Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 1 of 9
`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 1 of 9
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`EXHIBIT 6
`EXHIBIT 6
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`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 2 of 9
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`1(650) 320-1855
`davidokano@paulhastings.com
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`November 5, 2020
`
`
`Ruben Rodrigues
`Foley & Lardner LLP
`111 Huntington Avenue
`Suite 2500
`Boston, MA 02199
`
`Re:
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`Philips’ Discovery Deficiencies and Meet and Confer
`
`Ruben:
`
`We write regarding several of a number of deficiencies in Philips’ interrogatory responses. We address
`Philips’ responses to Fitbit’s Interrogatory Nos. 1, 6-7, 9, 13, 16, 18-19 in this letter. As discussed below,
`Philips’ responses to these interrogatories are deficient. Fitbit requests that Philips promptly supplement
`its responses to provide the requested information.
`
`Furthermore, we request a meet and confer at your earliest opportunity to discuss these discovery
`deficiencies, in addition to those raised in correspondence dated October 30, 2020.
`
`I.
`
`INTERROGATORY NO. 1
`
`Interrogatory No. 1 asks:
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`For each claim of the Patents-in-Suit, describe the facts and circumstances of the
`conception, reduction to practice, and earliest effective filing date of the claimed
`invention, including without limitation (a) the identity of the earliest date by which the
`inventor(s) conceived the claimed invention; (b) the identity of the earliest date by which
`the inventor(s) reduced to practice the claimed invention; (c) whether the alleged
`reduction to practice was actual or constructive; (d) the steps constituting diligence from
`conception to actual or constructive reduction to practice, including any testing of the
`claimed invention; and (e) the identity of all Documents that Refer or Relate to such
`conception, diligence, or reduction to practice.
`
`Philips’ response alleges that each of the Patents-in-Suit is entitled to claim the benefit of at least the
`filing date of the earliest application to which priority is claimed. This response is inconsistent with Philips’
`response to Interrogatory No. 5, which admits that the Patents-in-Suit are not each entitled to claim the
`benefit of the earliest application in the priority chain. For example, Philips admitted that certain claims of
`the ’233 patent are only entitled to a priority date of March 28, 2001, and that the remaining asserted
`claims of the ’233 patent are only entitled to a priority date of May 25, 1999, not to the earliest-filed
`application in the priority chain, which was filed on October 23, 1998.
`
`Moreover, Philips has not supplemented its response to identify any conception or reduction to practice
`prior to the dates listed in response to Interrogatory No. 5, despite Fitbit requesting this information since
`at least February. See February 14, 2020 Letter from D. Beckwith to R. Rodrigues. In view of Philips’
`failure to supplement its response to provide this information that it was required to provide under Local
`Rule 16.6(d)(1)(B), Fitbit understands that Philips will not be contending that the asserted claims were
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`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 3 of 9
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`Ruben Rodrigues
`November 5, 2020
`Page 2
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`conceived and reduced to practice prior to the alleged priority dates provided in response to Interrogatory
`No. 5. Indeed, Fitbit understands from Philips’ response to Interrogatory No. 12 that Philips’ priority date
`contentions are set out in its response to Interrogatory No. 5.
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`Philips must supplement its response to Interrogatory No. 1 such that it is consistent with its response to
`Interrogatory No. 5.
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`II.
`
`INTERROGATORY NO. 6
`
`Interrogatory No. 6 asks:
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`For each asserted claim that You contend Fitbit has induced infringement under 35
`U.S.C. § 271(b), state the factual basis for your contention that Defendants have induced
`infringement, including identification of the underlying direct infringer, identification of the
`specific act (i.e., (a) makes; (b) uses (c) offers to sell or (d) sells any patent invention,
`within the United States or (e) imports into the United States any patented invention) You
`contend the direct infringer performs, identification of the action constituting inducement
`of infringement, identification of facts supporting your contention that Defendants had
`knowledge of the Patents-in-Suit prior to the filing of this lawsuit, the identity of the person
`or entity performing each such action (including any third parties You allege Fitbit is
`inducing to infringe), and identify documents (by bates number) or things evidencing such
`alleged infringement.
`
`Induced infringement requires underlying direct infringement. Limelight Networks, Inc. v. Akamai Techs.,
`Inc., 572 U.S. 915, 920–21 (2014). Philips does not identify the specific acts it contends Fitbit’s customers
`perform, nor has it identified any evidence that any customer has actually performed any such infringing
`act, despite this interrogatory requesting both. Philips’ response also vaguely refers to “distributors,
`partners, resellers,” without identifying any specific distributor, partner, or reseller that it believes has directly
`infringed the claims.
`
`Nor has Philips identified or described any facts supporting its contention that Fitbit has “tak[en] active steps
`to encourage and facilitate others’ direct and joint infringement of the Patents-in-Suit.” Philips refers to
`broad categories of documents (“instructions, user manuals, advertising and/or marketing materials”), but
`does not point to any specific documents nor any specific statements within those documents showing that
`Fitbit has specifically encouraged direct infringement of the Patents-in-Suit.
`
`Moreover, Philips’ response provides conclusory assertions as to the mens rea required to show induced
`infringement. Induced infringement requires both knowledge of the patent and knowledge that the induced
`acts were infringing. The Supreme Court has made clear in both “inducement and contributory infringement
`cases,” the knowledge that “acts might infringe” is insufficient: “Global-Tech requires more. It requires proof
`the defendant knew the acts were infringing. And the Court's opinion was clear in rejecting any lesser
`mental state as the standard.” Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 135 S. Ct. 1920, 1928
`(2015); see also DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1307 (Fed. Cir. 2006) (“[O]n this record, the
`jury was well within the law to conclude that ITL did not induce JMS to infringe by purposefully and culpably
`encouraging JMS's infringement. To the contrary, the record contains evidence that ITL did not believe its
`Platypus infringed. Therefore, it had no intent to infringe.”). Conclusory assertions that Fitbit “knowingly
`induced and continues to induce infringement,” had “knowledge or willful blindness to that infringement,” or
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`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 4 of 9
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`Ruben Rodrigues
`November 5, 2020
`Page 3
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`performed certain acts “with knowledge thereof” provides nothing more than legal conclusions. Philips
`provides no facts supporting its contention that Fitbit had knowledge that the allegedly induced acts were
`infringing, nor when Fitbit had such knowledge. Nor does Philips state when it contends Fitbit had
`knowledge of each of the Patents-in-Suit for purposes of induced infringement and the facts supporting
`such contention.
`
`This interrogatory seeks information relevant to Philips’ affirmative claim of induced infringement under 35
`U.S.C. § 271(b) for which Philips bears the burden of proof. See Medtronic, Inc. v. Mirowski Family
`Ventures, LLC, 571 U.S. 191, 193 (2014) (“A patentee ordinarily bears the burden of proving infringement.”).
`
`Philips must promptly supplement its response to Interrogatory No. 6 to identify the specific alleged direct
`infringers (including who the “distributors, partners, resellers” are) and their specific acts that directly infringe
`in addition to all facts that form the basis for the contention. Philips must also promptly supplement its
`response to identify the specific acts and statements supporting Philips’ contention that Fitbit actively
`induced others to directly infringe the asserted claims, rather than listing broad categories of documents,
`and all supporting facts to support its affirmative claim. Philips must also promptly supplement its response
`to identify all facts supporting its contention that Fitbit had knowledge of the patent and that Fitbit had
`knowledge that the allegedly induced acts were infringing. To the extent that Philips fails to do so, Fitbit
`reserves the right to move to exclude any undisclosed evidence that Philips may attempt to submit in
`support of its induced infringement claim.
`
`III.
`
`INTERROGATORY NO. 7
`
`Interrogatory No. 7 asks:
`
`For each asserted claim, state whether You contend Fitbit has contributed to infringement
`under 35 U.S.C. § 271(c), and if so, state the factual basis for your contention, including
`identifying the direct infringer, identifying the specific act (i.e., (a) makes; (b) uses (c)
`offers to sell or (d) sells any patent invention, within the United States or (e) imports into
`the United States any patented invention) You contend the direct infringer performs,
`identifying each and every “patented machine, manufacture, combination or composition,
`or a material or apparatus for use in practicing a patented process” that includes a
`“component” that is a “material part of the invention,” identifying each and every
`“component” that is a “material part of the invention” and included in the identified
`“patented machine, manufacture, combination or composition," identifying facts
`supporting knowledge that the accused products are “especially made or especially
`adapted for use in an” alleged infringement, identifying facts that support your contention
`that Defendants had knowledge of the Patents-in-Suit prior to the filing of this lawsuit,
`identifying facts that support your contention that the accused products are not a staple
`article or commodity of commerce suitable for substantial non-infringing use, and
`identifying documents (by bates number) or things evidencing such alleged infringement.
`
`As with induced infringement, contributory infringement requires underlying direct infringement. Dynacore
`Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004) ("Indirect infringement, whether
`inducement to infringe or contributory infringement, can only arise in the presence of direct
`infringement...."). Philips does not identify any third party as an underlying direct infringer or any specific
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`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 5 of 9
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`Ruben Rodrigues
`November 5, 2020
`Page 4
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`act it contends the third party performs that constitutes direct infringement, nor has it identified any evidence
`of such direct infringement.
`
`For each patent, Philips alleges that Fitbit contributes to infringement through sale of the “Accused
`Products.” But Philips defined “Accused Products” in its infringement contentions broadly as including “any
`of the identified activity tracker products offered by Fitbit, as well as any software products related to,
`associated with, or used in conjunction with said activity tracker products (regardless of whether such
`software runs on the activity tracker itself, a mobile device, desktop/laptop computer, server, or other
`computing device).” Philips’ First Supplemental L.R. 16.6(d)(1) Disclosures (May 15, 2020) at 2-3.
`According to Philips, an “Accused Product” may refer to “an activity tracker alone or to a system utilizing
`the activity tracker in combination with a device running the Fitbit App” or to “a system that further includes
`server-based software and related hardware and software.” This broad, sweeping definition of “Accused
`Products” provides no notice to Fitbit of precisely which components Philips is alleging are a material part
`of the invention especially adapted for use in infringement, and not a staple article or commodity with no
`substantial noninfringing use. As a result, for each Patent-in-Suit, it is unclear precisely what component
`Philips is contending “includes” or “enables” which claimed components or steps.
`
`Furthermore, Philips’ response does not specify the basis for its contention that each accused product
`“constitutes a material part of the invention, is known by Fitbit to be especially made or adapted for use in
`infringing [the Patents-in-Suit], and is not a staple article or commodity of commerce that is suitable for
`substantial noninfringing use.” Fitbit’s interrogatory specifically asks Philips to identify the facts that
`supports its contention that the accused products are a material part of the invention, especially adapted
`for use in an alleged infringement, and not a staple article or commodity of commerce suitable for substantial
`noninfringing use. Philips has failed to do so, its response merely parroting back its contention. Philips’
`conclusory language that the accused products may be used in an allegedly infringing manner and its
`reference to its L.R. 16.6(d)(1) disclosures are insufficient. The inquiry is not whether the accused products
`have infringing uses, but whether the accused products can be used for purposes other than infringement.
`In re Bill of Lading Transmission, 681 F. 3d 1323, 1338 (“These allegations are tailored too narrowly; they
`say nothing more than ‘if you use this device to perform the patented method, the device will infringe and
`has no noninfringing uses.’ But that is not the relevant inquiry. For purposes of contributory infringement,
`the inquiry focuses on whether the accused products can be used for purposes other than infringement.”
`(emphasis in original)).
`
`This interrogatory seeks information relevant to Philips’ affirmative claim of contributory infringement under
`35 U.S.C. § 271(c) for which Philips bears the burden of proof. See Medtronic, Inc. v. Mirowski Family
`Ventures, LLC, 571 U.S. 191, 193 (2014) (“A patentee ordinarily bears the burden of proving infringement.”).
`
`Philips must promptly supplement its response to Interrogatory No. 7 to identify the specific third parties
`that Philips alleges are underlying direct infringers and their specific acts that directly infringe in addition to
`all facts that form the basis for Philips’ contention. Philips must also identify specific components, and for
`each component it must specify which claim limitations of each claim it alleges that component supplies,
`along with the factual basis for Philips’ contention that the component is material to the patented invention,
`especially made or adapted for use in infringing each of the Patents-in-Suit, and is not a staple article or
`commodity of commerce with no substantial noninfringing use. To the extent that Philips fails to do so,
`Fitbit reserves the right to move to exclude any undisclosed evidence that Philips may attempt to submit in
`support of its contributory infringement claim.
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`

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`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 6 of 9
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`Ruben Rodrigues
`November 5, 2020
`Page 5
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`IV.
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`INTERROGATORY NO. 9
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`Interrogatory No. 9 asks:
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`For each asserted claim, state whether You contend Fitbit has jointly infringed the claim
`with other persons or entities, and if so, for each such claim identify each such person or
`entity, identify which person or entity You contend performs each limitation of the claim,
`identify whether you contend Fitbit directs or controls the performance of the other
`persons or entities along with any agency relationship or contracts for such performance
`and any conditions for participation or receipt of benefit upon such performance, identify
`whether you allege Fitbit and the other persons or entities form a joint enterprise along
`with the agreement among the members of the group, the common purpose to be carried
`out by the group, the community of pecuniary interest in that purpose among the
`members, and the equal right to a voice in the direction of the enterprise that gives an
`equal right of control, and identify all persons with knowledge of such facts and all
`documents (by bates number) and things evidencing or pertaining to such facts.
`
`Philips’ response alleges only that Fitbit jointly infringes with its customers, who “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.”
`
`First, Fitbit understands from this response that Philips is not alleging divided infringement under an
`“agency test,” only under a “benefit test.” See Int'l Bus. Machines Corp. v. Booking Holdings Inc., 775 F.
`App'x 674, 678–79 (Fed. Cir. 2019) (“We have articulated two general principles to determine if a single
`entity directs or controls the acts of another. First, ‘an actor is liable for infringement ... if it acts through
`an agent (applying traditional agency principles) or contracts with another to perform one or more steps of
`a claimed method’ (the ‘agency test’). Second, ‘liability under § 271(a) can also be found when an
`alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or
`steps of a patented method and establishes the manner and timing of that performance’ (the ‘benefit
`test’).”).
`
`Second, Philips’ response is nothing more than a legal conclusion. Philips fails to identify what the “clear
`benefit” is that Fitbit’s customers receive and how “those benefits are conditioned upon downloading,
`installing, and using Fitbit software and services.” Philips does not allege that Fitbit conditions any benefit
`upon performance of any claim limitation, let alone provide any support for such a contention. The mere
`sale of software does not satisfy the “conditioned benefit” test. Sentius Int’l, LLC v. Apple Inc., No. 4:20-
`cv-00477-YGR, 2020 WL 6081775, at *4-5 (N.D. Cal. Oct. 15, 2020).
`
`Moreover, Philips does not even contend that Fitbit controls the manner and timing of how users
`download, install, and use Fitbit software and services, let alone identify any facts to support such a
`contention, as is required to prove joint infringement. See Akamai Techs., Inc. v. Limelight Networks,
`Inc., 797 F.3d 1020, 1023 (Fed. Cir. 2015) (Akamai III) (“We conclude, on the facts of this case, that
`liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity
`or receipt of a benefit upon performance of a step or steps of a patented method and establishes the
`manner or timing of that performance.” (emphasis added)).
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`Philips’ allegations are conclusory and do not even satisfy the requirements for joint infringement.
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`

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`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 7 of 9
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`Ruben Rodrigues
`November 5, 2020
`Page 6
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`This interrogatory seeks information relevant to Philips’ affirmative claim of infringement under 35 U.S.C.
`§ 271(a) for which Philips bears the burden of proof. See Medtronic, Inc. v. Mirowski Family Ventures,
`LLC, 571 U.S. 191, 193 (2014) (“A patentee ordinarily bears the burden of proving infringement.”).
`
`Philips must promptly supplement its response to specify what the supposed “clear benefits” are, how
`“those benefits are conditioned upon” performing the specific steps that Philips alleges meets each
`limitation for each asserted claim of each Patent-in-Suit (not just generic acts of “downloading, installing,
`and using Fitbit software and services” that are not tied to any specific claim limitation), and how Fitbit
`controls the manner and timing of such performance. To the extent that Philips fails to do so, Fitbit
`reserves the right to move to exclude any evidence from Philips in support of such contentions.
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`V.
`
`INTERROGATORY NO. 13
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`Interrogatory No. 13 asks:
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`Identify the expiration date for each Patent-in-Suit and the complete basis for Your
`contention.
`
`Philips identifies an expiration date of January 16, 2021 for the ’377 patent, calculated from the December
`15, 2000 filing date of the non-provisional application U.S. Patent App. No. 09/738,270. However, the
`’377 patent states that U.S. Patent App. No. 09/738,270 “is a conversion of U.S. Provisional Application
`Ser. No. 60/172,486, filed Dec. 17, 1999.” ’377 patent at 1:19-22 (emphasis added). Per 37 C.F.R.
`§ 1.53(c)(3), when a provisional application is converted into a non-provisional application, the term of the
`patent is measured from the filing date of the provisional, not the non-provisional. The regulation
`specifically cautions applicants to “consider avoiding this adverse patent term impact by filing a
`nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. § 119(e),
`rather than converting the provisional application into a nonprovisional application pursuant to this
`paragraph.” 37 C.F.R. § 1.53(c)(3). Since the applicant chose to take the route of converting the
`provisional into a non-provisional application, the expiration date of the ’377 patent should be calculated
`from the filing date of the provisional application, not the non-provisional. Accordingly, the expiration date
`of the ’377 patent should be January 18, 2020 (20 years from Dec. 17, 2019 plus the 32 day patent term
`extension).
`
`Philips must promptly supplement its response to correct the expiration date of the ’377 patent, or to
`otherwise provide its basis for asserting a later expiration date so that Fitbit may understand how Philips
`intends to seek an expiration date that is in direct conflict with the relevant federal regulation.
`
`VI.
`
`INTERROGATORY NO. 16
`
`Interrogatory No. 16 asks:
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`Identify all persons with knowledge of any claims or defenses concerning the Patents-in-
`Suit and all persons who participated in any way in preparing the response to each
`interrogatory, identify all persons who were consulted in preparing the response to each
`interrogatory, and identify (including by production number) all documents used or
`consulted in any way in preparing the response to each interrogatory.
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`

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`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 8 of 9
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`Ruben Rodrigues
`November 5, 2020
`Page 7
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`To date, Philips has identified only a single one of its employees as likely to have discoverable
`information that it may use to support its claims or defenses as required by Fed. R. Civ. P. 26(a)(1)(A)(i).
`Philips did not even identify this witness until August 13, 2020, seven months after the deadline for
`providing this information, and only after Fitbit had pressed it do so for over a month. See August 13 E-
`Mail from R. Rodrigues to B. Fife.
`
`It is not credible that Philips intends to rely on a single employee to support its claims or defenses, which
`span over two decades and encompasses communications with the inventors, licensees, and alleged
`infringers of the patents-in-suit, Philips’ policies and practices pertaining to issues of infringement, validity,
`and damages, and Philips’ global litigation efforts against Fitbit, among other topics.
`
`Philips’ failure to identify all witnesses it may rely on for its claims and defenses continues to prejudice
`Fitbit as its opportunity to depose any unidentified witness is limited with the close of fact discovery
`approaching.
`
`Philips must promptly supplement its response (and its initial disclosures) to identify all individuals likely to
`have discoverable information—along with the subject of that information—that Philips may use to
`support its claims. Should Philips fail to identify all such individuals as is its duty under Fed. R. Civ. P.
`26(a)(1)(A)(i), Fitbit reserves the right to move the Court to exclude any reliance on that individual to
`supply evidence on a motion, hearing, or at trial, pursuant to Fed. R. Civ. P. 37(c)(1).
`
`VII.
`
`INTERROGATORY NO. 18
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`Interrogatory No. 18 asks:
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`Describe and identify all communications, including written and oral communications,
`between You and: (1) inventors and owners of the Patents-in-Suit; (2) inventors and
`owners of any prior art references to the patents-in-suit; (3) third parties who have been
`subpoenaed by any party to this action; and (4) any other witnesses who have knowledge
`of the Patents-in-Suit, prior art, or the accused products.
`
`Philips has only provided its objections to this interrogatory, but no response. To the extent Philips is
`claiming that its response consists of privileged information, Philips must provide a privilege log. To the
`extent Philips is withholding non-privileged information, or communications prior to the establishment of
`an attorney-client or consulting relationship, Philips must promptly supplement its response to provide
`such information.
`
`VIII.
`
`INTERROGATORY NO. 19
`
`Interrogatory 19 asks:
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`If You denied any of Fitbit’s Requests for Admission, provide the complete factual basis
`for each such denial.
`
`Despite denying many requests for admission, Philips’ response merely cites to its responses to Fitbit’s
`requests for admission. These responses do not provide any factual basis for the denials, and are thus
`unresponsive to Fitbit’s interrogatory.
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`

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`Case 1:19-cv-11586-FDS Document 270-6 Filed 01/05/22 Page 9 of 9
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`Ruben Rodrigues
`November 5, 2020
`Page 8
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`For example, Philips denies Request for Admission No. 50 that Fitbit asked for claim charts supporting
`Philips’ October 2016 letter and Philips did not provide the requested claim charts. Philips denied this
`request, yet it has identified no facts that show it produced infringement charts in response to Fitbit’s
`request. Indeed, Fitbit has separately asked for all communications between Philips and Fitbit, and yet has
`seen no documents supporting Philips’ denial of Request for Admission No. 50.
`
`Philips must promptly supplement its response to identify all facts—including any documents or
`communications—that form the basis for Philips’ denial of each of Fitbit’s requests for admission.
`
`
`
`Regards,
`
`/s/ David Okano
`
`David Okano
`for PAUL HASTINGS LLP
`
`
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`