Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 1 of 26
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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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`v.
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`FITBIT, LLC,
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`
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`
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`Defendant.
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`
`
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`Civil Action No. 1:19-cv-11586-FDS
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`
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`DEFENDANT FITBIT LLC’S MEMORANDUM IN OPPOSITION TO PHILIPS’
`MOTION TO STRIKE PORTIONS OF THE NOVEMBER 16, 2021
`EXPERT REPORT OF JOSEPH A. PARADISO (DKT. 259)
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`

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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 2 of 26
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`
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`TABLE OF CONTENTS
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`I.
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`II.
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`III.
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`INTRODUCTION ...............................................................................................................1
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`LEGAL STANDARDS .......................................................................................................2
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`FITBIT’S RELIANCE ON THE REMAINING DISPUTED REFERENCES
`SHOULD NOT BE STRICKEN .........................................................................................3
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`Page
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`1.
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`2.
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`3.
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`Factual Background .................................................................................................3
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`Fitbit’s Reliance On Vaisanen Was Disclosed And Does Not Prejudice
`Philips ......................................................................................................................5
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`Fitbit’s Reliance On The Other Prior Art References Subject to Philips’
`Motion Did Not Need To Be Disclosed, Was Disclosed In All But One
`Instance, And In Either Case Does Not Prejudice Philips .......................................6
`
`a.
`
`b.
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`c.
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`The Local Rules Do Not Require Disclosure Of References Merely
`Used To Show The State Of The Art And Fitbit Is Not Attempting
`To Assert A “Backdoor” Obviousness Argument .......................................7
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`Fitbit Disclosed All But One Of The Remaining Disputed
`References ..................................................................................................11
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`Philips’ Claims Of Prejudice Ring Hollow ................................................13
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`IV.
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`PHILIPS’ VAGUE INFRINGEMENT CONTENTIONS AND FAILURE TO
`NOTIFY FITBIT THAT THE PARTIES DISPUTE THE SCOPE OF CLAIM 1
`NECESSITATED DR. PARADISO’S INDEFINITENESS OPINION ............................14
`
`1.
`
`2.
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`Factual Background ...............................................................................................14
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`Dr. Paradiso’s Indefiniteness Opinion Was Disclosed As Soon As It Was
`Discovered And Should Not Be Stricken ..............................................................18
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`CONCLUSION ..............................................................................................................................20
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`i
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 3 of 26
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`TABLE OF AUTHORITIES
`
`Page(s)
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`
`CASES
`
`Allergan, Inc. v. Teva Pharms. USA, Inc.,
`No. 2:15-CV-1455-WCB, 2017 U.S. Dist. LEXIS 225041 (E.D. Tex. Aug. 3,
`2017) ............................................................................................................................. 9, 10
`
`Apple, Inc. v. Samsung Electronics Co., Ltd.,
`932 F.Supp.2d 1076 (N.D. Cal. 2013) ........................................................................ 10, 20
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015)........................................................................................... 9
`
`Berkheimer v. HP Inc.,
`890 F.3d 1369 (Fed. Cir. 2018)........................................................................................... 8
`
`Digital Reg. of Texas, LLC v. Adobe Systems Inc.,
`No. CV 12–01971–CW (KAW), 2014 WL 1653131 (N.D. Cal. Apr. 24, 2014) ........... 2, 8
`
`ePlus, Inc. v. Lawson Software, Inc.,
`700 F.3d 509 (Fed. Cir. 2012)........................................................................................... 20
`
`Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc.,
`No. C 03-1431 SBA, 2006 U.S. Dist. LEXIS 90856 (N.D. Cal. May 5, 2006) ................. 6
`
`Fujifilm Corp. v. Motorola Mobility LLC,
`No. 12-cv-03587-WHO, 2015 U.S. Dist. LEXIS 21413 (N.D. Cal Feb. 20, 2015) ........... 9
`
`iFLY Holdings LLC v. Indoor Skydiving Germany GmbH,
`No. 2:14-cv-1080, 2016 U.S. Dist. LEXIS 92550, 2016 WL 3680064 (E.D. Tex.
`Mar. 24, 2016)................................................................................................................... 10
`
`Macaulay v. Anas,
`321 F.3d 45 (1st Cir. 2003) ................................................................................................. 2
`
`Maxell, Ltd. v. Apple Inc.,
`2021 U.S. Dist. LEXIS 136283, 2021 U.S. Dist. LEXIS 136283 (E.D. Tex. Feb.
`26, 2021) ........................................................................................................................... 10
`
`Nautilus, Inc. v. Biosig Instrs., Inc.,
`134 S. Ct. 2120 (2014) ...................................................................................................... 20
`
`O2 Micro Intern. v. Beyond Innov.,
`521 F.3d 1351 (Fed. Cir. 2008)......................................................................................... 19
`
`
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`ii
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 4 of 26
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`Verinata Health, Inc. v. Sequenom, Inc.,
`No. C 12-865, 2014 U.S. Dist. LEXIS 116382, 2014 WL 4100638 (N.D. Cal.
`Aug. 20, 2014) .............................................................................................................. 9, 10
`
`STATUTES
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`35 U.S.C § 112 ................................................................................................................................ 2
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`35 U.S.C. § 101 ................................................................................................................. 2, 3, 7, 10
`
`RULES
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`Local Rule 16.6(d) ...................................................................................................................... 2, 7
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`Local Rule 16.6(d)(4)(F) ................................................................................................................. 7
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`iii
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 5 of 26
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`I.
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`INTRODUCTION
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`Defendant Fitbit LLC (“Fitbit”) respectfully requests that this Court deny, in-part, the
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`Motion to Strike portions of the Expert Report of Joseph A. Paradiso, Ph.D. (the “Paradiso
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`Report”) Regarding Invalidity of U.S. Patent No. 8,277,377 (the “‘377 Patent”) filed by Plaintiff
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`Philips North America LLC (“Philips”).
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` (Dkt. 259 (“Motion”); see also Dkt. 260
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`(“Memorandum”).) Philips disputes Dr. Paradiso’s reliance on fourteen prior art references and
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`an indefiniteness opinion. In an effort to narrow the disputes, Fitbit hereby withdraws its reliance
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`on the following three prior art references subject to Philips’ Motion: U.S. Patent No. 5,689,825
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`(“Averbuch”), U.S. Patent No. 6,311,058 (“Wecker”), and U.S. Patent No. 6,493,758 (“McLain”).
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`Fitbit respectfully requests that the Court deny the remainder of Philips’ Motion.
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`First, Philips’ issue with Fitbit’s incorporation by reference of an inter partes review
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`petition that relied on U.S. Patent No. 6,560,443 (“Vaisanen”) as a secondary obviousness
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`reference should be ignored given that Philips was undisputedly on notice of Fitbit’s invalidity
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`contention with respect to Vaisanen, which was raised in Fitbit’s petition for inter partes review
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`of the same claims of ’377 patent asserted here and incorporated by reference into Fitbit’s
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`contentions, and Philips already addressed that argument in its Patent Owner Preliminary Response
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`filed in response to Fitbit’s IPR petition.
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`Second, Dr. Paradiso’s reliance on the remaining disputed prior art references to illustrate
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`the state of the art, rather than as anticipating references or part of an obviousness combination,
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`comports with this District’s local patent rules and the majority rule under case law collected from
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`various other districts.
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`Third, Dr. Paradiso’s indefiniteness opinion regarding the claim term “server” was
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`necessitated by Philips’ own vague infringement contentions and Philips’ failure to respond to
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`Fitbit’s clear non-infringement contentions. Indeed, it was not until Philips’ opening expert report
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`1
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 6 of 26
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`that it became clear that Philips reads claim 1 of the ’377 patent to potentially encompass 2, 3, or
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`even more distinct servers, in contrast to the provisional application and file history, which make
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`clear that the claim encompasses just one server. Thus, Fitbit could not reasonably have
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`anticipated this defense during discovery. Further, Philips is not prejudiced by Fitbit raising this
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`defense, since indefiniteness is a question of law for the Court to decide primarily based on the
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`intrinsic record and expert discovery, not any fact discovery that Philips could have taken.
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`II.
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`LEGAL STANDARDS
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`Local Rule 16.6(d) governs disclosure of invalidity contentions and provides:
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`[T]he accused infringer shall make the following disclosures: …
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`(E) Invalidity Claim Charts − Anticipation or
`Obviousness. Invalidity claim charts identifying all prior art
`that such party contends anticipates or renders obvious the
`patent claims identified by the patentee.
`
`(F) Other Grounds for Invalidity. 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.
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`(L.R. 16.6(d)(4).)
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`In determining whether to exclude challenged evidence, courts in the First Circuit assess
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`the following factors: the proponent’s justification for the late disclosure, the history of the
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`litigation, the proponent’s need for the challenged evidence, and harmlessness (i.e., the opponent’s
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`ability to overcome its adverse effects). See Macaulay v. Anas, 321 F.3d 45, 51 (1st Cir. 2003);
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`Harriman v. Hancock County, 627 F.3d 22 (1st Cir. 2010). The key inquiry in assessing such
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`challenges is whether the expert has permissibly specified the application of a disclosed theory or
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`impermissibly included a new theory. See, e.g., Digital Reg. of Texas, LLC v. Adobe Systems Inc.,
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`No. CV 12–01971–CW (KAW), 2014 WL 1653131 at *2 (N.D. Cal. Apr. 24, 2014).
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`
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`2
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 7 of 26
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`III.
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`FITBIT’S RELIANCE ON THE REMAINING DISPUTED REFERENCES
`SHOULD NOT BE STRICKEN
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`As previously mentioned, Fitbit withdraws its reliance on the Averbuch, Wecker, and
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`McLain references. Fitbit’s reliance on the other disputed prior art references should not be
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`stricken. Specifically, Fitbit’s reliance on the Vaisanen reference in an obviousness combination
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`was adequately disclosed in Fitbit’s contentions and IPR petition against the ’377 patent and does
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`not prejudice Philips. And Fitbit’s reliance on the other references subject to Philips’ Motion to
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`show the state of the art at the ’377 patent’s December 1999 alleged priority date did not need to
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`be disclosed, but in all but one instance was disclosed, and in any event does not prejudice Philips.
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`1.
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`Factual Background
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`Philips filed this case in July of 2019, asserting four patents, including the ’377 patent,
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`which is presently the only remaining asserted patent. (See Dkt. 1.) In November of 2019, Fitbit
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`moved to dismiss under Rule 12(b)(6) because the claims of the ’377 patent (and the other then-
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`asserted patents) are invalid under 35 U.S.C. § 101. (See Dkt. 20.) The parties submitted multiple
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`briefs discussing the Section 101 contentions in detail, including the issue of the state of the art as
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`of the ’377 patent’s alleged December 1999 priority date, and whether the limitations of claim 1
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`of the ’377 patent were well-known and routine in the art as of that date. (See e.g., Dkt. 20 at 11-
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`17; Dkt. 219 at 9-16.) The Court found that the ’377 patent asserted claims are directed to an
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`abstract idea, but deferred the inventive concept inquiry pending discovery. (Dkt. 219 at 9-16.)
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`On March 13, 2020, Fitbit served Defendant Fitbit’s Invalidity and Noninfringement
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`Contentions. (See Dkt. 261-1.1) In those contentions, in a section titled “Identification of each
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`prior art reference,” Fitbit notified Philips that “Fitbit incorporates the papers, prior art references,
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`1 For ease of reference, Fitbit did not re-file exhibits already attached to Philips’ motion, but instead
`cited to the versions previously filed by Philips (i.e., Dkt. 261-1 through 261-5).
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`3
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`and other exhibits and arguments in any inter partes review(s) that any party may file challenging
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`any claims of the Asserted Patents.” (Dkt. 261-1 at 5 of 97.)2 Further, Fitbit notified Philips that
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`all of the then-asserted claims, including the currently asserted claims of the ’377 patent, are
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`invalid under Section 101 as explained in Fitbit’s Rule 12(b)(6) motion and accompanying
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`briefing. (Dkt. 261-1 at 91 of 97.) Moreover, Fitbit also timely asserted that the currently asserted
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`claims of the ’377 patent are invalid as obvious under Section 103. (Dkt. 261-1 at 73-91 of 97.3)
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`Finally, Fitbit described the state of the art at the priority date of each then-asserted patent in those
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`same contentions. (See, e.g., Dkt. 261-1 at 75-91 of 97 (’377 patent).)
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`On April 15, 2020, Fitbit filed a petition for inter partes review of the asserted claims of
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`the ’377 patent. (Ex. 5.) Pertinent to the present Motion, Fitbit argued that claim 6 is obvious in
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`view of the combination of U.S. Patent No. 6,059,692 (“Hickman”), U.S. Patent No. 6,519,241
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`“Theimer”), and Vaisanen. (Ex. 5 at 85-91 of 94; Ex. 3.) Philips addressed this combination in a
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`Patent Owner Preliminary Response filed on August 7, 2020. (Ex. 6 at 66 of 75.)
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`On November 16, 2021, Fitbit served the Paradiso Report. The Paradiso Report relied on
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`the Vaisanen reference for the same claim limitation in the same prior art combination as Fitbit’s
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`IPR petition. (Compare Ex. 5 at 85-91 of 94 with Dkt. 261-3 at 247-248 of 447 (¶¶ 728-732).)
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`The Paradiso Report also relied on the other prior art references now disputed by Philips to show
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`the state of the art at the ’377 patent’s alleged priority date. (See Dkt. 261-3 at 52-116 of 447;
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`Ex. 1 at 1.)
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`2 Fitbit supplemented its contentions on December 21, 2020 (Dkt. 261-2), but none of the
`information added via this supplementation is pertinent to the present Motion.
`3 Fitbit’s contentions also attached sixteen claim charts detailing its obviousness contentions for
`the ’377 patent.
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`4
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 9 of 26
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`2.
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`Fitbit’s Reliance On Vaisanen Was Disclosed And Does Not Prejudice Philips
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`The simplest of Philips’ arguments with which to dispense is the argument to strike Dr.
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`Paradiso’s reliance on Vaisanen. (Dkt. 260 at 9-10.)
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`Fitbit’s initial March 13, 2020 invalidity contentions incorporated its future IPR petition
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`against the ’377 patent by reference (Dkt. 261-1 at 5 of 97), and Fitbit filed that IPR petition just
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`one month later, on April 15, 2020 (Ex. 5). Fitbit’s IPR petition used Vaisanen in just one
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`instance—to disclose claim 6’s limitation of “the short-range wireless transmission scheme
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`includes IEEE 802.11 protocol or short-wavelength radio transmission in the ISM band of 2400-
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`2480 MHz” as part of a combination with the Hickman and Theimer references. (Ex. 5 at 85-91
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`of 94.) The Paradiso Report uses Vaisanen to disclose the exact same claim limitation in the exact
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`same combination of references. (Dkt. 261-3 at 247-248 of 447 (¶¶ 728-732).) In other words,
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`Dr. Paradiso relies on Vaisanen as a mobile phone “wherein both 802.11 and Bluetooth wireless
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`transmission schemes are available.” (Dkt. 261-3 at 248 of 447 (¶¶ 730).) Philips does not dispute
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`that both the 802.11 and Bluetooth wireless transmission schemes were known in the prior art—
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`the ’377 patent tacitly admits as much. (See, e.g., Ex. 1 at Abstract, 4:12-15, 6:14-26, 7:20-22,
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`7:31-35, 12:42-44.)
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`According to Philips, Fitbit’s incorporation by reference of Fitbit’s petition for inter partes
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`review—which was filed just a month after Fitibit’s initial contentions and approximately 8
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`months before its final contentions—was insufficient to notify Philips of Fitbit’s reliance on
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`Vaisanen and provide Philips with an opportunity to address that reliance. (Dkt. 260 at 9-10.)
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`This complaint rings hollow given that Philips filed a patent owner preliminary response on August
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`7, 2020, wherein Philips addressed the Hickman, Theimer, and Vaisanen combination, and
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`Vaisanen’s relevant disclosure of the additional limitation of claim 6. (Ex. 6 at 66 of 75.) Philips
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`cannot credibly claim that it had insufficient notice of Fitbit’s reliance on Vaisanen or an
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`5
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 10 of 26
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`insufficient opportunity to develop and present counter-arguments—it already did so in the context
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`of responding to Fitbit’s IPR petition almost eighteen months ago.
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`Indeed, Philips goes so far as to argue that the IPR petition does not comport with the local
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`rules because it does not include a claim chart. (Memorandum at 9-10.) But the IPR petition
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`discloses, in meticulous detail, how the Hickman, Theimer, and Vaisanen combination renders
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`claim 6 obvious. (Ex. 5 at 55-84 (discussing claims 1-5, from which claim 6 depends), 85-91
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`(discussing claim 6 and Vaisanen) of 94.) Philips cannot credibly suggest that the IPR petition did
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`not put Philips on notice of exactly how Fitbit contends that the Hickman, Theimer, and Vaisanen
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`combination renders claim 6 obvious. Philips’ argument is the height of form over substance.
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`Courts with similar local patent rules and disclosure requirements have allowed such
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`incorporation by reference. See, e.g., Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No.
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`C 03-1431 SBA, 2006 U.S. Dist. LEXIS 90856 at *21 (N.D. Cal. May 5, 2006) (prior art reference
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`sufficiently disclosed where patent challenger incorporated by reference prior art cited in reexam
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`proceeding initiated by same patent challenger). This is especially true when the universe of
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`potentially incorporated items is small, as is the case here. Id. Indeed, despite arguing that Fitbit’s
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`contentions did not “specifically reference [Fitbit’s] IPR petition” (Memorandum at 9), Philips
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`fails to mention that only one petition for inter partes review was ever filed against the ’377
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`patent—i.e. Fitbit’s April 15, 2020 petition. (See Ex. 5.)
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`Consequently, the Court should deny Philips’ motion to strike Fitbit and Dr. Paradiso’s
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`reliance on Vaisanen.
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`3.
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`Fitbit’s Reliance On The Other Prior Art References Subject to Philips’
`Motion Did Not Need To Be Disclosed, Was Disclosed In All But One
`Instance, And In Either Case Does Not Prejudice Philips
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`Philips also moves to strike Fitbit and Dr. Paradiso’s reliance on the following references
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`to show the state of the art at the alleged December 1999 priority date of the ’377 patent, because
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`6
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 11 of 26
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`they were allegedly “never disclosed by [Fitbit] as prior art to [the ’377 Patent]” and “therefore
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`not subject to fact discovery”: Nasa Bioinstrumentation System (“BIS”), Defense Advanced
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`Research Projects Agency (“DARPA”) research, U.S. Patent No. 5,772,586 (“Heinonen”), U.S.
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`Patent No. 6,093,146 (“Filangeri”), U.S. Patent No. 6,416,471 (“Kumar”), U.S. Patent No.
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`6,014,432 (“Modney”), U.S. Patent No. 5,752,976 (“Duffin”), U.S. Patent No.6,198,394
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`(“Jacobsen”), U.S. Patent No. 5,574,979 (“West”), and 1999 Bluetooth specification.
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`(Memorandum at 1, 5.)
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`a. The Local Rules Do Not Require Disclosure Of References
`Merely Used To Show The State Of The Art And Fitbit Is Not
`Attempting To Assert A “Backdoor” Obviousness Argument
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`Philips selectively quotes Local Rule 16.6(d) in an effort to assert that it requires disclosure
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`of “all prior art” that relates to “[a]ny asserted grounds of invalidity based on patentability under
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`35 U.S.C. § 101.” (Memorandum at 5; see also id. at 7 (“The Local Rule is not ambiguous; it
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`requires “Any asserted grounds” and “all prior art” to be disclosed – no exceptions.”).) However,
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`the rule and case law are more nuanced.
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`Specifically, Local Rule 16.6(d)(4)(E) requires disclosure of prior art references that an
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`accused infringer “contends anticipates or renders obvious the patent claims identified by the
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`patentee.” Meanwhile, Local Rule 16.6(d)(4)(F) requires the accused infringer to disclose
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`“asserted grounds of invalidity based on patentability under 35 U.S.C. § 101…” and makes no
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`mention of disclosing prior art references. Nowhere does the Local Rule discuss disclosure
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`requirements for references that merely show the state of the art, but are not relied upon to
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`anticipate a claim or render it obvious, alone or as part of a specific combination of references.
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`Philips further accuses Fitbit of “attempt[ing] to skirt the Local Rules clear disclosure
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`requirement by framing [the disputed references] as only showing the ‘state of the art’” in “nothing
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`more than back-door obviousness arguments.” (Memorandum at 7.) But that is not “skirting” the
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`7
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 12 of 26
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`rule, because Philips cannot reasonably claim that Dr. Paradiso relies on any of these disputed
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`references as prior art in any of his specific obviousness combinations. (See generally Dkt. 261-3
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`at 152-340 of 447 (¶¶ 442-1020).) Consequently, Philips’ unsupported accusations that Fitbit is
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`attempting to insert backdoor obviousness arguments should be ignored.
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`In fact, rather than clandestinely relying on the disputed references to show obviousness as
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`Philips claims, Dr. Paradiso actually relies on these references in exactly the manner Philips argues
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`he does not—to show the state of the art as of the ’377 patent’s alleged December 1999 priority
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`date. Indeed, all of these references are discussed in a section of Dr. Paradiso’s report titled
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`“Technology Background Of The ’377 Patent And State Of The Art.” (Dkt. 261-3 at 52-116 of
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`447.) And the state of the art is relevant to Section 101 subject matter eligibility. In particular,
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`assessing the routineness and conventionality of the elements of the asserted claims at the time of
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`the alleged invention—i.e., assessing the state of the art—is a fundamental consideration under
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`current Section 101 subject matter eligibility case law. See Berkheimer v. HP Inc., 890 F.3d 1369,
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`1371-74 (Fed. Cir. 2018).
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`As previously mentioned, the key inquiry in assessing challenges to the adequacy of a
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`party’s disclosures in contentions is whether the expert has permissibly specified the application
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`of a disclosed theory or impermissibly included a new theory. See, e.g., Digital Reg. of Texas,
`
`LLC v. Adobe Systems Inc., No. CV 12–01971–CW (KAW), 2014 WL 1653131 at *2 (N.D. Cal.
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`Apr. 24, 2014). Given Fitbit’s timely disclosure of its Section 101 and Section 103 theories, and
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`the fact that Dr. Paradiso is not using any of the disputed references in any new obviousness
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`combination, Dr. Paradiso’s reliance on the remaining disputed references to show the state of the
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`art merely specifies the application of timely disclosed theories and should not be stricken. Philips
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`cannot claim that it did not know the state of the art was at issue given Fitbit’s timely Section 101
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`8
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 13 of 26
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`and 103 contentions and the Court’s ruling on Fitbit’s Rule 12(b)(6) motion, which deferred the
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`inventive concept question pending discovery. (See Dkt. 219 at 9-16.)
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`Courts in jurisdictions with similar local rules “do not mandate the disclosure of all
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`evidence relevant to an accused infringer’s invalidity theories.” Fujifilm Corp. v. Motorola
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`Mobility LLC, No. 12-cv-03587-WHO, 2015 U.S. Dist. LEXIS 21413 at *101 (N.D. Cal Feb. 20,
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`2015) (declining to strike previously undisclosed references cited in expert report to illustrate state
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`of the art or technological background in jurisdiction with similar local patent rules).
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`Indeed, when faced with the question of whether or not to strike undisclosed references
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`relied upon by an expert to show the state of the art, Federal Circuit Judge William Bryson, sitting
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`by designation in the Eastern District of Texas, noted that “the Federal Circuit has recognized the
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`distinction between a prior art reference that ‘defin[es] a combination for obviousness,’ and prior
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`art that ‘can legitimately serve to document the knowledge that skilled artisans would bring to bear
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`in reading the prior art identified as producing obviousness.’” See Allergan, Inc. v. Teva Pharms.
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`USA, Inc., No. 2:15-CV-1455-WCB, 2017 U.S. Dist. LEXIS 225041 at *14 (E.D. Tex. Aug. 3,
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`2017) (quoting Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015)).
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`In Allergan, Judge Bryson went on to collect and assess more than twenty cases, and determined
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`that the majority of courts “have permitted defendants to rely on references that were not included
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`in their invalidity contentions when the references were not proposed as invalidating prior art, but
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`were directed to other purposes, such as showing the state of the art at the time of the invention or
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`rebutting the patentee’s secondary consideration evidence.” Allergan, No. 2:15-CV-1455-WCB,
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`2017 U.S. Dist. LEXIS 225041 at *14-22 (collecting cases).
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`In fact, in Allergan, Judge Bryson identified the very cases Philips relies on here (see, e.g.,
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`Memorandum at 8 (citing the Life Techs., Volterra, Emcore, and Pactiv cases)), and found them
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 14 of 26
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`unpersuasive. Id. at *20-22 (“…Again, however, courts in other districts have agreed with the
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`majority rule in the Eastern District of Texas and the Northern District of California, declining to
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`strike undisclosed references from an expert’s report where the references are not invalidating
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`prior art references, but are offered for other purposes relevant to the obviousness inquiry.”).
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`Accordingly, the majority of courts faced with this question (including those with local
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`patent rules similar to those of this district) have denied similar motions to strike. See, e.g.,
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`Allergan, No. 2:15-CV-1455-WCB, 2017 U.S. Dist. LEXIS 225041 at *14-22; iFLY Holdings
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`LLC v. Indoor Skydiving Germany GmbH, No. 2:14-cv-1080, 2016 U.S. Dist. LEXIS 92550, 2016
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`WL 3680064, at *2 (E.D. Tex. Mar. 24, 2016) (noting local patent rules require an accused
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`infringer to “identify each item of prior art that allegedly anticipates each asserted claim or renders
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`it obvious” but does “not apply when a reference is being used by an expert solely to explain the
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`technology.”); Verinata Health, Inc. v. Sequenom, Inc., No. C 12-865, 2014 U.S. Dist. LEXIS
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`116382, 2014 WL 4100638, at *5 (N.D. Cal. Aug. 20, 2014) (allowing the use of a prior art
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`reference not cited in the invalidity contentions, “for foundational or background material”).
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`This refusal to strike references that are not added to a specific anticipation argument or
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`obviousness combination also prevails with respect to Section 101, even in districts that “have
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`local patent rules that require parties to disclose in their invalidity contentions a detailed
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`explanation of any grounds of invalidity under § 101.” Maxell, Ltd. v. Apple Inc., 2021 U.S. Dist.
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`LEXIS 136283, 2021 U.S. Dist. LEXIS 136283 at *16 (E.D. Tex. Feb. 26, 2021) (allowing patent
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`challenger’s experts to rely on undisclosed references for Section 101 based invalidity challenges).
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`Thus, even if it finds that the remaining disputed references were not disclosed in Fitbit’s
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`contentions, the Court should deny Philips’ motion to strike Dr. Paradiso’s reliance on them.
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 15 of 26
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`b. Fitbit Disclosed All But One Of The Remaining Disputed
`References
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`Philips admits, as it must, that all but one of the remaining disputed references were
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`disclosed as prior art with respect to at least one asserted patent in Fitbit’s timely invalidity
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`contentions. (Memorandum at 6, n.4.)4 Therefore, contrary to Philips’ claim, these references
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`were “subject to fact discovery” and Philips had every opportunity to pursue any discovery it saw
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`fit with respect to them. Philips also fails to mention that Fitbit’s contentions also disclosed the
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`priority date of these references, establishing that they are all prior art to the ’377 patent. (See,
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`e.g., Dkt. 261-1 at 5-8 of 97, 10-12 of 97.) Philips also omits other important details comparing
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`how Fitbit disclosed these references with how Dr. Paradiso uses them.
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`For example, Heinonen is disclosed as pertinent prior art in the background section of the
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`’377 patent itself (Ex. 1 at 2:27-37) and that same passage is quoted in the “‘Device Providing
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`Exercise-Related Information’ references” section of Fitbit’s ’377 patent invalidity contentions
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`(Dkt. 261-1 at 83-84 of 97). Dr. Paradiso similarly relies on Heinonen to show the state of the art
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`in his “Interactive Exercise Monitoring Was Well Known” section. (Dkt. 261-3 at 66-67 of 447
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`(¶¶ 207-208).)5
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`Similarly, Fitbit’s contentions quoted and cited the same passages of Duffin, Jacobsen, and
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`West that are quoted and cited in Dr. Paradiso’s report. (Compare Dkt. 261-1 at 18-23 of 97 with
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`4 The last of these “references”—the “DARPA Research” referenced in Philips’ Memorandum,
`highlights the inapplicability of Philips’ arguments. This paragraph of Dr. Paradiso’s report
`merely states that “The U.S. government’s Defense Advanced Research Projects Agency
`(“DARPA”) also researched the combination of sensors and computer networks in the 1970s and
`1980s” and cites a publicly available IEEE paper from 2003. (Dkt. 261-3 at 54 of 447 (¶ 170).)
`5 Dr. Paradiso also relies on three other disputed references—Filangeri, Kumar, and Modney—to
`show the state of the art in his “Interactive Exercise Monitoring Was Well Known” section. (Dkt.
`261-3 at 67-70 of 447 (¶¶ 209-216).) As Philips acknowledged, they were disclosed in Fitbit’s
`contentions. (Memorandum at 6, n.4.)
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`Case 1:19-cv-11586-FDS Document 265 Filed 01/04/22 Page 16 of 26
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`Dkt. 261-3 at 107-111 of 447 (¶¶ 302-306). In Fitbit’s contentions, these quotes and cites appear
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`under the heading “‘Short-Range Bi-Directional Wireless Communications’ references” and in Dr.
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`Paradiso’s report, they appear under the similar heading “Coupling Web-Enabled Wireless
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`Devices To Data Gathering Devices And Transferring Data Between Devices Using Either Wired
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`Connections Or Short-Range Wireless Communications
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`Including
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`Infrared And RF
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`Communication Protocols Were Well Known.” (Id.) While their disclosure in Fitbit’s contentions
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`was admittedly in the section pertaining to the ’233 patent, the ’233 and ’377 patent claims both
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`similarly incorporate the known Bluetooth short-range wireless communications protocol.
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`(Compare Ex. 4 at claims 1, 13 with Ex. 1 at claims 1, 6.6) And Fitbit’s ’377 patent obviousness
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`contentions also discussed the ubiquity of Bluetooth in the art as of December 1999. (Dkt. 261-1
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`at 89-90 of 97.)
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`Relatedly, both Fitbit’s contentions and Dr. Paradiso pointed to the 1999 Bluetooth
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`specification as a further example of the state of the art with respect to such short-range, bi-
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`directional wireless communications. (Compare Dkt. 261-1 at 7 of 97, 29-32 of 97 with Dkt. 261-
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`3 at 111 of 447 (¶ 307).)
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`Finally, Fitbit’s contentions discuss the NASA Bioinstrumentation System (a.k.a. NASA
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`Biobelt) under the heading “‘Sensing Body or Physiological Parameters’ references” (again,
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`admittedly in the ’233 patent section). (Dkt. 261-1 at 26 of 97.) Almost identically, Dr. Paradiso
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`briefly discusses this system as an original example of “using electronic sensors to monitor
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`6 While ’377 patent claim 6 uses the words “…the ISM band of 2400-2480 MHz,” Bluetooth is
`one exemplary pro