Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 1 of 14
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 1 of 14
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`EXHIBIT 10
`EXHIBIT 10
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`Plaintiff,
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`v.
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`PHILIPS NORTH AMERICA LLC,
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`FITBIT, INC.
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`C.A. No. 1:19-cv-11586-IT
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`Defendant.
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`PLAINTIFF PHILIPS NORTH AMERICA LLC’S SUPPLEMENTAL L.R. 16.6(d)(1)
`DISCLOSURES
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`While Philips North America LLC (“Philips,” “Plaintiff” or “Patentee”) maintains the
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`sufficiency of its original L.R. 16.6(d)(1) disclosures, having met and conferred with counsel for
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`Fitbit, Philips nonetheless provides the following supplemental disclosures.
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`Philips nonetheless reiterates that discovery in this action is only just beginning, and as of
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`last week Defendants had not yet produced any documents concerning the accused products.1
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`Accordingly, these supplemental disclosures remain based solely upon publicly available
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`information and Plaintiff’s present understanding of said publicly available information.
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`Plaintiff’s investigation of the matters disclosed herein is ongoing. Accordingly, Plaintiff may
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`seek to amend, modify, or supplement these disclosures based upon further discovery and
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 2 of 14
`investigation.
`
`Throughout these disclosures the term “Accused Products” may, depending on context
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`and the specific patent at issue, mean any of the identified activity tracker products offered by
`
`
`1 On March 13th, 2020 Fitbit provided its first document production in conjunction with its
`disclosures under L.R. 16.6(d)(4). Philips has not yet confirmed whether this production
`contained information concerning the detailed functionality of the accused products.
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`

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`Fitbit, as well as any software products related to, associated with, or used in conjunction with
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`said activity tracker products (regardless of whether such software runs on the activity tracker
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`itself, a mobile device, desktop/laptop computer, server, or other computing device). For
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`example, “Accused Product” may refer to an activity tracker alone or to a system utilizing the
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`activity tracker in combination with a device running the Fitbit App. An Accused Product may
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`also refer to a system that further includes server-based software and related hardware and
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`software.
`
`Unless otherwise noted the supplemental information provided below applies to each
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`assertion of each asserted patent against each asserted product.
`
`A. U.S. Pat. No. 6,013,007
`
`1. Identification of means-plus-function terms under 35 U.S.C. §
`112
`
`Philips identifies the following elements of the ’007 as means-plus-function terms
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`under 35 U.S.C § 112. The identity of the structures and in the accused products that
`
`perform the claimed function are identified (to the extent possible given that Philips’s
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`contentions are presently based solely on publicly available information) in the claim
`
`charts originally served with Philips’s 16.6(d)(1) disclosures. However, and in view of
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`questions posed by counsel for Fitbit during a meet and confer, Philips provides some
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`clarifications below. However, failure to specifically recite a specific function or item of
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 3 of 14
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`support in the below clarifications should not be interpreted as a waiving any claim of
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`infringement over any and all functions and structures identified in Philips’s original
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`charts.
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`2
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`Means-Plus-Function Element
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`Additional Comments
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`Claim 1: “means for computing athletic
`performance feedback data from the series of
`time-stamped waypoints obtained by said GPS
`receiver”
`
`Claim 1: “means for presenting the athletic
`performance feedback data to an athlete.”
`
`As identified in the previously served claim
`charts, the “athletic performance feedback
`data” of the accused products includes at least
`waypoint-based distance, waypoint-based pace,
`and Cardio Fitness Score (which, upon
`information and belief, incorporates
`calculations of waypoint-based distance and/or
`waypoint-based pace in relation to other data).
`The computing is performed by the underlying
`processor(s) from time-stamped waypoints
`obtained by a GPS receiver. The details of that
`computation in the accused products have not
`yet been provided by Fitbit to Philips.
`
`As identified in the previously served claim
`charts, the claimed “means for presenting”
`include the screen of a mobile device running
`the Fitbit App, as well as “voice cues” which
`provide audio feedback of athletic performance
`feedback data, including waypoint-based
`distance and waypoint-based pace.
`
`Claim 7: “means for suspending and resuming
`operation of said means for computing when a
`speed of the athlete falls below a
`predetermined threshold”
`
`As identified in the previously served claim
`charts, the means for suspending and resuming
`operation include the “Auto-Pause” feature of
`the accused products.
`
`Claim 21: “means for computing athletic
`performance feedback data from the series of
`time-stamped waypoints obtained by said GPS
`receiver”
`
`As identified in the previously served claim
`charts, the “athletic performance feedback
`data” of the accused products includes at least
`waypoint-based distance, waypoint-based pace,
`and Cardio Fitness Score (which, upon
`information and belief, incorporates
`calculations of waypoint-based distance and/or
`waypoint-based pace). The computing is
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 4 of 14
`performed by the underlying processor(s) from
`time-stamped waypoints obtained by a GPS
`receiver. The details of that computation in the
`accused products have not yet been provided
`by Fitbit to Philips.
`
`Claim 21: “means for presenting the athletic
`performance feedback data to an athlete”
`
`As identified in the previously served claim
`charts, the claimed “means for presenting”
`include the screen of a mobile device running
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`3
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`the Fitbit App, as well as “voice cues” which
`provide audio feedback of athletic performance
`feedback data, including waypoint-
`baseddistance and waypoint-based pace.
`
`As identified in the previously served claim
`charts, the claimed “means for verifying actual
`exercise activity” include at least the
`“SmartTrack” and “Auto-Pause” features of
`the accused products.
`
`As identified in the previously served claim
`charts, the claims “means for exchanging GPS
`route waypoints via said Internet website”
`includes the “Share with Friends” feature of
`the Fitbit App that allows sharing of maps.
`
`Claim 22: “means for verifying actual exercise
`activity.”
`
`Claim 25: “means for exchanging GPS route
`waypoints via said Internet web site”
`
`
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`2. Additional details concerning infringement and acts of multiple
`parties.
`i. Direct Infringement (35 U.S.C. § 271(a))
`Fitbit has directly infringed the claims of the ’007 by at least making and using a
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`system that included every element of the accused products (as charted), at least for the
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`purposes of testing its products and services, demonstrating its products and services to
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`others, etc.
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`ii. Direct Infringement via Joint Infringement (35 U.S.C. §
`271(a))
`
`Fitbit has directly infringed the claims of the ’007 by jointly infringing with its
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 5 of 14
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`customers. While Fitbit provides the accused activity tracker devices, the Fitbit App, and
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`(to the extent relevant to any given claim) the Fitbit servers that are accessible to the
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`Fitbit App, the customer provides the mobile device and any audio headset that may be
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`required by any particular claim. Fitbit and its customers jointly make and use the
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`4
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`accused system covered by the ’007 patent. Indeed, a customer only received the benefits
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`of the Fitbit products and services once he connects the Fitbit activity tracker that he
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`purchased with the Fitbit App running on a mobile device, as instructed by Fitbit. Fitbit
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`maintains control and supervision of requiring its users to maintain authorized accounts.
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`Further, the customers directly infringe by using the Fitbit system, App and services
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`through their account.
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`iii. Induced Infringement (35 U.S.C. § 271(b))
`Fitbit also induced infringement of the ’007 patent by instructing users on how to
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`make and use the accused systems. Fitbit documents and materials, including those cited
`
`in Philips’s infringement charts, demonstrate how Fitbit instructs its users to make and
`
`use the accused systems.
`
`iv. Contributory Infringement (35 U.S.C. § 271(c))
`Fitbit also contributes to infringement of the ’007 patent because Fitbit provides
`
`the various Fitbit activity trackers and the Fitbit App that comprise the accused system.
`
`Neither the Fitbit activity trackers, nor the Fitbit App, are staple articles or commodities
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`of commerce, and neither are capable of substantial non-infringing use. The Fitbit
`
`Activity tracker products, as well as the Fitbit App, come preconfigured with the accused
`
`functionalities and are infringed in the ordinary course by a customer who makes and
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 6 of 14
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`uses the accused systems.
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`B. U.S. Pat. No. 7,088,233
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`1. Identification of means-plus-function terms under 35 U.S.C. §
`112
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`5
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`Philips identifies the following element of the ’233 Patent as a means-plus-
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`function term under 35 U.S.C § 112. The identity of the structures and in the accused
`
`products that perform the claimed function are identified (to the extent possible given that
`
`Philips’s contentions are presently based solely on publicly available information) in the
`
`claim charts originally served with Philips’s 16.6(d)(1) disclosures. However, and in
`
`view of questions posed by counsel for Fitbit during a meet and confer, Philips provides
`
`some clarifications below. However, failure to specifically recite a specific function or
`
`item of support in the below clarifications should not be interpreted as a waiving any
`
`claim of infringement over any and all functions and structures identified in Philips’s
`
`original charts.
`
`Means-Plus-Function Element
`
`Additional Comments
`
`As identified in the previously served claim
`charts, the “means for signaling” as claimed
`are provided by the synching features of the
`accused products.
`
`Claim 26: “means for signaling the bi-
`directional communications module to
`transition from the powered-down state to the
`powered-up state.”
`
`2. Additional details concerning infringement and acts of multiple
`parties.
`i. Direct Infringement (35 U.S.C. § 271(a))
`Fitbit has directly infringed the claims of the ’233 by at least making and using a
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 7 of 14
`
`system that included every element of the accused products (as charted), at least for the
`
`purposes of testing its products and services, demonstrating its products and services to
`
`others, etc.
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`6
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`

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`ii. Direct Infringement via Joint Infringement (35 U.S.C. §
`271(a))
`
`Fitbit has directly infringed the claims of the ’233 Patent by jointly infringing with
`
`its customers. While Fitbit provides the accused activity tracker devices and the Fitbit
`
`App, the customer provides the mobile device running the Fitbit App that may be
`
`required by any particular claim. Fitbit and its customers jointly make and use the
`
`accused system covered by the ’233 patent. Indeed, a customer only receives the benefits
`
`of the Fitbit products and services once he connects the Fitbit activity tracker that he
`
`purchased with the Fitbit App running on a mobile device, as instructed by Fitbit. Fitbit
`
`maintains control and supervision of requiring its users to maintain authorized accounts.
`
`Further, the customers directly infringe by using the Fitbit system, App and services
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`through their account.
`
`iii. Induced Infringement (35 U.S.C. § 271(b))
`Fitbit also induces infringement of the ’233 Patent by instructing users on how to
`
`make and use the accused systems. Fitbit documents and materials, including those cited
`
`in Philips’s infringement charts, demonstrate how Fitbit instructs its users to make and
`
`use the accused systems.
`
`iv. Contributory Infringement (35 U.S.C. § 271(c))
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 8 of 14
`Fitbit also contributes to infringement of the ’007 patent because Fitbit provides
`
`the various Fitbit activity trackers and the Fitbit App that comprise the accused system.
`
`Neither the Fitbit activity trackers, nor the Fitbit App, are staple articles or commodities
`
`of commerce, and neither are capable of substantial non-infringing use. The Fitbit
`
`7
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`Activity tracker products, as well as the Fitbit App, come preconfigured with the accused
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`functionalities and are infringed in the ordinary course by a customer who makes and
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`uses the accused systems.
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`C. U.S. Pat. No. 8,277,377
`
`1. Additional details concerning infringement and acts of multiple
`parties.
`i. Direct Infringement (35 U.S.C. § 271(a))
`
`Fitbit has directly infringed the claims of the ’377 by at least performing the claim
`
`methods (as charted), at least for the purposes of testing its products and services,
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`demonstrating its products and services to others, etc.
`
`ii. Direct Infringement via Joint Infringement (35 U.S.C. §
`271(a))
`
`Fitbit has directly infringed the claims of the ’377 Patent by jointly infringing with
`
`its customers. While Fitbit provides the accused activity tracker devices and the Fitbit
`
`App, the customer provides the mobile device running the Fitbit App. Fitbit and its
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`customers then jointly perform the method covered by the ’377 patent as charted. Indeed,
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`a customer only receives the benefits of the Fitbit products and services once he sets up a
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`wireless connection between an activity tracker and the Fitbit App as described in Fitbit
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`materials and the charted contentions, as instructed by Fitbit. Fitbit maintains control and
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 9 of 14
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`supervision of requiring its users to maintain authorized accounts. Further, the customers
`
`directly infringe by using the Fitbit system, App and services through their account.
`
`iii. Induced Infringement (35 U.S.C. § 271(b))
`
`8
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`Fitbit also induces infringement of the ’377 Patent by instructing users on how to
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`make and use the accused systems in accordance with the claimed methods of the ’377
`
`Patent. Fitbit documents and materials, including those cited in Philips’s infringement
`
`charts, demonstrate how Fitbit instructs its users to perform the claimed methods,
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`utilizing Fitbit products and services.
`
`iv. Contributory Infringement (35 U.S.C. § 271(c))
`
`Fitbit also contributes to infringement of the ’377 patent because Fitbit provides
`
`the various Fitbit activity trackers and the Fitbit App that necessarily practice the claimed
`
`methods. Neither the Fitbit activity trackers, nor the Fitbit App, are staple articles or
`
`commodities of commerce, and neither are capable of substantial non-infringing use. The
`
`Fitbit Activity tracker products, as well as the Fitbit App, come preconfigured with the
`
`accused functionalities and are infringed in the ordinary course by a customer who makes
`
`and uses the accused systems.
`
`A. U.S. Pat. No. 6,976,958
`
`1. Additional details concerning infringement and acts of multiple
`parties.
`i. Direct Infringement (35 U.S.C. § 271(a))
`Fitbit has directly infringed the claims of the ’958 by at least making and using a
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 10 of 14
`system that included every element of the accused products (as charted), at least for the
`
`purposes of testing its products and services, demonstrating its products and services to
`
`others, etc.
`
`
`
`9
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`

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`ii. Direct Infringement via Joint Infringement (35 U.S.C. §
`271(a))
`
`Fitbit has directly infringed the claims of the ’958 Patent by jointly infringing with
`
`its customers. While Fitbit provides the accused activity tracker devices and the Fitbit
`
`App, the customer provides the mobile device running the Fitbit App that may be
`
`required by any particular claim. Fitbit and its customers jointly make and use the
`
`accused system covered by the ’958 patent. Indeed, a customer only receives the benefits
`
`of the Fitbit products and services once he connects the Fitbit activity tracker that he
`
`purchased with the Fitbit App running on a mobile device, as instructed by Fitbit. Fitbit
`
`maintains control and supervision of requiring its users to maintain authorized accounts.
`
`Further, the customers directly infringe by using the Fitbit system, App and services
`
`through their account.
`
`iii. Induced Infringement (35 U.S.C. § 271(b))
`Fitbit also induces infringement of the ’958 Patent by instructing users on how to
`
`make and use the accused systems. Fitbit documents and materials, including those cited
`
`in Philips’s infringement charts, demonstrate how Fitbit instructs its users to make and
`
`use the accused systems.
`
`iv. Contributory Infringement (35 U.S.C. § 271(c))
`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 11 of 14
`Fitbit also contributes to infringement of the ’958 patent because Fitbit provides
`
`the various Fitbit activity trackers and the Fitbit App that comprise the accused system.
`
`Neither the Fitbit activity trackers, nor the Fitbit App, are staple articles or commodities
`
`of commerce, and neither are capable of substantial non-infringing use. The Fitbit
`
`10
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`

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`Activity tracker products, as well as the Fitbit App, come preconfigured with the accused
`
`functionalities and are infringed in the ordinary course by a customer who makes and
`
`uses the accused systems.
`
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`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 12 of 14
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`Dated: March 17, 2020
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`Respectfully Submitted,
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`
`
` /s/ Eley O. Thompson
`Lucas I. Silva (BBO 673,935)
`Ruben J. Rodrigues (BBO 676,573)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Suite 2500
`Boston, MA 02199-7610
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`lsilva@foley.com
`
`
`
`Eley O. Thompson (pro hac vice to be filed)
`FOLEY & LARDNER LLP
`321 N. Clark Street
`Suite 2800
`Chicago, IL 60654-5313
`Phone: (312) 832-4359
`Fax: (312) 832-4700
`ethompson@foley.com
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`Counsel for Plaintiff
` Philips North America LLC
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`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 13 of 14
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above document was
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`served on March 17, 2020 on counsel for Defendant via electronic mail.
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`/s/ Ruben J. Rodrigues
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`Case 1:19-cv-11586-FDS Document 270-10 Filed 01/05/22 Page 14 of 14
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