Case 1:19-cv-11586-FDS Document 270-4 Filed 01/05/22 Page 1 of 4
`Case 1:19-cv-11586-FDS Document 270-4 Filed 01/05/22 Page 1 of 4
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`EXHIBIT 4
`EXHIBIT 4
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`Case 1:19-cv-11586-FDS Document 270-4 Filed 01/05/22 Page 2 of 4
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`1(650) 320-1882
`davidbeckwith@paulhastings.com
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`February 14, 2020
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`Ruben J. Rodrigues
`Senior Counsel
`Foley & Lardner LLP
`111 Huntington Avenue, Suite 2500
`Boston, Massachusetts 02199-7610
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`Re:
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`Philips v. Fitbit
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`Dear Rubin:
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`94143.00004
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`I write to request a meet and confer regarding the deficient interrogatory responses provided by Philips in
`response to Fitbit’s Interrogatories 1-9.
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`Interrogatory 1:
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`Fitbit is entitled to the evidentiary support for conception and reduction to practice. Indeed Local Rule
`16.6(d)(1)(B) requires the patentee to provide documents concerning conception and reduction to
`practice as part of the initial disclosure. Philips’ response that information “may be found pursuant to
`FRCP 33(d)” in the file histories is not a proper response. It is not Fitbit’s duty to guess what in the file
`histories Philips may contend is evidence of conception and reduction to practice for each asserted
`patent. Moreover reliance on Rule 33(d) as part of a discovery response requires a particularized
`identification of exactly where in the document production the requested information may be found.
`Philips’ response that each patent was conceived and reduced to practice “at least as early as…” is a
`non-sequitur. The interrogatory seeks the evidentiary facts and circumstances concerning the actual
`conception and reduction to practice. The current response is evasive as it leaves open the possibility
`that Philips may assert a date of conception that predates the actual filing date of the patent application.
`Philips’ initial disclosures indicate that the named inventors are represented by your firm. You have an
`obligation to obtain the information from your clients and provide complete, non-evasive responses.
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`Interrogatory 2:
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`Philips objects to the interrogatory on the basis that a protective order has not been entered in the case. I
`will provide edits to the proposed protective order your office offered. Please confirm that entry of a
`protective order will resolve all of Philips’ objections and a complete response will be provided to
`interrogatory 2.
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`Case 1:19-cv-11586-FDS Document 270-4 Filed 01/05/22 Page 3 of 4
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`Ruben J. Rodrigues
`February 14, 2020
`Page 2
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`Interrogatory 3:
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`Philips response to interrogatory 3 suffers a flaw similar to the response to No. 1, having responding with
`a date “at least by…” This is an evasive response as it does not provide the earliest date of Philips’
`knowledge for each asserted patent.
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`Interrogatory 4:
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`Philips’ “interpretation” of this interrogatory is incorrect. Fitbit is entitled to learn the identity of any system
`or product that was ever made, sold, offered for sale, licensed, offered for license, or imported for any
`Philips entity or anyone else acting with the consent of Philips. This includes any licensees, and also
`includes any historic sales (it is not limited to current products). In addition, Philips’ Complaint alleges “the
`patented technologies asserted in this action enable and enhance customer demand for products such
`as, for example GPS/audio athletic training, security mechanisms for transmission of personal data,
`connected wearable/online products and handling of interrupted connections.” The Complaint also
`references Actiwatch family of devices and the MIO Alpha fitness tracker watch. Is it now Philips’ position
`that none of the products it identified in its Complaint or First Amended Complaint practice any of the
`asserted claims? Or that Philips’ Health Watch and HealthSuite health app did not practice, or enable
`users to practice, any of the asserted claims?
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`Interrogatory 5:
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`Fitbit is entitled to Philips’ contentions concerning the written description support for each asserted claim,
`forming the basis for Philips’ claim to the benefit of priority to any and all provisional patent applications.
`For example, the ‘233 patent purports to claim priority to three provisional applications, through two
`continuation-in-part applications. The claimed priority range is between 1998 and 2002. Philips must
`provide a disclosure charting what it contends provides written description support in the provisional
`applications for each of the asserted claims. Likewise, the ‘377 patent, filed in 2008, claims priority to a
`1999 provisional application. Fitbit need not guess what portions of the Provisionals are relied upon by
`Philips to satisfy the written description requirement to establish a right to priority for the asserted claims.
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`Interrogatory 6, 7 and 9:
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`Fitbit is entitled to the evidentiary facts supporting Philips’ contentions regarding induced, contributory and
`joint infringement. Philips’ current responses simply parrot the claim language and regurgitate legal
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`Case 1:19-cv-11586-FDS Document 270-4 Filed 01/05/22 Page 4 of 4
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`Ruben J. Rodrigues
`February 14, 2020
`Page 3
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`standards. Philips must provide all evidentiary facts supporting its contentions, not simply restate those
`contentions. For example but without limitation, what evidentiary facts does Philips rely on for its
`contention that the accused products have no substantial non-infringing use? Philips must provide the
`evidentiary basis for all of its contentions upon which it bases its inducement, contributory and joint
`infringement claims, or concede that it had no Rule 11 basis for its contentions.
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`Interrogatory 8:
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`Fitbit is entitled to all evidentiary facts upon which Philips contends the patents-in-suit are not obvious.
`This includes all evidentiary facts relevant to objective indicia of non-obviousness including commercial
`success, long felt need, failure of others, copying, unexpected benefits, awards or praise, surprise
`expressed by others, or any other facts upon which Philips may rely.
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` I
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` am available to discuss these deficiencies at your earliest convenience.
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`Sincerely,
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`/s/David Beckwith
`Dave Beckwith
`for PAUL HASTINGS LLP
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`DB:ac
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