Case 1:19-cv-11586-FDS Document 270-5 Filed 01/05/22 Page 1 of 4
`Case 1:19-cv-11586-FDS Document 270-5 Filed 01/05/22 Page 1 of 4
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`EXHIBIT 5
`EXHIBIT 5
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`Case 1:19-cv-11586-FDS Document 270-5 Filed 01/05/22 Page 2 of 4
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`March 6, 2020
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`Ruben Rodrigues
`Foley & Lardner LLP
`111 Huntington Avenue
`Boston, MA 02199
`
`Re: Philips v. Fitbit, Case No. 1:19-cv-11586 (D.Mass)
`Follow up to March 4, 2020 Meet and Confer Conference Call
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`Dear Ruben,
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`Thank you for meeting and conferring with us on March 4, 2020 to discuss the deficiencies that
`Fitbit has raised in connection with Philips’ discovery responses and Infringement Contentions.
`We have made progress on some issues, while we have established an impasse on others. I trust
`that our continued efforts to meet and confer, and your agreement to provide supplemental
`responses will further narrow our disputes.
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`On the issue of modifications to the protective order, and an ESI/Discovery order, we proposed
`the parties implement the scope and terms of the ITC protective and discovery orders, to ensure
`consistency in productions and format for electronic materials etc. You agreed in principle to this
`request.
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`Interrogatory 1 calls for identification of conception and reduction to practice for each asserted
`claim. This interrogatory also relates to Local Rule 16.6(d)(1)(B) which requires Philips produce
`documents concerning conception and reduction to practice. You confirmed that while Foley
`represents both Philips and the individual inventors, you did not seek any evidence of conception
`or reduction to practice from the inventors. Your position is that Philips does not have custody or
`control of any of this information and, despite representing all participants in this litigation, you
`have no obligation to request or obtain the information from the inventors. Fitbit disagrees. You
`confirmed that you are authorized to accept service of a subpoena on behalf of all inventors. You
`also confirmed that, to the extent you intend to rely on anything in the file history to establish an
`earlier conception date than that of the filing date of the application, you will identify by bates
`number exactly what you contend establishes an earlier conception and reduction to practice. We
`are at an impasse and continue to insist that Philips comply with its discovery obligations and
`that the required information be obtained from the inventors whom you also represent.
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`Interrogatory 5 calls for the written description support for each asserted claim in the
`provisionals and CIPs relied upon to establish an early claim to priority. Fitbit pointed out to you
`that with multiple provisionals and CIPs, the difference between the earliest claim to priority and
`the filing date of the patent application is sometimes over 4 years. This makes the search for
`prior art unnecessarily costly, as Fitbit does not know what Philips contends provides written
`description support for its reliance on the earliest priority date. You confirmed Philips’ position
`that it is entitled to claim the benefit of the earliest date in the priority chain, but have conducted
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`Case 1:19-cv-11586-FDS Document 270-5 Filed 01/05/22 Page 3 of 4
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`no analysis to determine if there is written description support for any of the claims in those
`earliest provisional applications. You asserted that Philips has no obligation to provide support
`for their reliance on the provisional and continuation-in-part applications absent identification of
`§ 102(e) prior art. Please provide authority supporting this position, as promised during the call,
`or information responsive to Interrogatory 5.
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`Interrogatory 8 calls for all evidence of secondary considerations of non-obviousness that
`Philips may rely upon. Fitbit explained that these objective indicia of non-obviousness exist, if at
`all, independent of the particular prior art that Fitbit may rely upon to establish obviousness. You
`responded that you disagreed because the prior art might include text that suggests no motive to
`combine the prior art in an obviousness combination. I responded that you have confused
`motivation to combine, with the entirely separate inquiry of whether there is objective indicia of
`non-obviousness. You stated that Philips does not have any information responsive to this
`request and that you would not tell us if you had asked the inventors, who you represent, if they
`had any information responsive to the request. We are at an impasse. Fitbit will seek to exclude
`all materials that you may later present that could have been provided in response to this
`interrogatory had you conducted a good faith effort to investigate and prepare a response.
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`Regarding your infringement contentions, we discussed the deficiencies in your disclosures
`under Local Rule 16.6(d), which had previously been raised in our February 21, 2020 letter.
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`Means-Plus-Function Disclosures Local Rule 16.6(d)(iv) requires disclosure of means-plus-
`function terms and identification of structures in the accused products that perform the claimed
`function. Despite numerous means-plus-function claims, Philips’ infringement contentions did
`not meet this requirement. You agreed to revise your means-plus-function disclosures and
`supplement to expressly explain those claims to comply with Local Rule 16.6(d)(1)(A)(iv).
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`Philips maintains that “means for computing athletic performance data” is a processor and
`“athletic performance data” is distance, cardio fitness score, and pace. You also agreed to make
`this, and other mean-plus-function terms, clear in your revised contentions. Philips confirmed
`they are not relying on anything other than what is already in their infringement charts, and will
`just revise to make it clearer. You agreed to supplement no later than March 17th.
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`Doctrine of Equivalents Disclosures Local Rule 16.6(d)(1)(A)(v) requires a disclosure whether
`each claim limitation is asserted literally or under the doctrine of equivalents. Philips’ disclosures
`included only boilerplate assertions that every claim limitation is present either literally or by
`equivalents, and failed to provide the details required under the Local Rules that would give
`Fitbit adequate notice of Philips’ infringement theory for the asserted claims. You agreed that all
`claims of infringement are literal, and at present you have no claims for infringement based on
`equivalents.
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`Third-Party/Indirect/Joint Infringer Disclosures Local Rule 16.6(d)(1)(A)(vi) requires that
`where any alleged infringement is based on the acts of multiple parties, disclosure must identify
`those parties and their role in the alleged infringement. Philips provided only boilerplate
`contentions that every single asserted claim is infringed directly and indirectly by unknown third
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`Case 1:19-cv-11586-FDS Document 270-5 Filed 01/05/22 Page 4 of 4
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`parties. Philips agreed to provide further details in contentions regarding joint, contributory and
`induced infringement including identifying the direct infringer to respond to Interrogatories 6, 7,
`and 9 and to comply with Local Rule 16.6 (d)(1)(A)(vi). You agreed to supplement no later than
`March 17th.
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`Limitation-by-Limitation Descriptions of Infringement Local Rule 16.6(d)(1)(A)(iii) requires
`Philips to provide a limitation-by-limitation description of where and how each asserted claim is
`found in each accused product or how Fitbit practices each method claim. We discussed, and you
`agreed, that some of Philips’ disclosures reference an extensive range of page numbers or series
`of images rather than specific references. This is insufficient to give Fitbit adequate notice of
`Philips’ infringement theory for the asserted claims. You agreed to supplement in the form of a
`written response.
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`Request 32 We asked for further information concerning your Request 32, and whether you
`were aware of any products actually produced by any of the named entities so we can better
`determine if we have any documents responsive to the Request. You agreed to look into this
`issue.
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`Request 39 Regarding your Request 39, we informed you that premium subscription service was
`not available until fall 2019, long after the ‘007 patent had expired. We informed you that we
`believe this is a further indication of a faulty pre-filing Rule 11 analysis, as Philips is asserting
`expired patents in this case, but appears to repeatedly rely on information generated post-
`expiration to support its infringement contentions. As we explained, had a proper pre-filing
`inquiry taken place Philips would have realized that many of its infringement contentions rely on
`information that was not available during the time period that the patents were in force.
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`Requests 19, 25, 29, 68 Regarding your RFPs 19, 25, 29, and 68, we are not producing materials
`from other disputes as the material is not relevant and not proportional to the needs of the case
`given the importance of the issues at stake, the amount in controversy, the parties’ relative access
`to information, the parties’ resources and the importance of the discovery (or lack thereof). Fitbit
`further expresses concern as to the admissibility of such evidence and questions the relevance
`when the asserted patents and issues in the present suit (particularly due to the age of the patents-
`in-suit) may be significantly different from those in past cases.
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`We agreed to provide written responses to your meet and confer letter, explaining the basis of
`our objections, on the remaining issues. We agreed to meet and confer further thereafter, as
`necessary.
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`Thank you for your prompt attention to these issues. We look forward to your supplemental
`responses expected by March 17, 2020.
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