Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 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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`Defendant.
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`Civil Action No. 1:19-cv-11586-FDS
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`DEFENDANT FITBIT LLC’S MEMORANDUM OF LAW IN SUPPORT OF ITS
`MOTION TO STRIKE, IN PART, THE INFRINGEMENT EXPERT REPORT
`AND OPINIONS OF DR. TOM MARTIN PURSUANT TO
`FED. R. CIV. P. 37(c)(1) AND LOCAL RULE 16.6(d)
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 2 of 26
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...........................................................................................................................1
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`LEGAL STANDARDS ...................................................................................................................2
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`ARGUMENT ...................................................................................................................................4
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`I.
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`PHILIPS VIOLATED ITS DISCOVERY OBLIGATIONS BY FAILING TO
`TIMELY DISCLOSE THREE NEW INFRINGEMENT THEORIES FIRST
`RAISED IN THE MARTIN REPORT. ...............................................................................4
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`II.
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`III.
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`1.
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`2.
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`3.
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`Philips Failed To Disclose Its Joint Infringement Theory. ......................................4
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`Philips Failed To Disclose Its GPS Data And Run Cardio Fitness Score
`Infringement Theory. ...............................................................................................9
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`Philips Failed To Disclose Its Representative Product Infringement
`Theory. ...................................................................................................................12
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`FEDERAL RULE 37 PROHIBITS PHILIPS FROM RELYING ON ITS
`PREVIOUSLY UNDISCLOSED INFRINGEMENT THEORIES. .................................13
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`PHILIPS’ UNTIMELY DISCLOSURE OF ITS NEW INFRINGEMENT
`THEORIES IS NEITHER SUBSTANTIALLY JUSTIFIED NOR HARMLESS. ...........14
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`1.
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`2.
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`3.
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`4.
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`5.
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`Philips Has No Credible Justification For Its Failure to Timely Disclose Its
`New Infringement Theories. ..................................................................................14
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`Fitbit Is Significantly Prejudiced By Philips’ Late Disclosures. ...........................16
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`The History Of This Litigation Weighs In Favor of Exclusion. ............................19
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`Philips’ Late Disclosure Would Necessitate Further Adjustment Of The
`Case Schedule And Thereby Disrupt The Court’s Docket. ...................................19
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`Exclusion Of Philips’ New Infringement Theories Would Not Deprive
`Philips Of The Ability To Advance An Infringement Case. .................................20
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`CONCLUSION ..............................................................................................................................20
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 3 of 26
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Adobe Sys. v. Wowza Media Sys.,
`No. 11-cv-02243-JST, 2014 U.S. Dist. LEXIS 23153 (N.D. Cal. Feb. 22, 2014)............ 18
`
`Akamai Techs., Inc. v. Limelight Networks, Inc.,
`797 F.3d 1020 (Fed. Cir. 2015)..................................................................................... 4, 16
`
`Arthur v. Atkinson Freight Lines Corp.,
`164 F.R.D. 19 (S.D.N.Y.1995) ........................................................................................... 2
`
`Asia Vital Components Co. v. Asetek Danmark A/S,
`377 F. Supp. 3d 990 (N.D. Cal. 2019) .............................................................................. 13
`
`AVX Corp. v. Cabot Corp.,
`251 F.R.D. 70 (D. Mass. 2008) ..................................................................................... 2, 19
`
`B-K Lighting, Inc. v. Vision3 Lighting,
`930 F. Supp. 2d 1102 (C.D. Cal. 2013) ........................................................................ 3, 13
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`Changzhou Kaidi Elec. Co. v. Okin Am., Inc.,
`112 F. Supp. 3d 330 (D. Md. 2015) .................................................................................. 14
`
`Eli Lilly & Co. v. Dr. Reddy’s Lab’ys, Ltd.,
`No. 1:16-CV-0308-TWP-DKL, 2017 WL 1531834 (S.D. Ind. Apr. 28, 2017) ............... 13
`
`Harriman v. Hancock Cty.,
`627 F.3d 22 (1st Cir. 2010) ........................................................................................... 4, 14
`
`Hochstein v. Microsoft Corp.,
`No. 04-73071, 2009 WL 2498481 (E.D. Mich. Aug. 17, 2009) ................................... 3, 13
`
`Inline Plastics Corp. v. Lacerta Grp., Inc.,
`Case No. 4:18-cv-11631-TSH (D. Mass. Feb. 23, 2021) ....................................... 3, 11, 13
`
`Klonoski, M.D. v. Mahlab, M.D.,
`156 F.3d 255 (1st Cir.1998) ................................................................................................ 3
`
`L & W, Inc. v. Shertech, Inc.,
`471 F.3d 1311 (Fed. Cir. 2006)......................................................................................... 12
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`Milos Misha Subotincic v. 1274274 Ontario Inc.,
`No. SACV 10-01946 AG, 2013 WL 3964994 (C.D. Cal. Apr. 9, 2013) .......................... 12
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`ii
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 4 of 26
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`Nalco Co. v. Chem-Mod, LLC,
`883 F.3d 1337 (Fed. Cir. 2018)........................................................................................... 7
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`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006)..................................................................................... 8, 13
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`Poulis-Minott v. Smith,
`388 F.3d 354 (1st Cir. 2004) ............................................................................................... 3
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`Providence Piers, LLC v. SMM New England, Inc.,
`No. CV 12-532S, 2015 WL 9699936 (D.R.I. Oct. 1, 2015) ............................................. 19
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`Pulse Elecs., Inc. v. U.D. Elec. Corp.,
`18-cv-373, 2021 WL 981123 (N.D. Cal. Mar. 16, 2021) ................................................. 12
`
`Spansion, Inc. v. ITC,
`629 F.3d 1331 (Fed.Cir.2010)........................................................................................... 12
`
`Thermos Co. v. Starbucks Corp.,
`No. 96 C 3833, 1999 WL 203822 (N.D. Ill. April 6, 1999) ............................................. 14
`
`Travel Sentry, Inc. v. Tropp,
`877 F.3d 1370 (Fed. Cir. 2017)........................................................................................... 7
`
`Wilson v. Bradlees of New England, Inc.,
`250 F.3d 10 (1st Cir. 2001) ................................................................................. 3, 4, 13, 14
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`Woods v. DeAngelo Marine Exhaust, Inc.,
`692 F.3d 1272 (Fed. Cir. 2012)....................................................................................... 3, 8
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`RULES
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`Fed. R. Civ. P. 26(e) ....................................................................................................................... 2
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`Fed. R. Civ. P. 26(e)(1) ................................................................................................................... 2
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`Fed. R. Civ. P. 37(c) ................................................................................................................. 3, 14
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`Fed. R. Civ. P. 37(c)(1) ............................................................................................................. 3, 14
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`iii
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 5 of 26
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`INTRODUCTION
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`Defendant Fitbit LLC (“Fitbit”) moves under Federal Rule of Civil Procedure 37(c)(1) to
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`strike, in part, the November 16, 2021 Opening Report of Dr. Tom Martin (the “Martin Report”).
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`The Martin Report presents three new infringement theories that Plaintiff Philips North America
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`LLC (“Philips”) did not disclose during discovery, including in response to Fitbit’s Interrogatory
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`No. 9 or in Philips’ Local Rule 16.6(d) infringement contentions:
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`1) Fitbit directly infringes via joint infringement by directing and controlling users’
`performance of certain steps of claim 1 of U.S. Patent No. 8,277,377 (“the ’377 patent”);
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`2) Fitbit directly and indirectly infringes by providing users with Run Cardio Fitness Scores
`based on GPS data collected by the user’s mobile phone or Fitbit device; and
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`3) certain accused Fitbit products are representative of others for the infringement analysis.
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`Upon the Martin Report’s disclosure of these new theories, Fitbit requested additional time
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`to investigate and address Philips’ new allegations in responsive expert reports in an effort to
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`mitigate prejudice, but Philips refused. (See Ex. 1 at 1.)
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`Although Fitbit served Interrogatory No. 9 specifically directed to Philips’ new joint
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`infringement theory, and repeatedly requested that Philips supplement its infringement contentions
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`to provide more specificity, Philips never disclosed these three theories in its Interrogatory No. 9
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`response or Local Rule 16.6(d) infringement contentions. Rather, Philips laid in wait and then
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`disclosed these three new theories for the first time in the Martin Report on November 16, 2021—
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`nearly eight months after the close of fact discovery. In doing so, Philips violated Federal Rule of
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`Civil Procedure 26(e) and Local Rule 16.6(d). Philips has no credible explanation for its failure
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`to timely disclose these theories during discovery. Introducing these theories now—after the close
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`of fact discovery and only weeks before Fitbit’s rebuttal noninfringement report was due—
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`prejudices Fitbit. Pursuant to Rule 37(c)(1), Fitbit requests that the Court strike Philips’ three new
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`infringement theories contained in the portions of the Martin Report indicated by green redaction
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`1
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 6 of 26
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`boxes in attached Exhibit 2, and bar Philips from presenting these three infringement theories that
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`it did not disclose during fact discovery. The correspondence of redactions and new theories is:
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`1) Joint Infringement: ¶¶ 46 and 259-264 and Table of Contents Heading VII.B.11;
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`2) Run Cardio Fitness Scores based on GPS data: ¶¶ 129, 135, 136, 139, 141, 142, 145 n.6,
`151-161, 162, 163, 166, 208, 209-211, 248, 255, 256-257, and 261-262, Table of Contents
`Headings VII.B.1.(x).(2) and VII.B.9.(c).(1), and Exhibit K; and
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`3) Representativeness: ¶¶ 47, 61, 81, 85, 99, 107, 113, 121, 123, 146, 163, 213 n.11, and 214.
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`Pursuant to Local Rule 37.1(a), the parties held approximately 15-30 minute discovery
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`conferences by telephone on December 3, 2021 at 11:00am ET and December 10, 2021 at 1:30pm
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`ET. Both conferences were attended by at least John Custer from Foley and Lardner on behalf of
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`Philips and David J. Shaw, Eric Speckhard, and Henry Ard from Desmarais on behalf of Fitbit.
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`The parties did not reach agreement on any issues addressed in this memorandum.
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`LEGAL STANDARDS
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`A party “who has responded to an interrogatory” must:
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`[S]upplement or correct its disclosure or response in a timely
`manner if the party learns that in some material respect the
`disclosure or response is incomplete or incorrect, and if the
`additional or corrective information has not otherwise been made
`known to the other parties during the discovery process or in writing.
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`Fed. R. Civ. P. 26(e)(1). “[T]he duty to supplement is a continuing duty and a ‘party may not free
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`itself of the burden to fully comply’ by placing ‘a heretofore unrecognized duty of repeated
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`requests for information on its adversary.’” AVX Corp. v. Cabot Corp., 251 F.R.D. 70, 76 (D.
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`Mass. 2008) (quoting Arthur v. Atkinson Freight Lines Corp., 164 F.R.D. 19, 20 (S.D.N.Y.1995)).
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`In addition, the Court’s Local Rules require a party to make certain automatic patent-
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`related disclosures. See L.R. 16.6(d). In particular, the patentee must disclose “infringement claim
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`charts identifying with as much specificity as reasonably possible…an element-by-element
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`description of where and how each element of each asserted claim is found in each accused product
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`2
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`or method…and, if any alleged infringement is based on the acts of multiple parties, the role of
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`each such party in the infringement.” L.R. 16.6(d)(1)(A). “In recognition of the duty [to
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`supplement] under Fed. R. Civ. P. 26(e)…L.R. 16.6(d)(5) provides for parties to supplement their
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`patent infringement disclosures with leave of court upon a showing of good cause.” Inline Plastics
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`Corp. v. Lacerta Grp., Inc., Case No. 4:18-cv-11631-TSH, slip op. at 3 (D. Mass. Feb. 23, 2021).
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`A party that violates Federal Rule 26(e) or the Local Rules by raising new theories in expert
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`reports is subject to sanctions under Federal Rule 37(c) and the Court’s inherent power. See, e.g.,
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`Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1279 (Fed. Cir. 2012); Inline Plastics,
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`Case No. 4:18-cv-11631-TSH, slip op. at 10 (granting motion to strike doctrine of equivalents
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`theories first raised in expert reports); B-K Lighting, Inc. v. Vision3 Lighting, 930 F. Supp. 2d 1102,
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`1137 (C.D. Cal. 2013) (granting motion to strike new infringement theory raised in expert report
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`but not disclosed in interrogatory responses or infringement contentions); Hochstein v. Microsoft
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`Corp., No. 04-73071, 2009 WL 2498481, at *5 (E.D. Mich. Aug. 17, 2009) (same).
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`“If a party fails to provide information…as required by Rule 26(a) or (e), the party is not
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`allowed to use that information…to supply evidence on a motion, at a hearing, or at trial, unless
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`the failure was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). Rule 37(c)(1)
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`“requires the near automatic exclusion of Rule 26 information that is not timely disclosed….”
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`Wilson v. Bradlees of New England, Inc., 250 F.3d 10, 20 (1st Cir. 2001); Poulis-Minott v. Smith,
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`388 F.3d 354, 358 (1st Cir. 2004) (citing Klonoski, M.D. v. Mahlab, M.D., 156 F.3d 255, 269 (1st
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`Cir.1998)); see also Fed. R. Civ. P. 37(c) Advisory Committee Notes on 1993 Amendment (“This
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`automatic sanction provides a strong inducement for disclosure of material that the disclosing party
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`would expect to use as evidence….”).
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`When considering a motion to strike under Rule 37(c), the First Circuit applies a multi-
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`3
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 8 of 26
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`factor test to determine whether the untimely disclosure was substantially justified or harmless:
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`(1) the sanctioned party’s justification for the late disclosure; (2) the moving party’s ability to
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`overcome its adverse effects; (3) the history of the litigation; (4) the late disclosure’s impact on
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`the court’s schedule; and (5) the sanctioned party’s need for the precluded evidence. Harriman v.
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`Hancock Cty., 627 F.3d 22, 30 (1st Cir. 2010). “[I]t is the obligation of the party facing sanctions
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`for belated disclosure to show that its failure to comply with the Rule was either justified or
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`harmless and therefore deserving of some lesser sanction.” Wilson, 250 F.3d at 21.
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`ARGUMENT
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`The Martin Report sets forth three infringement theories that were not disclosed in Philips’
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`Interrogatory No. 9 response or infringement contentions. Philips has no credible explanation for
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`failing to disclose these theories during discovery. Moreover, Philips’ untimely disclosure of
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`multiple new infringement theories months after the close of fact discovery—and mere weeks
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`before Fitbit’s rebuttal report on noninfringement was due—inflicts substantial prejudice on Fitbit.
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`Accordingly, pursuant to Rule 37(c) and the Court’s inherent power, Fitbit respectfully requests
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`that the Court strike the portions of the Martin Report indicated by green redaction boxes in
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`attached Exhibit 2, and other opinions and evidence related to Philips’ new infringement theories.
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`I.
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`Philips Violated Its Discovery Obligations By Failing To Timely Disclose Three New
`Infringement Theories First Raised In The Martin Report.
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`1.
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`Philips Failed To Disclose Its Joint Infringement Theory.
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`Joint infringement is a theory of direct infringement applicable when the steps of a method
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`claim are performed by multiple distinct entities. Another’s performance of a certain step will be
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`attributed to an accused entity if that entity either: (1) directs or controls the other’s performance,
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`or (2) is engaged in a joint enterprise with the performing entity. Akamai Techs., Inc. v. Limelight
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`Networks, Inc., 797 F.3d 1020, 1022-23 (Fed. Cir. 2015). An accused entity directs or controls
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`4
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`another’s performance if it conditions the receipt of a benefit on that performance—i.e. if the
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`benefit cannot be obtained without performing the method step(s)—and determines the manner or
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`timing of that performance. Id.
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`On January 10, 2020, Fitbit served its Interrogatory No. 9, requesting disclosure of Philips’
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`joint infringement contentions:
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`[W]hether you contend that Fitbit has jointly infringed the claim with
`other persons…and if so…identify which person you contend
`performs each limitation…[and] whether you contend Fitbit directs or
`controls the performance of the other persons…and any conditions for
`participation or receipt of benefit from such performance….
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`(Ex. 3 at 2.) On February 10, 2020, Philips responded with vague allegations untethered to the
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`claim elements and not disclosing any specific alleged benefit:
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`Fitbit jointly infringes with its customers and subscribers with the
`establishment and operation of solutions covered by the Patents-in-
`Suit. For example, Fitbit’s customers use their Fitbit devices, Fitbit
`account, and the Fitbit App jointly with Fitbit by downloading and
`activating the required software to a mobile device and additionally
`utilize software on Fitbit’s servers, which enable functionality that
`may be relevant to infringement of the Asserted Patents. Fitbit
`customers receive a clear benefit from their use of the software and
`services made available by Fitbit, and those benefits are conditioned
`upon downloading, installing, and using Fitbit software and services.
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`(See id. at 3.) Fitbit promptly informed Philips that its response was deficient. (Ex. 4 at 2-3). The
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`parties met and conferred and Philips agreed to supplement. (Ex. 5 at 2-3.) But Philips reneged
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`and did not supplement. Fitbit later wrote Philips yet again, requesting that it “promptly
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`supplement its response to specify what the supposed ‘clear benefits’ are, how ‘those benefits are
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`conditioned upon’ performing the specific steps that Philips alleges meets each limitation for each
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`asserted claim…and how Fitbit controls the manner and timing of such performance.” (See Ex. 6
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`at 6.) The parties met and conferred again, and Philips again refused to supplement. (Ex. 7 at 1,
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`3.) Fitbit accordingly notified Philips that Fitbit would move to strike any theory of joint
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`5
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`infringement subsequently raised by Philips. (Id. at 3.) Finally, on December 8, 2020, with just
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`a few months left in discovery, Fitbit informed Philips, yet again, that it had failed to adequately
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`allege joint infringement. (Ex. 8 at 1, 5.) To this day, Philips has never supplemented its response
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`to Fitbit’s Interrogatory No. 9 despite Fitbit’s multiple, clear requests and reminders.
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`Philips had an obligation under Rule 26(e) to provide its full joint infringement contentions
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`in response to Fitbit’s Interrogatory No. 9. (Ex. 3.) Likewise, Philips had an obligation under
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`Rule 26 and Local Rule 16.6(d)(5) to fully disclose and supplement its joint infringement
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`contentions to state “if any alleged infringement is based on the acts of multiple parties [and if so]
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`the role of each such party in the infringement.” L.R. 16.6(d)(1)(A)(vii). Philips violated both of
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`these obligations by failing to fully and timely disclose its new joint infringement theory, despite
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`Fitbit’s repeated requests that Philips supplement its response to Interrogatory No. 9 to disclose
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`such information. (See Exs. 4-8.) In fact, Philips’ response to Interrogatory No. 9 provided only
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`conclusory generalities that gave no notice of the specific persons and acts comprising the three
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`necessary elements of the joint infringement theory it now advances. (See Ex. 3 at 2-3.) Nor did
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`Philips’ contentions disclose these elements. (Exs. 9-11.)
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`Most fundamentally, the Martin Report is the first time that Philips argued that Fitbit
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`conditions the user’s receipt of any specifically identified benefit—namely, the user’s Cardio
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`Fitness Score1—on the performance of various steps of claim 1. That theory was not disclosed in
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`Philips’ response to Fitbit’s Interrogatory No. 9, which never mentions Cardio Fitness Score (or
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`any other specific benefit). Nor was it disclosed in Philips’ contentions, which never use the word
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`“benefit.” (See, e.g., Exs. 11-12.) While Philips will likely argue that its contentions include
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`1 As discussed in Section 1.2 infra, a Cardio Fitness Score is term used by Fitbit to describe an
`estimate of a user’s VO2 max.
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`6
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`various screen shots depicting a user’s Resting Heart Rate Cardio Fitness Score (“RHR Cardio
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`Fitness Score”), Philips never identified RHR Cardio Fitness Score or those screenshots as the
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`allegedly conditioned benefit establishing joint infringement. “[C]ase law emphasizes ‘the
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`importance of correctly identifying the relevant activity or benefit that is being conditioned upon
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`the performance of one or more claim steps.” Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1351–
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`52 (Fed. Cir. 2018) (quoting Travel Sentry, Inc. v. Tropp, 877 F.3d 1370, 1380 (Fed. Cir. 2017)).
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`Moreover, Philips’ RHR Cardio Fitness Score screenshots are only included in Philips’
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`contentions as purported evidence that users perform steps 1.h and 1.i of claim 1 of the ’377 patent.
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`(See, e.g. Ex. 12 at 19-21.) The Martin Report, in contrast, relies upon a Cardio Fitness Score as
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`the alleged benefit conditioned on the user’s performance of every step of claim 1. Thus, even if
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`Philips’ disclosure is adequate for steps 1.h and 1.i, it was still inadequate for steps 1.a-g.
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`A second reason that Philips’ disclosures are inadequate is that Philips’ contentions and
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`Interrogatory No. 9 response provide no indication of how Fitbit allegedly determines the manner
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`of the user’s performance of every element of claim 1, another essential element of joint
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`infringement that Philips first disclosed in the Martin Report. (Ex. 2 ¶¶ 263.) In fact, Philips’
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`contentions and Interrogatory No. 9 response do not even allege that Fitbit determines the manner
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`or timing of its users’ performance of the claimed steps, much less describe how Fitbit does so—
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`they do not even use the word “timing” or the phrase “manner or timing.” (See, e.g., Exs. 11-12.)2
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`A third reason that Philips’ disclosures are inadequate is that the Martin Report is the first
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`time that Philips identified which claim steps are allegedly performed by the user under Fitbit’s
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`control. Philips’ Interrogatory No. 9 response does not mention any claim step, and Philips’
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`contentions parrot the claim language and are uniformly phrased in passive voice—obscuring who
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`2 The contentions use the word “manner” once in an unrelated context. (Ex. 11 at 2.)
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`7
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`Philips contends performs each step. (See, e.g., Ex. 12 at 4 (“The method provided by the Accused
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`Product involves rendering a user interface on the web-enable [sic] phone (via the Fitbit App).”).)
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`During the parties’ meet and confers, Philips argued that more explicit identification was
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`unnecessary because Fitbit could allegedly infer which steps are performed by the user. However,
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`as the plaintiff, it is Philips’ burden to prove infringement—it is not Fitbit’s duty to parse Philips’
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`contentions in an effort to discern Philips’ unstated and unclear assumptions. Indeed, the very
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`purpose of infringement contentions is to provide a defendant with clear notice of the plaintiff’s
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`claims and to crystallize the specific issues in dispute. Woods, 692 F.3d at 1280 (explaining that
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`contentions are intended to “narrow and sharpen the issues thereby confining discovery and
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`simplifying trial preparation”); O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355,
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`1365 (Fed. Cir. 2006). As such, Fitbit had no obligation to speculate as to Philips’ unstated
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`allegations; it was Philips’ obligation to fully disclose them.
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`Even accepting Philips’ allegation that innuendo-laden contentions are enough, in certain
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`instances Philips’ contentions suggest that the user does not perform the relevant step, in direct
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`contradiction with the Martin Report’s new theory. For example, Philips’ claim chart for the Fitbit
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`Ionic argues the following regarding step 1.c (“rendering a user interface on the web-enabled
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`wireless phone”): “The method provided by the Accused Product involves rendering a user
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`interface on the web-enable [sic] wireless phone (via the Fitbit App).” (Ex. 12 at 4.) The language
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`“via the Fitbit App” suggests that Philips contended that Fitbit, not the user, performs this step.
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`Meanwhile, the claim language (“rendering a user interface on the web-enabled wireless phone”)
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`suggests that the mobile phone or operating system provider performs this step. The Martin
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`Report’s new contention that a user “render[s] a user interface on the web-enabled wireless phone”
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`is inconsistent with Philips’ contentions. (Ex. 2 at ¶¶ 72-73.) Philips’ suggestion that Fitbit should
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`8
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 13 of 26
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`have discerned that Philips’ expert would contradict Philips’ vague contentions is unfounded.
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`In short, Philips’ Interrogatory No. 9 response and infringement contentions failed to
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`disclose any of the required elements of Philips’ joint infringement theory. Philips thus violated
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`its duty of disclosure under Federal Rule of Civil Procedure 26(e) and Local Rule 16.6(d), and the
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`Court should strike and exclude the Martin Report’s new joint infringement theory.
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`2.
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`Philips Failed To Disclose Its GPS Data And Run Cardio Fitness Score
`Infringement Theory.
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`Philips served initial infringement contentions on January 31, 2020 (Ex. 9), and
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`supplemental contentions on March 17 and May 15, 2020. (Exs. 10-11.) Philips’ claim charts did
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`not explicitly identify how Fitbit infringes. Instead, Philips’ controlling May 15 supplemental
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`contentions contained only vague generalities followed by nondescript images such as the
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`following for claim element 1.h—“receiving a calculated response from the server, the response
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`associated with a calculation performed by the server based on the exercise-related information”:
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`The method of the Accused Product involves receiving a variety of
`different calculated responses from the server (such as cardio fitness
`score, heart rate zones, and resting heart rate), the responses
`associated with a calculation performed by the server based on the
`exercise-related information:
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`9
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 14 of 26
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`(See, e.g., Ex 12 at 19-20 (far left image depicts RHR Cardio Fitness Score).) This did not
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`adequately disclose Philips’ new infringement allegation against Run Cardio Fitness Scores
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`determined using GPS data.
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`
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`“Cardio Fitness Score” is a term used by Fitbit to describe a user’s estimated VO2 max,
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`i.e., the maximum amount of oxygen the user can utilize during exercise. The accused Fitbit
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`devices use two different methods to determine a Cardio Fitness Score. The first method, depicted
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`in every one of the Cardio Fitness Score screenshots in Philips’ contentions, involves using resting
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`heart rate data, which is collected by the accused Fitbit devices, and certain anthropometric data
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`(e.g. age, sex, BMI) to generate a “Resting Heart Rate Cardio Fitness Score” (or “RHR Cardio
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`Fitness Score”). (See Ex. 13.) The second method, in contrast, utilizes GPS data in combination
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`with resting heart rate and anthropometric data, to generate a “Run Cardio Fitness Score.”3 Unlike
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`heart rate data, GPS data is collected in multiple ways that differ among the accused Fitbit devices:
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`either (1) directly from the accused Fitbit device’s built-in GPS sensors or (2) from the user’s
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`mobile phone GPS sensors (a.k.a., “connected GPS”). The phone’s connected GPS data is
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`provided by a third-party, namely the operating system and cellular carrier’s GPS satellites.
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`Because Philips never specified its infringement theory based on GPS data and Run Cardio Fitness
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`Score, details of how GPS data is collected and used were not explored during discovery.
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`These distinctions are described in Fitbit’s publicly available and internal documents
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`produced to Philips as early as April 2020. (Exs. 13-15.) However, Philips’ contentions
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`exclusively depict RHR Cardio Fitness Scores and never mention “Run Cardio Fitness Score” or
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`excerpt images of Run Cardio Fitness Score. Nor has Philips sought leave to amend its contentions
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`3 RHR Cardio Fitness Scores are provided as a range, while Run Cardio Fitness Scores are
`provided as a single number (note the above image is a range, i.e., an RHR Cardio Fitness Score).
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`10
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 15 of 26
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`to accuse the functionally disparate Run Cardio Fitness Score. Instead, Philips moved to
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`supplement for a different reason, which this Court denied as untimely. (See Dkt. 254.)
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`Pursuant to Local Rule 16.6(d), Philips had an obligation to provide Fitbit with
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`infringement contentions that “identif[ied] with as much specificity as reasonably possible…an
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`element-by-element description of where and how each element of each asserted claim is found in
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`each accused product or method.” L.R. 16.6(d)(1)(A). Philips had a similar duty under Rule 26(e)
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`to amend those contentions and disclose its theories upon a showing of good cause, as provided in
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`Local Rule 16.6(d)(5). See Inline Plastics, Case No. 4:18-cv-11631-TSH, slip op. at 3.
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`Philips violated its obligations under Rule 26 and Local Rule 16.6(d) by failing to disclose
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`its new infringement theory based upon GPS data and Run Cardio Fitness Score. In particular, the
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`Martin Report identifies two features as the alleged “calculated response” of step 1.h of the ’377
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`patent claim 1: (1) a user’s RHR Cardio Fitness Score, and (2) a user’s Run Cardio Fitness Score.
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`(See Ex. 2 at ¶¶ 132-67.) Critically, as described above, while these two features share a common
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`label (i.e. “Cardio Fitness Score”), they are not fungible for purposes of infringement.
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`As described above, Philips’ contentions provide no notice of its intent to rely upon GPS
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`data or the Run Cardio Fitness Score to meet the asserted claims. Indeed, while Philips’ contention
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`claim charts reference a user’s Cardio Fitness Score in connection with step 1.h, they never
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`expressly mention GPS data or a Run Cardio Fitness Score, and every screenshot of a Cardio
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`Fitness Score depicts the user’s RHR Cardio Fitness Score (i.e., a range). (See Ex. 12 at 19-21.)
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`Philips’ failure to even mention Run Cardio Fitness Scores and to differentiate those scores
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`from RHR Cardio Fitness Scores in its contentions is in marked contrast to the theory laid out in
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`the Martin Report. The Martin Report includes separate discussions of RHR and Run Cardio
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`Fitness Scores because they are calculated differently based on different inputs, and are expressed
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`11
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`Case 1:19-cv-11586-FDS Document 269 Filed 01/05/22 Page 16 of 26
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`as different outputs (i.e., a range vs. a value). (Ex. 2 ¶¶ 139-161.) The Martin Report also includes
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`different images depicting each type of score. (Id. ¶ 163.) The Martin Report’s separate analysis,
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`and its reliance upon separate evidence, further demonstrates that Philips’ contentions—which
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`focused exclusively on RHR Cardio Fitness Scores—did not adequately disclose Philips’ new
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`theory based on GPS data and Run Cardio Fitness Scores. By failing to disclose its intent to