`Case 1:19-cv-11586-FDS Document 270-1 Filed 01/05/22 Page1of3
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:19-cv-11586-FDS Document 270-1 Filed 01/05/22 Page 2 of 3
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`Eric Speckhard
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`David Shaw
`Monday, December 13, 2021 5:50 PM
`Custer, John W.
`BOST - F - Philips - Fitbit; Fitbit Philips DC Service
`RE: Philips v. Fitbit 1:19-cv-11586
`
`Hi John,
`
`I’m writing to recap our meet and confer of Friday, December 10 regarding the parties’ threatened motions to strike
`expert opinions.
`
`First, we asked if Philips would be willing to extend the rebuttal expert report deadline to give Fitbit more time to
`investigate Philips’s new theories. While we don’t think an extension can alleviate all of the prejudice to Fitbit, it may
`potentially mitigate some of that prejudice. You indicated that Philips was unlikely to agree to any extension, but
`wanted to check with your team and client. You confirmed on December 13 that Philips will not agree to any extension.
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`Second, we asked you to please confirm that Philips never supplemented its response to Fitbit’s Interrogatory No. 9
`after February 10, 2020. You thought that was true, but again you wanted to double‐check with your team and case
`file. Please let us know ASAP.
`
`Third, we suggested that Fitbit might be willing to withdraw Dr. Paradiso’s references to the Filangeri, Kumar, Modney,
`Averbuch, Wecker, and McLain references if Philips was willing to withdraw any of the new infringement theories
`addressed in my November 29 letter or agree not to move regarding any of the other invalidity issues raised in your
`November 19 and 24 letters. You agreed to talk with your team and see whether Philips was willing to discuss any such
`compromise. You confirmed on December 13 that Philips will not agree to, or even discuss, such a compromise.
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`Fourth, we discussed Philips’s proposed removal of certain instances of the phrase “Active Zone Minutes” from Dr.
`Martin’s report in response to my November 29 letter. Specifically, we discussed Philips’s refusal to remove the
`discussion of “Active Zone Minutes” from paragraph 64 of Dr. Martin’s report, despite the fact that you confirmed that
`Philips will abide by its prior representation to the Court and not accuse “Active Zone Minutes” of infringement. You
`argued that it is important for Dr. Martin to explain that Fitbit’s devices used to track “Active Minutes” but now track
`“Active Zone Minutes” instead. I asked why that was important since neither “Active Zone Minutes” nor “Active
`Minutes” are accused of infringement, but you could not explain. Your only suggestion was that we ask Dr. Martin at
`deposition whether or not he is accusing “Active Zone Minutes” of infringement, but opening the door for yet another
`new opinion at Dr. Martin’s deposition is not an acceptable compromise. Please either agree to remove reference to
`“Active Zone Minutes” from paragraph 64 of Dr. Martin’s opening report or explain why you will not agree to do so.
`
`Best,
`David
`
`David J. Shaw
`Desmarais LLP
`1701 Pennsylvania Avenue, NW
`Suite 200
`Washington, DC 20006
`T: (202) 451‐4900 | F: (202) 451‐4901
`D: (202) 451‐4913 | E: dshaw@desmaraisllp.com
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`Case 1:19-cv-11586-FDS Document 270-1 Filed 01/05/22 Page 3 of 3
`
`From: Custer, John W. <jcuster@foley.com>
`Sent: Monday, December 13, 2021 4:52 PM
`To: David Shaw <DShaw@desmaraisllp.com>
`Cc: BOST ‐ F ‐ Philips ‐ Fitbit <BOSTFPhilipsFitbit@foley.com>; Fitbit Philips DC Service
`<FitbitPhilipsDCService@desmaraisllp.com>
`Subject: [Ext] Philips v. Fitbit 1:19‐cv‐11586
`
`**EXTERNAL EMAIL** This email originated from outside the company. Do not click on any link unless you recognize the sender
`and have confidence the content is safe.
`
`
`Hey David,
`I can confirm that Philips does not agree with either of your two proposals discussed on the meet & confer last Friday
`(specifically your proposal that Fitbit drops some of the prior art in exchange for Philips dropping something and your
`proposal to extend the schedule). We plan to file our motion to strike portions of Dr. Paradiso’s report later this evening.
`Best,
`John Custer
`Foley & Lardner LLP
`111 Huntington Avenue | Suite 2500
`Boston, MA 02199-4001
`P 617.226.3148
`Pronouns: He/Him/His
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`
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