
`5 For example, U.S. Patent No. 5,598,849 (“Browne”) was identified as prior art to the ’007 and ’377 patents.
`
`7
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 11 of 19
`
`Thirteen of the fourteen new prior art references appear in the section of the Paradiso
`
`Report entitled “Technology Background of the ’377 Patent and State of the Art”.6 In his
`
`discussion of these references, Dr. Paradiso opines that these references demonstrate that certain
`
`aspects of the ’377 Patent “were well known”. See, e.g., Ex. 3 at ¶¶ 206-216 (discussing how the
`
`Heinonen, Filangeri, Kumar, and Modney references provided examples of the “prior art [being]
`
`replete with references directed to more general interactive physiological and patient
`
`monitoring” and that “a POSITA would have looked to such interactive physiological and patient
`
`monitoring systems for improving and evaluating interactive exercise monitoring systems.”).
`
`These opinions by Dr. Paradiso appear to be an attempt to allow for back-door obviousness
`
`opinions by characterizing the undisclosed prior art as only showing the “state of the art”.
`
`However, courts have rejected attempts by accused infringers of circumnavigating local
`
`patent rules by discussing so-called “background art” or art that was only meant to show “the
`
`state of the art”. See, e.g., Life Techs. Corp. v. Biosearch Techs., Inc., No. C 12-00852, 2012 WL
`
`4097740, at *2 (N.D. Cal. Sept. 17, 2012) (striking portions of expert report that discussed
`
`alleged “background prior art” that had not been adequately disclosed); Volterra Semiconductor
`
`Corp. v. Primarion, Inc., 796 F.Supp.2d 1205, 1119 (N.D. Cal. 2011) (rejecting defendants’
`
`arguments that they should be allowed to present non-disclosed references to the jury to provide
`
`“a complete picture of the state of the prior art at the time of the alleged invention”); Emcore
`
`Corp. v. Optium Corp., No. 7-326, 2009 WL 3381800 (W.D. Penn. Oct. 16, 2009) (holding that
`
`“state of the art” is a subset of prior art and thus must be disclosed under the local patent rules);
`
`Pactiv Corp. v. Mutisorb Techx., Inc., 2013 WL 2384249, at *2 (N.D. Ill. May 29, 2013)
`
`
`6 The fourteenth reference (Vaisanen) is used by Dr. Paradiso explicitly in an obviousness combination. See, e.g.,
`Ex. 3 at ¶ 272.
`
`8
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 12 of 19
`
`(holding that “parties should not be able to circumvent the disclosure requirements of our Local
`
`Patent Rules by offering such materials as background”).
`
`Further, in its invalidity contentions, Fitbit made assertions regarding the state of the art
`
`using the prior art that it did disclose.7 Thus, Philips had no notice that Fitbit would attempt to
`
`assert still more prior art references as purportedly showing the “state of the art”.
`
`iii.
`
`Fitbit’s Reference to Potential IPR Proceedings Did Not
`Satisfy Local Rule 16.6(d)(4) With Respect to the
`Vaisanen Reference.
`During the Meet and Confer process leading up to the filing of this Motion, Fitbit tacitly
`
`acknowledged that the Vaisanen reference was not mentioned in their contentions but tried to
`
`argue that Fitbit still satisfied Local Rule 16.6(d)(4)’s requirements by adding the following
`
`language into their initial and amended contentions: “Fitbit incorporates the papers, prior art
`
`references, and other exhibits and arguments in any inter partes review(s) that any party may file
`
`challenging any claims of the Asserted Patents.” Ex. 1 at 4; Ex. 2 at 4. Specifically, Fitbit now
`
`points to the IPR petition they filed on April 15, 2020, which included the Vaisanen reference as
`
`part of an obviousness combination against the ’377 Patent. Notably, neither Fitbit’s initial
`
`invalidity contentions (served on March 13, 2020, prior to the filing of the IPR petition) nor
`
`Fitbit’s amended invalidity contentions (served on December 12, 2020 after the filing of the IPR
`
`petition) specifically referenced this IPR petition beyond the general language quoted above.
`
`And indeed, referencing potential IPR challenges does not comport with Local Rule’s
`
`16.6(d)(4) specific requirements that Fitbit provide “[i]nvalidity claim charts identifying all prior
`
`
`7 See, e.g., Ex. 1 at 77-78 (“Moreover POSITAS at the time would have readily appreciated the well-known and
`widespread use of providing telephone and web-access features in a wireless device, as well as the associated
`benefits and advantages of their use. As discussed above, references such as Dean, Loch, Mault 178, Theimer, and
`Ausems disclose or suggest web-enables wireless phones, and “increasingly, wireless telephones [were] being
`combined with PDAs[.]” Ausems, 1:27-29.”) (emphasis added); see generally Ex. 1 at 74-90; Ex. 2 at 76-96.
`
`9
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 13 of 19
`
`art that [the accused infringer] contemplates anticipates or renders obvious the patent claims
`
`identified by the patentee” and that Fitbit identify “each [obviousness] combination and the
`
`reason to combine the references” and for each combination “specifically where in the
`
`combination of references each element of each asserted claim can be found.”
`
`Further, the fact that the Vaisanen reference was asserted in an obviousness combination
`
`in an IPR petition against the ’377 Patent after Fitbit’s initial’ contentions were served means
`
`that Philips could not have been put on notice that Fitbit intended to assert the Vaisanen
`
`reference in this matter. Indeed, if such language were considered to adequately disclose the
`
`Vaisanen reference (which had not yet even been asserted in an IPR) to do so, parties could
`
`always avoid the Local Rules’ requirement that good cause be shown to amend contentions by
`
`including this language in their initial contentions and then bringing an IPR petition that included
`
`whatever additional prior art the party sought to rely on.
`
`Additionally, Fitbit’s amended contentions only attempts to incorporate “any inter partes
`
`review(s) that any party may file”, which would not include the IPR challenge already filed by
`
`Fitbit prior to serving its amended contentions. And, Fitbit certainly could have specifically
`
`referred to the Vaisanen reference in its amended contentions or referred to the specific IPR
`
`petition that Fitbit itself had brought, but chose not to. Indeed, the primary prior art reference that
`
`Dr. Paradiso uses Vaisanen with (Hickman) was disclosed in Fitbit’s initial and amended
`
`contentions as potentially being combined with dozens of other pieces of prior art, none of which
`
`were Vaisanen. See Ex. 1 at 73; Ex. 2 at 75. Fitbit also had many months during which to seek
`
`amendment to its contentions after having served its IPR petition—and never sought leave to
`
`amend. Having made the conscious decision to not include the Vaisanen reference in its initial
`
`or amended contentions, Fitbit must now adhere to this decision.
`
`10
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 14 of 19
`
`iv.
`
`Philips Would Be Prejudiced if Fitbit Was Permitted to Assert
`These New Prior Art References
`
`Philips would be prejudiced if Fitbit were permitted to assert these new prior art
`
`references against the ’377 Patent. Specifically, Philips did not receive notice that Fitbit intended
`
`to assert any of these fourteen prior art references against the ’377 Patent until the Paradiso
`
`Report was served well after the close of fact discovery, thus preventing Philips from conducting
`
`any fact discovery on these references. Philips was prejudiced from developing third-party
`
`discovery about the references, Philips was prevented from asking technical discovery of Fitbit
`
`regarding the application of the references, and the inventor did not address the patents, among
`
`many other avenues of discovery that were unilaterally forestalled by Fitbit’s failure to comply
`
`with the Local Rules. Fitbit’s attempt to create backdoor obviousness arguments using
`
`previously undisclosed prior art under the guise of showing the “state of the art” prejudices
`
`Philips as it had no notice of these new arguments.
`
`Additionally, Fitbit’s initial and amended contentions asserted thirty-nine separate prior
`
`art references against the ’377 Patent, of which Dr. Paradiso discussed eighteen.8 See Ex. 1 at 11-
`
`13; Ex. 2 at 12-14. To allow Fitbit to assert another fourteen references as prior art to the ’377
`
`Patent would mean that nearly half of the references discussed by Dr. Paradiso were not properly
`
`disclosed in Fitbit’s invalidity contentions.
`
`B.
`
`Dr. Paradiso and Fitbit Should be Precluded from Arguing that Any of the
`Asserted ’377 Patent Claims are Invalid as Indefinite
`
`Fitbit’s initial and amended invalidity contentions failed to identify any basis for
`
`indefiniteness of the ’377 Patent. Despite this failure, in paragraph 1031 of the Paradiso Report,
`
`
`8 This ignores the fact that of these references, Fitbit identified fifteen of them as primary references, each of which
`could be combined with dozens of other references resulting in literal thousands of potential combinations. See Ex. 1
`at 72-90; Ex. 1 at 74-96.
`
`11
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 15 of 19
`
`Dr. Paradiso opines that “If claim 1 is, in fact, interpreted such that it can be performed by more
`
`than one server (i.e., two or more servers)–as it appears that Philips may believe–then, in my
`
`opinion, claim 1 is indefinite.” Ex. 3 at ¶ 1031. In the same paragraph Dr. Paradiso goes on to
`
`claim that “And if claim 1 is indefinite, then all of the other ’377 patent asserted claims (i.e.,
`
`claims 4-6, 9, and 12) are also indefinite because they each depend, directly or indirectly, from
`
`claim 1.” Id.
`
`Local Rule 16.6(d)(4)(F) requires that accused infringers identify “[a]ny asserted grounds
`
`of invalidity based on . . . indefiniteness under 35 U.S.C. § 112.” However, not only did Fitbit’s
`
`initial and supplemental contentions not identify this particular indefiniteness argument, they did
`
`not identify any basis for indefiniteness of the ’377 Patent. In contrast, Fitbit did identify
`
`multiple indefiniteness arguments for the ’007 Patent, which demonstrates that Fitbit knew of its
`
`obligation to identify these arguments, but chose not to identify any for the ’377 Patent. See Ex.
`
`1 at 90-91; Ex. 2 at 96-97.
`
`Fitbit has never sought from the Court (as required by Local Rule 16.6(d)(5)) to amend
`
`its invalidity contentions to identify this new invalidity argument, nor has Fitbit identified why it
`
`would have good cause to do so. Additionally, Fitbit has as of yet provided no adequate
`
`justification for its failure to comply with the Local Rules.
`
`To the extent that Fitbit argues that it did not have notice of Philips’s interpretation of the
`
`claim language at issue as allowing for more than one server, this argument fails because claim
`
`1’s language clearly covers multiple servers. Specifically, the server referred to in limitation 1(a)
`
`(“downloading an application . . . from a remote server”) does not have to be the same server
`
`referred to in limitation 1(g) (“sending the exercise-related information to an internet server”) as
`
`they are referred to with open ended articles (“a remote server” and “an internet server”). The
`
`12
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 16 of 19
`
`server referred to twice in limitation 1(h)9 (with the definite article “the”) refers to the same
`
`server that limitation 1(g) referred to as it involves that server performing a calculation based on
`
`the exercise-related information that was sent to the server in limitation 1(g).10 Thus, the claim
`
`language itself refers to at least two servers by different names – a “remote server” and an
`
`“internet server.”
`
`Further, Fitbit’s argument is not credible in light of the fact that Dr. Paradiso admits that
`
`“Philips’s infringement contentions seem to suggest that Philips may be reading claim 1 to cover
`
`a situation where elements 1.a, 1.g, and 1.h are not all met by the same server”. Paradiso Report
`
`at 1030. And in fact, no other reading of Philips’s infringement contentions is possible as they
`
`clearly demonstrate how limitations 1(a), 1(g), and 1(h) are met by multiple servers. Specifically,
`
`Philips’s infringement charts demonstrate how limitation 1(a) is met by the downloading of the
`
`Fitbit App from a remote server (i.e. Google Play Store or Apple App Store). See, e.g., Ex. 4
`
`(Exhibit 24 to 2020-01-31 Plaintiff Philips North America LLC’s L.R. 16.6(d)(1) Disclosures) at
`
`2; Ex. 5 (Exhibit 24 to 2020-05-15 Plaintiff Philips North America LLC’s First Supplemental
`
`L.R. 16.6(d)(1) Disclosures) at 2. Philips’s infringement charts also clearly demonstrate how
`
`limitations 1(g) and 1(h) are met by the uploading of exercise-related information to and
`
`downloading of calculated responses from Fitbit’s servers (which are obviously different from
`
`the Google Play Store and Apple App Store) during syncs. See, e.g., Ex. 4 at 20-27; Ex. 5 at 16-
`
`20.
`
`Thus, Fitbit was on notice that the claims allow for multiple separate servers at least by
`
`the January 31, 2020 filing of Philips’s infringement contentions. Facing a jury trial without any
`
`
`9 “receiving a calculated response from the server, the response associated with a calculation performed by the
`server based on the exercise-related information”
`10 Further, both the “server” referred to in limitation 1(a) and the “server” referred to in limitations 1(g) and 1(h) can
`be an array of servers as demonstrated by the specification. See ’377 Patent at 8:45-51.
`
`13
`
`

`

`Case 1:19-cv-11586-FDS Document 260 Filed 12/13/21 Page 17 of 19
`
`realistic non-infringement or invalidity defenses, Fitbit in desperation fabricated its new theory
`
`that this somehow makes the claims indefinite. Other than the impending Jury trial, Fitbit cannot
`
`reasonably explain